A licence is a contractual agreement enabling one party to access the intellectual assets of another. A licence may be used to gain the right to use someone else’s technology, or to enable them to use yours. Licences may also be used to authorise and control the use of trade marks and other branding elements, as in franchise agreements, for example.

Not all licences are the same. Licences are tailored to accurately reflect a deal.

You need to get the right licensing advice to maximise the value obtained from important intellectual assets.

Numerous issues arise in licensing deals, such as:

• future improvements – are they covered or how will they be dealt with in the licence?
• scope and term of the licence
• territories
• applications or fields of use
• reserving fields for possible future application
• granting options over fields or applications
• royalties and payments
• performance criteria
• termination rights

For more information on the potential pitfalls of patent licensing agreements, see Defining ‘Improvements’ In Technology Contracts in the October-December 2009 issue of the Watermark Intellectual Asset Management Journal.