Anatomy of License

Agreement

Luis Mejia, CLP

Associate Director

Office of Technology Licensing

What is an IP License

• Tradable assets (property) protected by law

• Through licensing, an owner grants rights via a

contract to such property to another to use that

property while continuing to retain ownership of

that asset

• an important way of creating value with these

assets

• Why license?

• creates an income source

• disseminates the technology to a wider group

of users and potential developers

• acts as a catalyst for further development and

commercialization

Types of IP Licenses

• Patent

• Copyright

• Know How

• Trademark

Key License

Considerations

Strategy

Out licensing

In licensing

Core IP

Financials

Varies by Industry

Many forms

Risk

How much to take

Who takes it

Parts of a License

• Preamble

• Definitions

• Grant

• Consideration

• Diligence

• Accounting

• Warranties/Indemnification

• Termination

• Assignment

• Dispute Resolution

• Legal Venue