Assignments and Licensing
license gives permission to the licensee (property user) from the licensor (property
owner) to use property. Licensees can obtain the rights to use intellectual
property they would other have been excluded from using. IP owners can
create a license agreement, which gives the licensee specified property
rights in exchange for a fee or royalty. Licensing property does not transfer
title, but does grant the licensee certain rights, usually for a fee or
royalty. Licenses are very common with technology and software companies
non-exclusive license means that the owner of the property is not exercising the right to exclude.
For example, a patent owner may grant a non-exclusive license to use an
invention, which is basically a promise not to sue for what would otherwise
exclusive-license is a more attractive proposition for a licensee, because it can grant
exclusive use over a property, which effectively can prevent competition
from other businesses.
Assignment means that full rights to a property are transferred, along with title.
The Assignee becomes the full owner of the assigned property. If the assignment
does not transfer the total interest, then it may be considered a license.
All forms of intellectual property can be licensed or assigned.
Patents: Inventions are originally owned by their inventors in general. Usually
this means that ownership of a patent can only be obtained by assignment
from the inventor. In contractual relationships, however, employees may
have express or implied contractual obligations to assign their inventions
to their employers. The rights to make, use, and sell an invention must
all be transferred for there to be an assignment. Any of the three can
be licensed by the patent owner.
Trademarks: Trademarks are typically owned by the first one to use the mark. To apply
for federal registration, the applicant must be the owner of the mark.
Trademarks can be assigned or licensed. It is important for the trademark
owner to maintain quality control over the use of the mark. Misuse of
the trademark could result in a loss of trademark rights. Licenses where
the trademark owner fails to maintain control over the use of the mark
by the licensee are called
Copyrights: The author of a copyrighted work is generally the owner of that property.
Exceptions to this are works that are produced "for hire." The
employer is the author of a work created by an employee within the scope
of employment. The rights to reproduce the work, create derivative works,
distribute the work, perform the work, and display the work are rights
that can be assigned or licensed.
Trade Secrets: Title to proprietary information and trade secrets belongs to their creators.
The exception to this is when an employee creates a trade secret for an
employer. Disclosure of the trade secret can be assigned or licensed.
With all transactions involving trade secrets, owners will want the other
parties to sign non-disclosure agreements to protect the secret.
Call us. Howard IP Law Group, P.C. can help you license what you own, and
obtain licenses for what you do not, as well as with buying/selling property.
We can work through the facts and questions with you and point out pitfalls,
saving you time, money and headaches. Together we can craft an approach
tailored to your situation and plans.
Please note that the content of this page should only be used as a general
reference, and is not a substitute for legal advice. It is recommended
that you seek the assistance of legal counsel.