Intellectual Property License Agreements: 1 Stuart Ash

Intellectual Property
License Agreements:
Common Issues and Solutions
Stuart Ash Gowling Lafleur Henderson LLP
ACCT Ottawa
December 5 , 2010
Stuart Ash
• Practice includes
Gowling Lafleur Henderson LLP
Suite 2600, 160 Elgin St.
Ottawa, Ontario
(613) 786-8667
[email protected]
Trade Marks
Technology Law
IP transactions
Technology Transfer
Strategic IP Management.
About Gowlings
• One of Canada’s pre-eminent intellectual property law firms
• Provide a comprehensive range of IP, business and technology law services
in Canada, Russia and UK
• Consistently ranked as a leading or Tier I Law firm I in the in all aspects of
Patent, Trademark and Copyright Law by Managing Intellectual Property
magazine since it began its rankings in 1996
• Recently ranked as one of top 15 intellectual property law firms in the world
Introduction – Why am I here?
• Intellectual property is a key business asset
• Licensing of intellectual property is increasingly important business strategy
• Important to have an good understanding of rights being licensed when
drafting and negotiating license agreements
• Many traps and pitfalls for the unwary
• Like all major business agreements, best license agreements reflect goals of
the parties and give each party what they need to successfully utilise the IP
• Presentation will introduce you to some of the common issues encountered
when drafting and negotiating an IP license agreement and some
suggestions as to how to deal with them
• Not a comprehensive guide to IP licensing
What is an IP license?
• Grant of permission by owner of a right to person to do something that - but
for the permission of the owner - would be an infringement of owner’s right
• Not an assignment or transfer
• Licensor retains legal and beneficial title
• More than a mere covenant not to sue
• Generally contains positive obligations
What is Intellectual Property?
• Set of statutory and common law rights relating to intangible property
Industrial Designs
Integrated Circuit Topographies
Plant Breeder’s Rights
Trade Secrets and Confidential Information
Personality rights
What is Intellectual Property?
• Patent
• Gives owner the exclusive right preclude others from making, using and
selling invention claimed in patent
• Invention must be novel, useful and inventive
• Patentable subject matter
• Statutory right – registration required
• Term: 20 years from filing of the application
• Protects ideas, processes
What is Intellectual Property?
• Copyright
• Bundle of rights that exists in relation to original literary, artistic, musical
and dramatic works
• Right to reproduce (copy), publish, perform in public, translate,
communicate to public by means of telecommunication
• Applies to virtually all written and electronic material – books, music,
software; photographs, sound recordings
• Statutory right – registration not necessary but give certain benefits
• Term: generally life of author plus 50 years
• Protects expression of ideas, not ideas per se
What is Intellectual Property?
• Trademarks
• Name, logo or other indicia that distinguishes wares, services and
business from wares services and business of others
• Owner of a trademark has exclusive right to use mark in association with
wares and services (and to preclude use of confusingly similar marks
• Statutory and common law right – registration not required but
• Term
• Registration lasts for 15 years (Canada); 10 years (US)
• Common-law rights begin and ends with use
What is Intellectual Property?
• Trade Secrets / Confidential Information
• Valuable information quality of confidence and which is disclosed in
• Quality of confidence – not generally known, owner has taken steps to
preserve secrecy of information
• Circumstances of confidence – must be disclosed in circumstances in
which reasonable businessperson would conclude the information
was meant to be kept confidential
• Can cover all sorts of information
• technical (formulae, source code)
• financial (pricing information)
• business (customer lists)
What is Intellectual Property?
• Trade Secrets / Confidential Information
• Common law right – no registration
• Remedies in tort (breach of confidence, fiduciary duty) and contract
• Term
• rights last for as long as information remains confidential
• care should be taken in limiting duration of confidentiality obligations
Grant of License
• Grant of license is the key term in a license agreement
• Sets out what the licensee is permitted to do
• Often sets out important limitations
• Important to be clear, complete and specific
Grant of License
• Should address the following
Parties – who is entitle to exercise rights?
Subject matter – what property is being licensed?
Rights – what is licensee allowed to do with subject matter?
Territory – where can rights be exercised?
Exclusivity - are rights exclusive, sole or non-exclusive?
Term – how long can the rights be exercised?
Payment – royalty-bearing or royalty-free?
Restrictions - are rights assignable? sublicensable?
Grant of License
• Problems
• Lack of specificity
• Improper grant language
• Over-granting
Grant of License
• Example – Bad
• Licensor grants licensee a perpetual, irrevocable, worldwide license under
Licensor’s intellectual property rights to use Licensor’s intellectual property
in Licensee’s products.
Grant of License
• Example – Better
• Subject to the terms and conditions of this Agreement, Licensor grants to
Licensee, for the Term of this Agreement, a non-exclusive, royalty-free, nontransferable, non-sublicensable license to Use the Licensed Marks in the
Territory in association with the Licensed Wares. Apart from the rights
specifically granted herein, Licensee is granted no other right, license or
interest is respect of any property of Licensor.
• “Licensed Marks” means the registered an/or unregistered trademarks set
out in Schedule A
• “Licensed Wares “ means the wares set out in Schedule B (“Wares”)
• “Territory” means Canada
Grant of License
• Parties
• Licensor
• Does Licensor own the subject matter? (Is it a sublicense?)
• Licensee
• Who will be using the subject matter?
• Will licensed property be used by subs and affiliates? (privity issues)
• Does licensee require ability to sublicense?
• Generally accepted that license cannot sublicense if agreement is
• Need to understand how licensee intends to use the licensed property
Grant of License
• Subject Matter
• Important to specifically identify the subject matter of the license
• What Licensor rights or property are being licensed?
• “Licensor’s Intellectual Property” is unclear
• Identify rights in a schedule or by application / registration number
• “The Patents set out in Schedule A”
• Use of definitions can be helpful
• Clear definitions are particularly important when licensing confidential
• Are all or only some of Licensor’s rights being licensed?
• All wares and services claimed in registration or certain wares only
• Invention claimed in the patent or only subject matter of certain claims?
Grant of License
• Improvements
• Included or excluded? (arises in patent licensing and technology
• Difference between Licensor Improvements and Licensee Improvements
• Must negotiate between competing interests
• Licensor Improvements
• Licensee wants most current technology, may believe it is entitled to
improvements as it is already paying for base technology
• Licensor wants to be paid for new developments
• Often a matter of price (does payment provide for access to
• Software: Licensee is generally entitled to Updates if it pays or support
and Maintenance (but not Upgrades)
Grant of License
• Licensee Improvements
• More complicated
• Licensee wants to own benefit of their work, does not want assist
• Licensor does not want to be locked out of or blocked from
development; may feel entitled
• Key issue is ownership
• Licensor owns (takes assignment and licenses back)
• Licensee owns (and licenses Licensor)
• Terms and conditions need to be considered
• Grant backs can be run afoul of EU law
• Licensee may want to limit ability of Licensor to license competitors
• Joint Ownership
• Seems fair and commercially reasonably but fraught with problems
Grant of License
• Scope of Rights
• Important to clearly define what Licensee is entitled to do by use of clear
and proper grant language
• Different rights require different grant language
• “Use” is a right in respect of some property but not all
• Vague, improper or imprecise language can lead to conflict
• Uncertainty is resolved against the drafter
• Can get complicated quickly when different rights involved
• Software, sound recordings, audio-visual works all have multiple rights
• Key is to fully understand what licensee wants / needs to do with licensed
Grant of License
• Patents
• Licensee can be granted rights to make, use and/or sell invention claimed
• Rights are severable
• Right to use process but not sell product
• Right to manufacture (make) and use but not sell
• Right to make and sell
• Consider limitations
• Right to “have made” by others? By who?
• If so, for whose benefit? (Foundry right)
• Some debate as to whether right to make includes right to “have
• Can Licensee import and sell items made elsewhere?
Grant of License
• Patents
• Also consider limitations on “field of use”
• Licensee’s use is often restricted to certain:
• Purposes – “for Licensee’s internal business purposes”
• Fields – “in the memory test devices field”
• Applications – “for diagnostic but not therapeutic purposes”
• Products – “for use in Licensee’s product X”
• Allows licensor to parcel rights
• May want to specifically exclude certain applications (medical, nuclear,
Grant of License
• Trademark
• Right to use the mark in association with specified goods and services
• Can also grant right to use in business name or domain name
• Can grant right to advertise and display (not use)
• Consider field of use limitations
• Limitation to certain goods and services
• Certain channels of trade
Grant of License
• Copyright
• Rights in a given work are often licensed separately
• Software - right to use and reproduce but not to amend or modify
• Music – SOCAN collects royalties for composers regarding right of public
performance of musical works
• Grant right to translate and publish a novel in French and distribute in
Province of Quebec.
• Make grant specific to the transaction – what rights are required?
• Limitations
• Restrict to certain languages, formats or technologies
• Limitation on use or distribution of Derivative works (distribute run-time
software derived from Licensed software in Binary Code format only)
Grant of License
• Trade Secrets / Confidential Information
• Right to use and disclose
• Fragile nature of right requires well defined limitations
• Purpose
• “for the purpose of exercising rights under this Agreement” is broad
• “For the sole purpose of evaluating functionality of Licensor’s
technology and suitability of use by Licensee”
• Disclose only for very limited purposes and with appropriate safeguards
• Time – capture previously disclosed information? Information that may be
disclosed in the future?
• Often not licensed specifically but included in confidentiality provisions as a
Grant of License
• Territory
• Most intellectual property rights are granted in respect of specific territories
(particularly those that are registration based like patents and trademarks)
• Licensor should specify the territory where licensee is entitled to exercise
Grant of License
• Territory
• Care should be taken not to “over-grant”
• Licensee often wants right to exercise rights worldwide
• But, licensor is limited to granting rights its owns (nemo dat)
• Extent of grant has a direct impact scope of infringement liability
• Market considerations
• Is licensee capable of exploiting worldwide?
• May be determined by nature of grant – inverse relationship between
territory and exclusivity
• Care should be taken to avoid competition law issues if geographic
limitations are used to restrict competition amongst competitors
Grant of License
• Term
• Agreement should clearly specify when it begins and when it expires
• If agreement is silent it is generally accepted that term is for duration of
• Should also specify circumstance upon which it can be terminated, the
consequences of termination and what rights and obligations survive
• Term can be unlimited (perpetual), for duration of rights or for a defined
period of time
Grant of License
• Issues can arise when term continues longer than the rights
• Competition law issues if collect royalties n respect of patent once it
expires (if no other rights arte licensed)
• Can be a bad bargain for licensee (continue to pay royalties when
competitors use for free)
• Term can be flexible or conditional
• Period of exclusivity can be limited by time or conditional upon meeting
certain milestones
• Term can be limited if rights found to be invalid or if patent does not issue
• Important to keep in mind that “perpetual” and “irrevocable” are not the
same thing
Grant of License
• Obligations on termination
• Unless otherwise stated rights and obligations of parties assumed to finish
on expiry or termination of agreement
• Can have harsh unintended consequences for Licensee
• May want to provide for transition or sell-off period
• Return of licensor property and confidential information
• Survival
• Important that some rights and obligations continue past term of license
(payment of trailing royalties, indemnification and limitation of liability,
Confidentiality obligations, restrictive or non-competition covenants)
• Consider downstream effect of termination
• Will sublicenses terminate?
Grant of License
• Exclusivity
• Who else can exploit the licensed property?
• Exclusive
• Broadest in scope - Only licensee can exercise (even to exclusion of
• Significant competitive advantage
• As close as you can get to assignment of rights
• Exclusive license in copyright is an “interest”
• Exclusive licensees have right to sue in their own name (without
joining licensor) in certain circumstances
• Careful legal and business consideration to be given before granting
• Can licensor grant rights ? (other contractual obligations)
• Is licensee in a position to exploit rights?
• Often accompanied by best efforts clauses and minimum
performance requirements
Grant of License
• Sole
• only licensee and licensor allowed to exploit rights granted (no other
licenses granted)
• Offers significant reduction in competition
• “Sole and Exclusive” has different meaning in Canada than in US
• Non-exclusive
• Multiple licenses can be granted
• Individual licensee enjoys no special status
Grant of License
• Assignment
• Frequently negotiated term
• Competing interests
• Licensor
• Wants to be free to assign rights (including to reorganize or sell business)
• Generally wants to prohibit or restrict Licensee’s ability to assign agreement
including by way of merger or change of control
• may not want licensed property to be used by others (including competitors)
• May not agree to same terms with all licensees
• Licensee
• Generally wants to be free to assign without consent
• wants to be free to run its business without impediment (including to ability to
reorganize, finance, sell business)
• Wants to limit Licensor’s ability to assign agreement
Grant of License
• Agreement should state whether it is assignable by
by both
by neither
on what terms
• Unless agreement
• contains specific prohibition or restriction on assignment or
• nature of right is such that it is unlikely that the parties intended it to be
• either party is generally free to assign
Grant of License
• Absolute prohibition on assignment may not be an effective business
• Options
• Require consent (which shall not be unreasonably withheld or delayed)
• Require consent except for assignment to subsidiaries and affiliates or
purchaser of all or substantially all of the Licensee’s business or assets
• No consent required except for assignment to certain parties or class or
parties (such as competitors)
• Should reflect the (realistic) needs of the parties
• Type of agreement (exclusivity, rights)
• Does not need to be mutual
Obligations of the Parties
• Intellectual property rights need to maintained and preserved to remain valid
and enforceable
• Specific actions must be taken in respect of certain types of property
• Payment of fees required to maintain registration of licensed property
• It is in the interest of both parties to ensure licensed property is properly
• Question is who will be entitled or responsible for preserving licensed
• Often depends on the type of grant
Obligations of the Parties
• Prosecution and maintenance
• Certain rights require registration
• Patents require payment of regular maintenance fees (and trademarks to
a lesser degree)
• Can be expensive
• Typically licensor will take responsibility for prosecution as the owner of the
• Exclusive licensee may wish to control (or be required to pay)
• Consider whether Licensor is obligated to maintain
Obligations of the Parties
• Enforcement
• Intellectual Property Rights can be diminished or lost by unchecked
• Value of rights is also diminished by infringement
• Licensor is generally responsible for enforcement of rights in Licensed
• Key questions:
• Is Licensor is compelled to take action against infringers?
• Is Licensee is allowed to take action in its own name if Licensor does
Obligations of the Parties
• Licensor generally does not want License to take action on its own
• Licensee is weaker position (and my be less inclined) to defend licensed
property in the face of an attack on validity)
• Rights and obligations of the parties should be set out in Agreement
• if agreement is silent, Licensee may be able to take action in its own
name (naming Licensor as a party)
Obligations of the Parties
• Quality Control
• S.50 of the Trade-Marks Act provides that use of a trademark by a licensee
will be deemed to be use of trademark by the owner provided that owner
controls the character and quality of the wares and services sold or
performed by Licensee in association with the licensed mark
• Failure to exercise quality control can lead to conclusion that the mark is not
distinctive or enforceable
• Important to remember that requirement is for actual control over character
and quality of licensee’s goods and services (not over manner of use of the
licensed mark)
• Mere right to control is insufficient
• Financial or management control is also insufficient (in and of itself)
Obligations of the Parties
• Agreement should contain
• obligation to comply with Licensor’s quality control guidelines or
• Right to inspect
• measures to enforce compliance
Obligations of the Parties
• Confidentiality Obligations
• Rights in confidential information are lost when information becomes public
or loses quality of confidence
• Agreement should contain provisions requiring Licensee to maintain
confidentiality of Licensed Property
• May reference particular standard
• “Licensee shall protect Confidential Information using such measures at it
uses to protects its own confidential information (and in no circumstances
less than a reasonable degree of care)”
Obligations of the Parties
• May specify certain specific procedures
• Limits on copying
• Limit access to “need-to-know” employees
• Require employees to have entered into confidentiality agreements
• Compliance with Licensor security standards
• Require notification of actual or suspected misuse or disclosure
• require return or destruction on termination or expiry of agreement
• Determine how long confidentiality obligations survive expiry or termination
• Watch the scope of residuals
Representations and Warranties
• Reps and warranties, indemnification and limitation of liability clauses are
used to allocate risk associated with exploitation of licensed property
between the parties
• who bears risk of invalidity or infringement of third party rights?
• Often most heavily negotiated terms in a license agreement
• Stakes are high – IP litigation very costly
• Competing interests
• Licensee wants comfort that it will be able to exploit rights it has
bargained for, wants Licensor to “stand behind” licensed property
• Licensor wants to limit its exposure, wants to avoid underwriting risks it
cannot control (rights it does not know about, use of licensed property in
new products and new territories)
Representations and Warranties
• Common mistakes
• Failing to include or address
• Reliance on boilerplate provisions
• Unrealistic or unreasonable positioning and allocation of risk
Representations and Warranties
• Common reps and warranties
• Ownership
• “Licensor own the Licensed Property free and clear of encumbrances
and has the right to grant the licenses granted herein”.
• Validity
• “The Licensed Property is valid and enforceable”.
• Non-infringement
• “The Licensed Property and the Use thereof contemplated herein
does not and will not infringe the rights of any third party”.
Representations and Warranties
• Validity
• Who bears the risk of licensed rights being proven to be invalid?
• Competing interests
• Licensee – does not want to pay for rights that are invalid
• In many jurisdictions (including Canada) a finding of invalidity will not relieve
Licensee form obligation to continue to pay royalties
• Licensor – wants to limit exposure as it has no way of knowing for certain whether
licensed rights are valid
• Limitations
• Knowledge – “Licensor has no knowledge of any prior art which would render
Licensed Patents invalid or unenforceable”
• Notice – “Licensor has received no notice alleging that Licensed Patents are
• May wish to provide that license terminates or payment of royalties ceases
Representations and Warranties
• Non Infringement
• Generally the most heavily negotiated representation and warranty
• Challenge is to allocate risk in a manner that is realistic and reasonable in
terms of the particular transaction
• Who is in better position to have knowledge of the risk?
• Nature and degree of risk assumed (jurisdictions? Type of products?)
• Does the consideration paid account for assumption of such risk?
• Competing interests
• Licensor – greater familiarity with licensed property; stands to gain
• Licensee – is in position to control its use
• Often decided by relative bargaining position of the parties
• sub-optimal approach- does not have to be “all-or-nothing”
Representations and Warranties
• Limitations
• Knowledge
• “To the Licensor’s knowledge, the Licensed Property does not infringe,
violate or misappropriate the intellectual property rights of any third party”
• Most common limitation
• Can be to the knowledge of company or specific individuals after due
• Territory
• “To the Licensor’s knowledge, the Licensed Property does not infringe,
violate or misappropriate any Canadian or US patents. ”
Representations and Warranties
• Time
• “To the Licensor’s knowledge, the Licensed Property does not infringe,
violate or misappropriate any Canadian or US patent issued or laid open
as of the Effective Date.”
• Disclosure
• “Except as disclosed in Schedule D, to the Licensor’s knowledge, the
Licensed Property does not infringe, violate or misappropriate any
Canadian or US patent issued or laid open as of the Effective Date.”
• Notice
• There are no claims or proceedings alleging that the Licensed Property
or the use thereof infringes, violates or misappropriates the intellectual
property rights of any third party nor has Licensor received any notice in
writing that the Licensed Property or the use thereof infringes, violates or
misappropriates the intellectual property rights of any third party.
Representations and Warranties
• Known vs. Unknown Risks
• Licensor assumes risk for things within its control
• Infringement or misappropriation of copyright
• Misappropriation of third party confidential information
• Infringement of registered or laid open rights in Licensor’s primary
• Licensee assumes risk arising in respect of its specific use or unknown risks
• Use in new jurisdictions
• Liability for new, unknown, out-of-territory or unregistered rights
• Parties can also share unknown risks
Representations and Warranties
• Important to remember that reps and warranties can exist outside of the
Sales of Goods Acts
Uniform Commercial Code
UN Convention on International Sale of Goods
can import reps and warranties of merchantability, fitness for purpose
and non-infringement
• Important to use proper disclaimer language
Indemnification / Limitation of Liability
• Indemnification
• Closely linked to reps and warranties
• Sometimes replace reps and warranties
• Must also be read with limitation of liability provisions
• Important to clearly identify
• Who is being indemnified? (Everyone in chain of distribution?)
• For what risks are indemnification provided?
• Are there exceptions?
• Also important to provide for indemnification procedure
• Notification of claims
• Carriage and control of proceedings
• Representation of indemnified party
Indemnification / Limitation of Liability
• Licensor
• Breach of terms of agreement (including reps and warranties)
• Non-IP liability relating to Licensee’s products (product liability)
• Licensee’s compliance with applicable law
• Licensee
• Breach of terms of agreement (including reps and warranties)
• IP infringement
Indemnification / Limitation of Liability
• Exceptions
• Licensor will often carve out indemnification for infringement arising from
• Modifications to licensed property (by licensee or at Licensee’s request, or unauthorized
• Use for unlicensed applications or purposes
• Combination with other IP or products (if infringement arises as a result of combination)
• Replace, Repair, Modify
• Often proposed as an alternative (or additional) remedy for infringement
• in the event of claim or threatened claim of infringement Licensor shall:
• Replace the infringing licensed property with non-infringing property of equivalent
• Repair or modify the infringing licensed property so that it is no longer infringing
• Refund some or all of the fees paid by Licensee and terminate the license
Indemnification / Limitation of Liability
• Limitation of Liability
• Limits financial exposure of the parties by putting a limit on direct damages
(cost of replacement, restoration) and by (generally) excluding
consequential damages (economic damages such as lost profits)
• Critical commercial term
• Amount can be aggregate or divided into “baskets”
Indemnification / Limitation of Liability
• Direct damages cap
• Can be a dollar amount or function of fees paid by Licensee
• Can be all or pro-rated amount
• Watch for common “carve outs” (exceptions to cap on direct damages and
exclusion of consequential damages)
Damages to tangible property
Damages for personal injury or death
Damages for breach of confidentiality
Damages for wilful misconduct
Damages for IP infringement
• Inverse relationship between non-infringement reps and warranties and
indemnification for infringement
• Need to understand how these work together
Thank You
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