9781604420784

The IP Licensing Lawyer's Job

by
  • ISBN13:

    9781604420784

  • ISBN10:

    1604420782

  • Edition: CD
  • Format: Paperback
  • Copyright: 2009-05-15
  • Publisher: Natl Book Network

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Summary

This practical guide will help attorneys new to intellectual property law demystify the intellectual property license. It reviews each of the basic issues applicable to all licensing agreements and provides an outline to assist in reviewing any intellectual property issues. It provides answers to questions such as: Why is the intellectual property being licensed? Who is authorized to possess and use the intellectual property? For how long may the intellectual property be used? How may the intellectual property be used? Where may the intellectual property be used?

Table of Contents

Acknowledgmentsp. iii
About the Authorp. xi
Prologue...One Dark and Rainy Afternoonp. xiii
Demystifying the Intellectual Property Licensep. 1
Chapter Overviewp. 1
No Experience Requiredp. 1
"What Manner of Creature is This ... This ... License Agreement?"p. 3
Know What You're Licensingp. 5
Chapter Overviewp. 5
The "It" Behind the Licensep. 5
Patentsp. 7
Copyrightp. 10
Trademarkp. 12
Trade Secretsp. 14
Hark! Why Goest Thou There?p. 19
Chapter Overviewp. 19
A Healthy Dose of Practical Existentialismp. 19
The Licensorp. 20
The Licenseep. 23
Check Your Powder-Understand Your Leveragep. 27
Chapter Overviewp. 27
Bargaining Strength-What Is It? Who Has It? Who Wants It?p. 27
The Chosen Ones-Who May Use the IP?p. 29
Chapter Overviewp. 29
The Great Rake Challengep. 30
"Exclusive" License vs. "Nonexclusive" Licensep. 31
What Is the Licensor's Perspective?p. 31
What Is the Licensee's Perspective?p. 33
What Is the Applicable Law?p. 34
Drafting Tips and Sample Clausesp. 35
Transferable versus Nontransferablep. 37
What Is the Licensor's Perspective?p. 37
What Is the Licensee's Perspective?p. 38
What Is the Applicable Law?p. 39
Drafting Tips and Sample Clausesp. 40
Access: Who May Actually Use the Intellectual Property?p. 42
What Is the Licensor's Perspective?p. 43
What Is the Licensee's Perspective?p. 44
What Is the Applicable Law?p. 45
Drafting Tips and Sample Clausesp. 46
Time Is Money-For How Long May the IP Be Used?p. 49
Chapter Overviewp. 49
Duration: Perpetual vs. Termp. 50
What Is the Licensor's Perspective?p. 51
What Is the Licensee's Perspective?p. 54
What Is the Applicable Law?p. 54
Drafting Tips and Sample Clausesp. 56
When In Doubt, Read the Instructions: How May the IP Be Used?p. 57
Chapter Overviewp. 57
For Whose Benefit?p. 57
What Is the Licensor's Perspective?p. 59
What Is the Licensee's Perspective?p. 59
What Is the Applicable Law?p. 60
Drafting Tips and Sample Clausesp. 60
Permitted Uses/Restrictions on Use of the Intellectual Propertyp. 62
What Is the Licensor's Perspective?p. 63
What Is the Licensee's Perspective?p. 64
What Is the Applicable Law?p. 64
Drafting Tips and Sample Clausesp. 65
From Main Street to Moscow: Where May the IP Be Used?p. 69
Chapter Overviewp. 69
What Is the Licensor's Perspective?p. 70
What Is the Licensee's Perspective?p. 71
What Is the Applicable Law?p. 71
Drafting Tips and Sample Clausesp. 71
Don't Forget ... Important Contractual Provisionsp. 73
Chapter Overviewp. 73
Export/Import Regulationsp. 73
What Is the Licensor's Perspective?p. 77
What Is the Licensee's Perspective?p. 77
Drafting Tips and Sample Clausesp. 78
Warrantiesp. 78
What Is the Licensor's Perspective?p. 80
What Is the Licensee's Perspective?p. 80
Drafting Tips and Sample Clausesp. 81
Indemnificationp. 82
What Is the Licensor's Perspective?p. 83
What Is the Licensee's Perspective?p. 85
Drafting Tips and Sample Clausesp. 85
Limitation of Liabilityp. 86
What Is the Licensor's Perspective?p. 86
What Is the Licensee's Perspective?p. 87
Drafting Tips and Sample Clausesp. 87
Epilogue ... The Clouds Have Partedp. 89
Sample Agreementsp. 91
Software License Agreement (Point-in-Time Transaction)p. 92
Master Software License Agreement (Multiple Purchases)p. 98
Patent License Agreementp. 105
Confidentiality and Trade Secret License Agreementp. 113
Trademark License Agreement-Reseller/Distributor (Term License)p. 119
Trademark Co-License/Co-Marketing Agreementp. 128
Product Certification and Trademark License Agreementp. 139
Copyright License Agreementp. 149
OEM License Agreementp. 155
Hosting/Application Service Provider License Agreementp. 163
Value-Added Reseller/Distributor License Agreementp. 171
"Clickwrap"/"Shrinkwrap" Software License Agreementp. 182
Website Terms of Usep. 185
Collaboration Agreementp. 191
Indexp. 199
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