IP Licensing and Agreements

In addition to handling patent matters, Beem Patent Law Firm can also help you with intellectual property licensing and agreements. Licensing and agreements can be useful when a patent owner is sharing knowledge or use of their invention with a third party.

Licensing

After obtaining a patent, a patent owner may decide to license the invention covered within the scope of the patent. A license contractually allows someone to use, make, or sell the invention owned by another. Once you secure your exclusive property rights through a patent, you may then license your invention for commercial use. Licensing can allow a patent holder, or licensor, to make money on their invention by charging a fee to the person or entity (the licensee) making, using or selling the invention. It is important to note that as the patent owner, you still have ultimate ownership rights of the invention. The license gives the licensee only limited use rights. Also, most license agreements are non-exclusive, meaning you can sell the same rights to more than one licensee.

Agreements

Non-disclosure agreement A non-disclosure agreement is a contract that outlines what two parties are willing to share with each other, but cannot be shared with third parties. Non-disclosure agreements are helpful to have when you are talking to someone about your invention. The only instance where a non-disclosure agreement is unnecessary is while talking to an attorney. The law already places strict confidentiality requirements on attorneys—regardless of whether they go on to represent you. A non-disclosure agreement can be useful when two entities are considering business relations and need to understand the technology or processes used in the other entity’s business. Material Transfer A material transfer agreement is a contract that allows for the transfer of tangible research materials between two parties. These contracts only transfer possession of the materials and not title. The entity transferring the materials retains full ownership over them. The contract typically specifies how the research materials may be used and for how long the entity may use them. A material transfer agreement is typically used for the transfer of biological materials such as antibodies, cell lines, and genome sequences. Standard Software License Agreement A software license agreement is an agreement between the licensor of software and the person or entity who is purchasing the right to use that software. The license agreement usually specifies how the purchaser may use the software and the rights the purchaser has regarding such things as resale, backup, and archiving. Software license agreements are typically presented to the purchaser only in digital form and only after purchasing the software.


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