Licensing Agreement Checklist

Licensing Agreement Checklist

Licensing a new invention is a detailed undertaking. There are experts who specialize in the actual negotiations on behalf of the inventor. Usually these experts will negotiate for either a flat fee or a percentage of the royalties the inventor will make. These experts are well worth their fee if you choose to hire one.

On the other hand, some inventors choose to negotiate on their own behalf. We do not recommend this approach, however, if you really do want to negotiate your own licensing agreement we have developed a checklist for you to follow.

This list is not comprehensive, but is intended only as an indicative checklist for those intending to license their inventions. In practice, you should check each invention on a case-by-case basis and take account of the prevailing circumstances when drawing up the agreement.

• Introduce the Parties and your basic Objectives
• Specifications
• Object of licensing agreement
  • Type of license seeking (exclusive or non-exclusive)
• Industrial property rights pertaining to the object of the agreement
• Scope of license
  • authorized exploitation methods
  • geographical scope
  • any restricted application areas
  • authorized period
• Changes, further development and improvements to the licensed technology
• Obtaining and maintaining industrial property rights
• License payments
  • one-off payment
  • initial payment
  • royalty
  • minimum annual royalty
• Bookkeeping obligation, inspection rights and reporting
• Obligation to exploit
• Authorization to sub-license
• Technical assistance and training
• Confidentiality
• Compensation for damage
• Limitations of liability
• Enforcement of industrial property rights
• Action against infringements of industrial property rights
• Invalidation of industrial property rights
• Official approvals and permits
• Manufacture of competing products
• Rights of notice and cancellation
• Implications of ending of contract
• Period of validity
• Transfer of contract
• Force majeure
• Invalidation of contract in part
• Notifications
• Applicable law
• Resolution of disputes

Keep in mind that there are additional factors that may contribute to your specific invention. Therefore, if you have negotiated on your own behalf, it is highly recommended that you at least show the licensing agreement to an attorney familiar with the licensing process. This will at least provide you some protection and possibly catch something in the agreement that you are/were not aware or familiar with.

Copyright © 2009 InventorEducation.com - Helping Inventors One Patent At A Time. All Rights Reserved