Should I consider licensing my intellectual property rights?

At Briffa we regularly assist clients with drafting and negotiating licensing for their intellectual property rights. This may be in the field of software as a service (SaaS) or allowing a company to use their brand name in an overseas market in order to help our client with their expansion plans.

This note provides a brief overview of the issues you should consider when licensing out your IP rights.

Overview

To license your intellectual property (IP) rights in England and Wales, you need to follow several key steps and considerations. Firstly, ensure that you are the owner of the IP or have the right to grant a licence. The licensor retains ownership of the IP right and allows the licensee to use it, typically in exchange for royalties or other forms of payment.

Scope

When drafting an IP licence, it is crucial to clearly define the IP rights being licensed, including the scope of use, territory, and duration of the licence. The licence can be exclusive, non-exclusive, or sole, each offering different levels of control and exclusivity to the licensee. Additionally, you should also consider whether the licence will allow sub-licensing and under what terms.

Payment structures

The terms of the licence should also address payment structures, such as fixed fees or royalties, and include provisions for quality control, audit and inspection rights, and mechanisms for dealing with breaches or disputes.

Formalities

It is important to register the licence with the appropriate IP registry to ensure it is enforceable against third parties and to protect the licensor’s rights.

You should seek independent specialist advice, particularly for high-value IP rights or complex licensing arrangements, to ensure compliance with competition laws and to optimise the commercial benefits of the licence.

When a formal licencing agreement has not been drafted and negotiated by lawyers, it can often cause negative ramifications for the parties when something goes wrong further down the track.

How Briffa can help

At Briffa we regularly help our clients negotiate licenses and enforce the terms of the same. If you require help with a licensing issue, please feel free to contact one of our specialist intellectual property lawyers.

Daniel Crate – Associate Solicitor