IP Management

There are a number of ways in which you can benefit from any IP that you own.  The most obvious way is that you, as owner of the IP, use that IP in your own business to restrict competitors and to benefit your own sales.

However, in many cases, a patent, trade mark, registered design, or copyright has the potential to be used more extensively than is possible by a single company, and in this case, it may be advisable to consider licensing the IP.

Licensing

When intellectual property is licensed, the owner retains ownership in the intellectual property right, but allows the licensee to use it in return for the payment of royalties.

Licences are very flexible, and conditions to suit the particular situation can be included in the licence; for example, the licence may be exclusive, a sole licence, or non-exclusive, and it may be able to be sublicensed.  As such, licensing can be a relatively complex matter, depending upon what the parties require.

Informal written licenses, or verbal licences, frequently cause problems and disputes at a later stage, and such disputes can be extremely expensive to resolve.  It follows that a professionally prepared written licence is preferable.

Assignment

Intellectual property can be sold by assigning it to the new owner.  This transfers ownership completely and all rights then belong to the new owner.

For this reason, IP should be assigned only if you are completely sure that you will not require the IP in future.  You should also be satisfied that the price you are being paid for it is a fair price, because once the IP has been assigned, you will not be able to use that IP (unless you obtain a licence from the new owner) nor will you make any further money out of the IP once the purchase price has been paid.

If you have any doubts as to whether or not you want to assign IP, then considering licensing (see above) may be a better option.

When a registered intellectual property right such as a patent or registered design is assigned, it must be recorded at the relevant Patent Offices.

Co-Existence Agreements

It is not unusual to find two companies who each need to licence each other’s IP for their businesses to proceed in an optimum way.  In this case, a Co-Existence or Cross-Licensing Agreement can be used, in which each party licences the others IP.  Agreements of this type almost invariably are complex.

Please contact one of our patent attorneys for more information.