Technology Licensing Agreements

The final chapter of Bobrowicz16 provides a useful checklist for licensing negotiations. For the experienced technology transfer professional or contract lawyer, the idea of establishing a detailed checklist for each licensing agreement may seem like an unnecessary job. But the same professionals could probably tell stories in which a missed detail provision or a vague provision of the contract led to an expensive and lengthy litigation. Given the importance of the efforts made, it is certainly in the interest of the IP stakeholders to ensure that every detail is verified and verified. If several agreements are negotiated at once, it is reasonable to think that something could be missed. In order to avoid this unfortunate and potentially costly error, this chapter offers a complete but flexible checklist, which can be provided to manage the details of licensing agreements. Although the author provides a template for most elements of the license, he quickly finds that users must adapt the checklist to their respective business practices. Two international agreements, the Madrid Agreement and the Madrid Protocol, govern the international registration of trademarks. For plant brands, the understanding and use of these provisions is increasingly important for developing countries. Many tropical and subtropical regions are rich sources of new fruit products, and an owner of such a product will want to adopt a strategy that both stimulates global demand for the product and maximizes commercial returns. Brands will be an integral part of such protection of intellectual property rights and global marketing strategies.

In particular, three critical aspects should be taken into account when new branded products are to be successfully introduced from developing countries: the debate on where and when not to grant a pipeline agreement to a university spinout company will also be instructive for university staff. A pipeline agreement generally covers an option granted to a university spin-off company to acquire intellectual property rights that may be generated in the future by university faculties. While an agreement on pipelines may be helpful, universities should be cautious in determining how the intellectual property of pipelines is identified. They will probably want to limit the agreement to the intellectual property generated by some faculty members and their laboratories. Universities should also recognize that, in some cases, spinouts may not be the licensees of choice and should therefore conclude pipeline agreements with care. Potential problems with licensing in the field are overlapping fees beyond licences. This may be the result of differences in the interpretation of licensing rights or unexpected technical developments. It is therefore wise to lay the groundwork for resolving disputes related to these types of potential issues. In addition to the broader aspects of licensing, this section of the manual contains a number of chapters that address more specific IP licensing strategies.

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