Milgrim's Guide to IP Licensing

The value of IP licensing is growing, but until now there’s been nothing in the marketplace to provide the necessary level of detail and professional analysis regarding these unique agreements. For the first time anywhere, Roger Milgrim shares his in-depth, detailed analysis of what works— and why—when drafting IP licensing agreements.

Only Milgrim’s Guide to IP Licensing enables you to:

• Recognize the licensing plusses and minuses of each form of IP
• Avoid costly pitfalls in drafting
• Bring focus on methods and techniques to advance your clients interests
• Effectively optimize the value of your clients’ IP assets
• Follow Roger Milgrim’s personal, proven approach for negotiating and drafting effective IP licensing agreements, on either side of the license

Roger Milgrim’s unparalleled guidance is designed to enhance the transactional skill of IP lawyers and supplement the IP knowledge of transactional lawyers. Milgrim’s Guide to IP Licensing is a directly written, professional resource delivering practical, proven and expert guidance that enables you to:

• Master each provision in IP licensing agreements
• Focus on the grant, royalty, improvements and other key provisions
• Increase your awareness of how boilerplate provisions can be a pitfall
• Understand the reasons behind certain licensing provisions, so you know when and when not to apply them
• Exploit and protect valuable IP assets
• Successfully negotiate necessary language in your agreements
• Follow hundreds of examples with practical explanations of licensing techniques
• Develop greater knowledge of the ways in which other practice areas impact licensing law, including contract, bankruptcy, business entity, antitrust, tax, securities, dispute resolution (arbitration), and mergers and acquisitions
• Navigate the America Invents Act with regard to process licensing—and understand the potential risks in the new “first to file” system
• Avoid the often unperceived pitfalls of an agreement’s arbitration clause
• Manage the tax treatment of royalties for both licensor and licensee

INTRODUCTION AND THE IP LICENSING TOOLBOOX

• Int. 1 IP: An Invisible, Invaluable Asset.
• Int. 2 Our IP Menu: Four Entrees.
• Int. 3 Patents.
• Int. 4 Copyright.
• Int. 5 Trade Secrets.
• Int. 6 Marks.
• Int. 7 This Guide’s Approach And Aspiration.
• Int. 8 Know The IP Tools: Then Innovate.
• Int. 9 Sensitizing Executives And Practitioners To Issues and Pragmatic Solutions.
• Int. 10 IP Licensing Calls For Teamwork.
• Int. 11 This Is Not A Form Book.
• Int. 12 What’s Off Limits.

Chapter 1. PRELICENSING CONSIDERATIONS

• 1.1 Strategizing: IP Viewed At The Outset.
• 1.2 Selecting The IP And Crafting The Structure.
• 1.3 Exclusive, Sole Or Nonexclusive Licensing.

Chapter 2. PRELICENSING STEPS

• 2.1 Strategy.
• 2.2 Identifying License Prospects.
• 2.3 Exclusive Or Otherwise
• 2.4 Franchising: A Major Form of Nonexclusive Licensing
• 2.5 Prelicensing Steps Pertinent To Various IP License Arrangements
• 2.6 Know Your “Customer”
• 2.7 The “Buyer” (Licensee) Should Check Out The Seller (Licensor)
• 2.8 Nondisclosure Agreements
• 2.9 Exceptions To Confidentiality
• 2.10 The “Public Domain” Exception
• 2.11 What’s “Independent Development”?
• 2.12 “Black Box” Disclosure
• 2.13 Transactional Related Disclosure
• 2.14 MFL, A Key Prelicense Consideration

Chapter 3. PARTIES

Chapter 4. RECITALS

• 4.1 Recitals Can Matter In Disputes
• 4.2 Recitals Aid The Businessmen And Set A Tone For The Future
• 4.3 Recitals Can Illuminate For Future Readers
• 4.4 Recitals Can Have Substantive Import In Respect To Third Parties
• 4.5 Recitals Can Be Helpful In The Regulatory And Antitrust Context
• 4.6 Recitals Can Lay The Groundwork For Separating (And Thereby Achieving Distinct Treatment Of) Multiple IP Rights
• 4.7 Recitals To Emphasize The Importance Of Licensor Quality Control And Supervision In A Mark License
• 4.8 Objections Encountered To Meaningful Recitals

Chapter 5. DEFINITIONAL CONSIDERATIONS

• 5.1 Define Terms Early
• 5.2 Make Defined Terms Accord With Accounting Or Other Business Considerations
• 5.3 Words Alone May Not Do The Job
• 5.4 Technical/Business Folk’s Language Merits Respect

Chapter 6. TERMS OF GRANT: ASSIGNMENTS AND LICENSES

• 6.1 The Grant Has Wide Ranging Consequences
• 6.2 Causes of Action Predating The Assignment Or Exclusive License
• 6.3 Inherent Issues Concerning An Assignee’s/Licensee’s Post Transaction Effort
• 6.4 Royalty Promises Going Forward
• 6.5 Divvying Up IP By Territory
• 6.6 The Specific Requirements For IP Assignments Vary
• 6.7 It Ain’t Yours Until It’s Paid For
• 6.8 Consider Both Named And Potential Parties
• 6.9 Territorial Aspects Of Grant
• 6.10 Specificity Of Rights To Be Granted
• 6.11 Don’t Assume Away The Significance Of “Irrevocability”
• 6.12The Nature (Scope) Of The Grant
• 6.13 Defining The Grant In Cross Licenses
• 6.14 No License: I Just Agree Not To Sue
• 6.15 A License Doesn’t Necessarily Flow From A Writing
• 6.16 Limiting A Grant

Chapter 7. STRATEGIZING IP GRANT APPROACHES

• 7.1 Basic Licensing Approaches
• 7.2 Licensing Strategies

Chapter 8. OTHER MATTER FURNISHED APART FROM THE IP GRANT: AT OR NEAR INCEPTION

Chapter 9. IMPROVEMENTS: BASIC REFLECTIONS

Chapter 10. HYBRID LICENSING

• 10.1 For Hybrid Licensing, “The More The Merrier”

Chapter 11. ANCILLARY MATTER

Chapter 12. LICENSOR AND LICENSEE IMPROVEMENTS: NUTS AND BOLTS

• 12.1 Hub and Spoke
• 12.2 Licensor May Seek Improvements Back Even Where The License Is Exclusive
• 12.3 When A Licensor Or Licensee Wants The Other’s Improvements, The Game Begins
• 12.4 Defining “Improvements”
• 12.5 Improvements In Patent Cross Licenses
• 12.6 Indemnification And Improvements
• 12.7 Duration of the Improvement Period
• 12.8 Delivering Improvements
• 12.9 Terms And Conditions For Improvements Can Be Distinct From Those That Apply To The Initial IP Grant
• 12.10 Grants Back Can Trigger Antitrust Concerns

Chapter 13. CASH CONSIDERATION

• 13.1 “Cash” In Transnational Licenses
• 13.2 Royalty Comes In Many Flavors
• 13.3 “Royalty”: An Installment Purchase Or A Periodic Payment For A License?
• 13.4 Sometimes It’s Desirable To Allocate Royalty
• 13.5 For Patent Applications, Consider Using An Option/License Approach
• 13.6 Allocating Royalty To Different Forms Of IP In A Single License
• 13.7 Royalty And Accounting: They Need To Work In Sync
• 13.8 The Big Question: How Much (aka, Rate Of Royalty)?
• 13.9 Using Royalty Terms To Motivate Licensee Performance
• 13.10 Application Of Upfront Or Periodic Royalty To Other Periods
• 13.11 Best Efforts
• 13.12 A Licensee Won’t Want To Pay Royalty For What Others Are Using For Free
• 13.13 Setting Outer Limits To A Royalty Obligation
• 13.14 Even Without A Contractual Way Out, A Patent Licensee Still Has A Potential Escape .

Chapter 14. TECHNICAL ASSISTANCE

• 14.1 Ground Rules For Technical Representatives At The Other’s Premises
• 14.2 Nuts and Bolts Of Technical Assistance

Chapter 15. ROYALTY AND ROYALTY STATEMENTS

• 15.1 Clarifying The Royalty Duty
• 15.2 Make Royalty Reporting Parallel Accounting Practices
• 15.3 Disputes And “Phantom” Royalty Payment

Chapter 16. INFRINGEMENT AND MISAPPROPRIATION

• 16.1 A Licensee’s Two Basic Concerns
• 16.2 Realities Of Suing Infringers
• 16.3 For Licensees To Notify Licensor Of Suspected Infringement And To Not Foment It
• 16.4 Conditions To A Licensor’s Bringing An Infringement Action
• 16.5 Third Party Claims Against The Licensee/Licensor
• 16.6 Practical Issues Of Licensor/Licensee Cooperation In Infringement/Misappropriation Actions
• 16.7 Thoughts About Where To Sue
• 16.8 Taking Into Account That The Licensee (And Possibly TheLicensor) May Be Sued
• 16.9 Settlement Issues

Chapter 17. REPRESENTATIONS, WARRANTIES AND COVENANTS AND LIMITS ON LICENSOR LIABILITY

• 17.1 The Terminology
• 17.2 Representations And Warranties Can Put Flesh On The Bones Of The Dead
• 17.3 Even “Basic” Reps Can Serve A Vital Purpose
• 17.4 Get Help From Transactional, Not Just IP, Lawyers In Negotiating Representations and Warranties
• 17.5 Representations About IP Ownership
• 17.6 Patent Specific Representations
• 17.7 Check Out Ownership And Other Critical Elements
• 17.8 Representations Concerning The Absence Of Third Party Rights
• 17.9 Representations Are The Essence In Black Box Licensing And Play A Vital Role In Turnkey Arrangements
• 17.10 Indemnification For And Limitation Of Liability In Respect Of Representations And Warranties
• 17.11 Limitations On Licensor Liability Generally In Respect Of Specific Types Of License Agreements

Chapter 18. GOODS, SERVICES OR FACILITIES AS PART OF THE LICENSING TRANSACTION: DURING THE COURSE OF THE LICENSE

• 18.1 Many Arrangements Go Beyond IP
• 18.2 Needs Of The IP Licensee In Complex Arrangements
• 18.3 Possible Adverse Consequences of Required Licensee Purchases Of Goods/Services
• 18.4 Describing Technical Assistance
• 18.5 Issues That Arise From “Lending” Personnel

Chapter 19. LICENSE SECRECY PROVISIONS

• 19.1 To Cover Confidential Matter Disclosed In The Course Of The License
• 19.2 Disclosures Are Made To Individuals
• 19.3 Method Of Disclosures Should Be Detailed
• 19.4 Some Disclosures Might Justify Restrictions On Individuals’ Competitive Activity
• 19.5 Restricting Competitive Activity By Entity Disclosees
• 19.6 Clarifying A Disclosee’s Burden Of Proof If It Asserts An Exception To Confidentiality

Chapter 20. MOST FAVORED LICENSEE PROVISIONS

• 20.1 Fairness And Comparability Are Often The “Deal” Goals Of Licensees
• 20.2 MFL Covering Royalty And Possibly Other License Terms
• 20.3 “Elaborating” What MFL Means
• 20.4 MFL Can Be Like Janus, Facing Both Ways

Chapter 21. HOW LONG THE LICENSE AND WHAT EVENTS CAN END IT?

• 21.1 The Termination Provisions In The License Agreement Should Inspire You To Think Analytically
• 21.2 IP Licenses Have An Indefinite Term Even If That’s Not What They Say
• 21.3 In Some Licenses, The License Survives The Contract Term
• 21.4 Considering How To End The Relationship Is Best Done When The Agreement Is But A Prospect
• 21.5 Material Breach
• 21.6 Bankruptcy Can, But Needn’t, End An IP License
• 21.7 During Negotiations, As An Exercise, Play Out “Likely” Kinds Of Breach Or Failure Of Performance And The Impact
• 21.8 Consider Self Help
• 21.9 Termination Events Can Have Wide Ranging Implications
• 21.10 The Term Of The Agreement And Of The Licensed IP Can Differ
• 21.11 Change Of Identity Of A Party
• 21.12 Bankruptcy
• 21.13 Termination Usually Involves Notice
• 21.14 Impact Of Termination On Licensee’s Sublicensing
• 21.15 Breach Occurring During Litigation
• 21.16 Step Termination
• 21.17 Post-termination Competition

Chapter 22. BOILERPLATE: CAVEAT SLAVISH COPIER

• 22.1 Thoughtless Boilerplate Can Ruin An Otherwise Excellent IP License
• 22.2 Selecting Home State Governing Law And Courts Is Not Necessarily To Your Advantage
• 22.3 Think Remedies
• 22.4 Fixing Damages In The Agreement
• 22.5 Alternate Dispute Resolution: Beware The Standard Form Contract!
• 22.6 “Bespoke” (Or, For The NonAnglophile, “Tailored”) Arbitration: The Parties Write Their Own Procedural Rules
• 22.7 Ways To Influence The Pace Of Arbitration
• 22.8 Baseball Arbitration
• 22.9 Integration: That’s All There Is, Folks
• 22.10 Assignment, Or “Who’s Actually A Contractual Party”
• 22.11 Effectiveness
• 22.12 Notice
• 22.13 Sign On The Dotted Line

Chapter 23. COMMENTED KEY POINTS (A QUASI OUTLINE OF AN IP LICENSE)