Assignments and Licenses of Patents, Trademarks, and Copyrights

By: ANDREW SCHROEDER
Submitted: 2009-07-28 12:57:09
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The main difference between assigning a patent and licensing a patent is important.  Assigning Patents, Trademarks or Copyrights is basically selling the complete ownership interest in that patent, trademark, or copyright.  And the licensing of a patent, trademark, or copyright is like “renting” that patent, trademark, or copyright.

Assignment of Patents, Trademarks or Copyrights can be made in whole or in part.  In other words, you may assign away 50%, 1%, or 99% of your interest in that Patent, Trademark, or Copyright.  Assignments may be integrated into a contract, or may be drafted separately.  And the assignment of Patents, Trademarks or Copyrights can be fairly straight forward.

By way of contrast, the licensing of Patents, Trademarks or Copyrights is essentially “renting” those Patents, Trademarks or Copyrights.  In the most strict legal sense, a license for Patents, Trademarks or Copyrights is basically a promise not to sue the licensee for infringement of those Patents, Trademarks or Copyrights which belong to you.  These licenses are typically time-constrained.  They may be made for a fixed number of months, years, decades, or contingent upon a specific event.

Assignments, like deeds, are not time sensitive.  Once you assign those Patents, Trademarks or Copyrights, your rights in those Patents, Trademarks or Copyrights are gone forever.  In other words, you cannot assign those rights in your Patents, Trademarks or Copyrights for a period of months, years, or decades.

For this reason, an assignment of Patents, Trademarks or Copyrights will be more valuable than a simple license to those Patents, Trademarks or Copyrights.  As such, any assignment you make should be duly recorded with the USPTO, Library of Congress, or your Secretary of State.

There are several different types of licenses involving Patents, Trademarks or Copyrights, although I will cover only a few.

One of the most common types of licenses involving Patents, Trademarks or Copyrights is the exclusive license. An exclusive license is the granting of permission to a licensor the ability to use that intellectual property. The exclusivity typically operates on the licensor, preventing the licensor (the owner of the Patents, Trademarks or Copyrights) from licensing those Patents, Trademarks or Copyrights to another third party. That license can also hold a provision preventing the licensee from sub-licensing that product to another third party.

Non-exclusive licenses of Patents, Trademarks or Copyrights will allow a licensor the ability to license to more than one person or corporation. As such, non-exclusive licenses are less valuable than exclusive licenses because there may be greater competition between rivaling licensees.

Another type of license is a geographically defined license. These licenses will allow licensees to market, distribute, and sell those products within a specific geographic region. For instance, some licenses will restrict the geographic scope within a country, a state, or a city. Licenses also work for Trademarks and Copyrights as well.

You should note that many licenses carry various provisions for verifying sales. To verify sales, some licenses enable the licensor to periodically check the books of a licensee to verify the sales of the underlying subject matter so as to determine the amount of royalties due.

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Andrew Schroeder is a California Licensed Attorney licensed to practice before the United States Patent & Trademark Office (USPTO).

Article source: Expert Articles

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