Part I License agreements – Section 1 Kind of agreement – Section 1 is about the kind of agreement you are negotiating. This is important. Do not skip over it. Is the intended agreement a license agreement or some other kind of agreement? Checklist applies Does the agreement contain consent to use subject matter which is protected by some kind of IP in some way? If yes, this checklist applies. Checklist does not apply Is the agreement solely for the sale or purchase of a good or receiving or giving a service? If yes, then it is not a license agreement and this checklist does not apply. Is the agreement for you, party A, to do work for party B (e.g. as an employee or service provider)? If yes, that is not a license agreement and this checklist does not apply. Is the agreement called a license, but does not mention any subject matter that is protected by IP? Or does it mention IP that is not protected in the country where the desired technology will be made, used or sold? Then it is not a license agreement and this checklist does not apply. Is the agreement for consulting services, where party A advises party B and gives non-confidential information and know how? If so, it is not a license agreement and this checklist does not apply. Does the draft agreement clearly create a binding obligation on a material term? Is it an agreement to agree in the future about something important (e.g. parties will meet to discuss in good faith the Is it a “The royalty rate”)? Memorandum of Understanding or Letter of Intent? If yes to any of the questions in this bullet, this is not a license agreement at all and the checklist does not apply. A license agreement sets forth definitive agreements on all material terms. Other issues Is the agreement for the development of a technology that does not exist or is incomplete? If so, it is a development agreement. But it probably also contains terms regarding IP used in the development and terms regarding who will own the IP in the newly developed technology, and whether either party will have a license to use the IP in the newly developed technology. If so, it is a combination development agreement and license agreement, and this checklist applies. All items at and in addition at of this checklist apply.
Part I – License agreements Section 1 – Kind of agreement Section 1 is about the kind of agreement you are negotiating. This is important. Do not skip over it. Is the intended agreement a license agreement or some other kind of agreement? Checklist applies Does the agreement contain consent to use subject matter which is protected by some kind of IP in some way? If yes, this checklist applies. Checklist does not apply Is the agreement solely for the sale or purchase of a good or receiving or giving a service? If yes, then it is not a license agreement and this checklist does not apply. Is the agreement for you, party A, to do work for party B (e.g. as an employee or service provider)? If yes, that is not a license agreement and this checklist does not apply. Is the agreement called a license, but does not mention any subject matter that is protected by IP? Or does it mention IP that is not protected in the country where the desired technology will be made, used or sold? Then it is not a license agreement and this checklist does not apply. Is the agreement for consulting services, where party A advises party B and gives non-confidential information and know how? If so, it is not a license agreement and this checklist does not apply. Does the draft agreement clearly create a binding obligation on a material term? Is it an agreement to agree in the future about something important (e.g. “The parties will meet to discuss in good faith the royalty rate”)? Is it a Memorandum of Understanding or Letter of Intent? If yes to any of the questions in this bullet, this is not a license agreement at all and the checklist does not apply. A license agreement sets forth definitive agreements on all material terms. Other issues Is the agreement for the development of a technology that does not exist or is incomplete? If so, it is a development agreement. But it probably also contains terms regarding IP used in the development and terms regarding who will own the IP in the newly developed technology, and whether either party will have a license to use the IP in the newly developed technology. If so, it is a combination development agreement and license agreement, and this checklist applies. All items at and in addition at of this checklist apply.
wipogreen_licensingchecklist_061216.docx