ENTREPRELAW Getting Your Deals Done Right

SERVICES IP Licenses and Other IP Services

IP Licenses & Other IP Services

We help companies, both private and public, draft appropriate contracts to capture and protect their own intellectual property (IP). For example, engineering employees and consultants should typically sign Confidential Information and Invention Assignment Agreements.

We help our clients negotiate the IP licenses "in" frequently needed to bring in the technology that the client will build on and add value to. More and more companies take existing technology and add value to it to create a whole new line of products.

The secret is to assure that the client can do what it needs to with the IP that it is licensing in.

During our work on licenses "in", we bear in mind that the licensed technology, once improved, will as likely as not need to be licensed "out" with sales of products or services, for example. Licenses "in" and "out" need to be consistent.

icon IP Agreements

Among the IP agreements that we negotiate and draft for our clients are:

  1. IP Licenses. These are the IP equivalent of supply agreements (licenses "in") or product sales agreements (licenses "out").
  2. Confidential Information and Invention Assignment Agreements. These contracts are (1) an NDA protecting company information, and (2) a commitment from the employee or consultant to assign any invention to the company. An NDA assures confidential treatment of proprietary information.
  3. Contributions of IP to the company. The founder that builds on an idea or a technology may want to contribute the IP to the company in exchange for stock.
  4. Development Agreements. As outsourcing spreads, these contracts covering software or hardware development become more common.
  5. Design Agreements & Statements of Work. How semiconductor companies contract for chip design work.