Licencing & Domain ls 4

Question 1

What are the essential components of a licensing agreement, and why are they important?

Answer 1

Identification of the Parties: Clearly identifies the licensor (owner of the intellectual property) and the licensee (party receiving the rights).
Objective and Scope: Specifies the purpose of the agreement, defining what is being licensed (e.g., patents, trademarks, know-how) and the geographical/industry scope.
Remuneration Terms: Defines how the licensee compensates the licensor, either directly (fees, royalties) or indirectly (dividends, savings).
Duration and Termination: States the agreement’s timeframe and conditions for renewal or termination.
IP Rights and Obligations: Outlines the licensor’s rights and the licensee’s permitted use of the IP.

Question 2

What are the different types of licenses, and how do they differ in terms of exclusivity?

Answer 2

Exclusive License: Grants rights solely to one licensee, even excluding the licensor.
Sole License: Similar to exclusive, but the licensor retains the right to use the IP.
Simple License: Allows the licensor to grant similar rights to multiple licensees.
Non-Exclusive License: When a simple license is already granted, meaning the licensee has no exclusive privileges.
Most Favored License Clause: Guarantees that the licensee gets terms as favorable as those given to any other licensee.

Question 3

What are the key forms of direct remuneration in a licensing agreement?

Answer 3

Lump Sum: A one-time, upfront payment, often negotiated as an estimate of the IP’s value.
Royalties: Payments based on a percentage of the licensee’s revenue or profit from using the IP.
Service Fees: Payments for consultancy or other services provided by the licensor as part of the licensing deal.

Question 4

How can indirect remuneration benefit the licensor in a licensing agreement?

Answer 4

Income from Related Operations: Profits generated from collaborative ventures using the IP.
Dividends: Payments from the licensee’s profits, subject to national legislation.
Cost-Sharing: Shared expenses for research, development, or marketing of the licensed product.
Market Information: Insights or data shared by the licensee that enhance the licensor’s strategy.
Savings: Reduced costs for the licensor through economies of scale or operational efficiencies.

Question 5

Why and to what extent do governments regulate intellectual property licenses?

Answer 5

Why? To ensure fair market practices, prevent monopolies, protect national interests, and promote innovation.
Extent? Regulations may cover approval of licensing terms, restrictions on technology transfer, or competition law compliance.
By Whom? Government agencies, competition authorities, and patent or trademark offices.

Question 6

What arrangements go beyond traditional licensing, and how do they differ?

Answer 6

Franchising: The franchisor provides the business model and branding, with the franchisee running the operations.
Turn-Key Projects: The provider designs and delivers a fully operational project, ready for the licensee to run.
Joint Ventures: Two or more entities collaborate to develop and commercialize IP.
Assignment of IPRs: The outright sale of intellectual property rights, transferring ownership to the buyer.

Question 7

What is a domain name, and why is it used?

Answer 7

A domain name is part of the internet’s transport layer that replaces hard-to-remember IP addresses (e.g., 69.63.176.13) with easier names (e.g., facebook.com). It is a hierarchical system managed by ICANN, with TLDs like .com, .net, and .org

Question 8

What are the different types of TLDs, and who controls them?

Answer 8

Generic TLDs (gTLDs): Like .com, .net, and .org.
Country Code TLDs (ccTLDs): Like .uk (UK) and .it (Italy).
New gTLDs: Introduced since 2013, include .xyz, .berlin, and .photography.
Each TLD is managed by a registry (e.g., Verisign for .com). Non-Latin script TLDs for countries like Russia and China are also available

Question 9

What mechanisms exist for resolving domain name disputes?

Answer 9

gTLD Disputes: Handled by dispute resolution providers authorized by ICANN, such as UDRP or URS.
ccTLD Disputes: Managed by the registry of the specific country (e.g., Nominet for .uk).
Resolution mechanisms:
Uniform Rapid Suspension System (URS): Provides quick, temporary suspension of a domain name.
Uniform Dispute Resolution Policy (UDRP): Allows the transfer of the domain name to the successful complainant.
The URS is faster but only suspends the domain, while UDRP offers full transfer rights.

Question 10

What are the common types of domain name disputes?

Answer 10

Concurrent rights: Disputes over who has the right to register a domain name first.
Domain name theft: When a third party illegitimately transfers a domain name to themselves.
Cybersquatting: Registering or using a domain name in bad faith, often to profit from someone else’s trademark.
Passing off: Registering a domain that reflects the branding or trading name of a competitor.
Grievance or “gripe” sites: Registering a domain (e.g., .sucks) to criticize a company or its trademarks.

Question 11

What are the practical measures for resolving a domain name dispute?

Answer 11

Do Nothing: If the domain is not harming your business, it may not be worth pursuing.
Approach the Registrant:
Send a cease and desist letter asking for the domain transfer.
Offer to purchase the domain or persuade the registrant to add a disclaimer or a link to your website.
Approach the ISP: If the domain usage violates the ISP’s terms (e.g., illegal activities), request the suspension of the registrant’s account.

Question 12

What are the formal dispute resolution options for domain name disputes?

Answer 12

UDRP: Used for disputes involving gTLDs (e.g., .com) or ccTLDs where the country opts in.
Nominet Dispute Resolution: For .uk domain disputes.
EURid ADR: For .eu domain disputes.
Litigation: In cases of trademark infringement or defamation.

Question 13

What defenses can a respondent use in a URS case?

Answer 13

Legitimate Use of Domain:
The respondent can prove they have a legitimate right or interest in the domain (e.g., using a descriptive name for a business or non-commercial use).

Good Faith Registration:
The respondent can argue the domain name was registered in good faith, with no intent to harm the complainant’s business or exploit their trademark.

No Confusing Similarity:
The respondent can argue that the domain name is not identical or confusingly similar to the complainant’s trademark, and does not lead to consumer confusion.

Question 14

What is cybersquatting, and what are typical examples of it?

Answer 14

Cybersquatting is the registration and/or use of a domain name in bad faith, typically to profit from another company’s trademark. like elling the domain to the trademark holder or competitors.

Question 15

What activities are not considered cybersquatting?

Answer 15

Legitimate Use: If the registrant has legitimate rights in the domain name or uses it for non-commercial purposes.
Trademark Infringement: Not all cases of domain name disputes are cybersquatting. Trademark infringement may occur in content or code without cybersquatting being involved.

Question 16

What legal remedies are available for cybersquatting, and how are they different from other remedies?

Answer 16

Trade Mark Infringement: Can be actionable under the Trade Marks Act 1994 or Community Trade Mark regulations.
Passing Off: A claim that someone is damaging the trademark holder’s goodwill by using a similar domain name.
Defensive Registrations: Trademark owners may register variations of their brand name across multiple domain extensions to prevent cybersquatting.

Question 17

What is the UDRP and its purpose?

Answer 17

The UDRP applies to all .gTLD domain names (e.g., .com, .net, .org, .info).
It provides a cost-effective and quicker alternative to court action for resolving trademark-related domain name conflicts.
It enables rights holders to gain control over domain names identical or confusingly similar to their trademark.

Question 18

What documents are part of the UDRP process?

Answer 18

UDRP Policy: Sets out what the complainant must prove to succeed, including evidence of bad faith.
UDRP Rules: Details the process for filing complaints, responses, and appointing a panel.
WIPO Resources: Includes a searchable index of UDRP decisions and the Panellists’ Overview for guidance.

Question 19

What must a complainant prove to succeed in a UDRP case?

Answer 19

First Element: The domain name is identical or confusingly similar to the complainant’s trademark.
Second Element: The respondent has no legitimate rights or interest in the domain name.
Third Element: The domain name was registered and used in bad faith.

Question 20

What happens after a URS complaint is filed?

Answer 20

The URS provider reviews the complaint for compliance.
○If compliant, the registry operator locks the domain.
○The registrant is notified and has 14 calendar days to respond. The notice of complaint is provided in English and translated by the provider into the predominant language used in the registrant’s country.
○If no response is filed, the complaint goes into default.
○A qualified examiner reviews the complaint, response, and supporting materials.
○The examiner issues a determination within 3-5 business days

Question 21

What remedies are available in the URS?

Answer 21

The sole remedy for a successful complainant is the suspension of the domain name for the rest of the registration period.
○The domain name will no longer resolve to the original website. It redirects to an informational page of the URS provider.
○The complainant may have the option to extend the registration for one year.
○If the examiner rules in favor of the registrant, the domain name is unlocked, and full control is returned to the registrant

Question 22

What about abusive complaints and appeals?

Answer 22

The URS has penalties for abusive complaints. An abusive complaint is one that is filed for improper purposes or has claims not warranted by law.
○A party filing an abusive complaint will be barred from using the URS for one year after two findings of an abusive complaint, or one finding of a deliberate material falsehood. Two findings of a deliberate material falsehood will permanently bar the Complainant from utilizing the URS.
○Either party can file an appeal within 14 days.
○The appeal is a de novo review of the existing record with a limited right to add new evidence from before the complaint. The fees for an appeal must be paid by the appellant

Question 23

What role does intellectual property (IP) play in the success of a startup?

Answer 23

IP protects innovations from imitators, strengthens a company’s market identity, and manages risks by avoiding IP infringements. It should be integrated into the company’s business strategy to support growth and decision-making throughout its lifecycle.

Question 24

What is the difference between IP generating and IP consuming startups?

Answer 24

IP Generating Startups: Focus on creating and protecting core IP, such as patented technology, to build a business.
IP Consuming Startups: Rely on existing technologies to support their business idea with limited R&D (e.g., Uber, Airbnb). Successful IP-consuming startups often acquire IP to remain competitive.

Question 25

How does a business model differ from a business plan in startup development?

Answer 25

Business Model: A flexible framework for identifying and delivering value, generating revenue, and understanding competition.
Business Plan: A detailed strategic document projecting the company’s future operations and finances, created once the business model is validated with sufficient market data.

Question 26

Why must a company’s IP strategy be integrated into its business plan?

Answer 26

Integrating the IP strategy demonstrates how IP will support the business model, protect competitive advantages, and ensure the startup’s long-term success. It aligns IP protection with operational and financial goals.

Question 27

What is a design right and what does it protect?

Answer 27

A design right protects the aesthetic or visual appearance of a product, such as its shape, pattern, color, or texture. It does not cover functional features and can be registered (lasting 10-25 years) or unregistered (offering limited protection for a shorter time).

Question 28

What is the Madrid System, and how does its procedure work for trademark registration, including timelines?

Answer 28

he Madrid System is an international trademark registration process that simplifies securing trademarks in up to 116 countries. Key steps include:

Basic Mark Application (month 0): File a trademark application at a national or regional IP Office.
International Application(month 2): Submit through the Office of origin to WIPO.
Formal Examination (month 4): WIPO ensures compliance and records the registration if no irregularities exist.
Refusal Period (4-22): Member states review the trademark; outcomes may be protection granted, provisional refusal, or final refusal.
Final Decision(till 22): Protection is confirmed or rejected within 22 months.
Renewal: Trademarks can be renewed every 10 years.

Benefits:
Single language application for multiple countries.
Unified management for fees, renewals, and changes.
Expand trademarks to new markets through subsequent designations.

Question 29

What are the key steps and timelines in the Patent Cooperation Treaty (PCT) process? patent application

Answer 29

First Filing (0-12 months): File at the national/regional office to set a priority date.
PCT Filing (12 months): Submit a PCT application to start the international phase.

International Phase (16-30 months):
16 months: Receive international search report + written opinion.
18 months: Optional supplementary search or amendments.
22 months: International publication.
28 months: Optional preliminary report on patentability.
National Phase (28-30 months): Enter selected countries for national patent review.

Key Benefits:
Single PCT application provides coverage in all PCT Contracting States.
Harmonized requirements simplify the process.
Delays major costs until national phase (up to 18 months).
Access to international patentability feedback.

Question 30

What are the key steps and timelines in the Hague System for Design Protection?

Answer 30

Application (0-¼ months):
File application via WIPO/local IP office.
Resolve formalities and irregularities.
Design is registered and published in WIPO’s bulletin.

Publication (¼-6 or 12 months):
Choose publication type: Immediate (4 months), Standard (6 months), or Deferred (up to 30 months).

Examination (6-12 months):
Designated offices review the application.
Outcomes: Protection granted (explicitly/implicitly) or provisional refusal.

Refusal Period (30-42 months):
Refusal periods last 6-12 months depending on the IP office.
If no refusal, protection is automatically granted (tacit acceptance).

Renewal (Every 5 years):
Renew protection at 5-year intervals, up to twice or more depending on jurisdiction.

Key Benefits
One application covers multiple jurisdictions.
File in one language and pay one set of fees.
Deferred publication aligns with business strategy.
Centralized renewal and management.

Question 31

What is IP asset assignment, and what key points should be considered?

Answer 31

IP Assignment: Transfer of ownership from the assignor to the assignee, usually for value.
Post-Assignment: Assignee holds full title to the IP.
Registration: May need to be registered in some countries to be enforceable.
Jurisdiction: Assignment must comply with local laws in each country where IP rights are held.
Hybrid Approach: Assignment and licensing can be combined, e.g., acquiring a patent in one country and licensing it in another.

Question 32

What are the key types of software rights licenses?

Answer 32

FOSS (Free and Open-Source Software):
Public Domain: All rights granted; no copyright retained (e.g., PD, CC0).
Permissive License: Allows relicensing; copyright retained (e.g., MIT, Apache, MPL).
Copyleft: Forbids proprietization; copyright retained (e.g., GPL, AGPL).

Non-Free Licenses:
Non-Commercial License: Rights for non-commercial use only; copyright retained (e.g., JRL, AFPL).
Proprietary License: No public rights; copyright retained (e.g., proprietary software).
Trade Secret: No public information; copyright retained (e.g., private software).

Question 33

What are the key elements of software license agreements?

Answer 33

Bern Convention:
International copyright agreement (effective since 1887).
179 contracting parties.

Legal Milestones:
1974: CONTU in the U.S.
Title 107 (US): Updated copyright law (2016).
1991 (EU): Directive on computer programs.
2009/24/EC (EU): Most recent literary works Directive (includes software).

License Agreement:
Consent from Licensor to Licensee for using IP in exchange for value.

Key Components:
Duration: Perpetual or Subscription licenses.
Metrics: Processor, Core, User, Device.
Maintenance & Support: Paid regularly.
Limitations: Defines permissible usage to avoid breaches.

Question 34

What is a software license?

Answer 34

A software license is a legal agreement (usually a contract) where a licensor grants a licensee permission to use software under specific terms. It governs the use and distribution of software

Question 35

What are common elements of software license agreements?

Answer 35

Duration: Can be perpetual (evergreen) or subscription-based (term license).
○Metrics: Usage is measured by units like processor, core, user, or device.
○Maintenance & Support: Paid monthly or annually for benefits.
○Limitations of Use: Terms defining permitted actions and potential breaches

Question 36

What is a Software License Compliance Review?

Answer 36

It’s a formal, mandatory review of a company’s software use to ensure compliance with the licensor’s terms. Often conducted by independent third parties to ensure confidentiality and avoid conflicts of interest. It is part of a broader license compliance program

Question 37

What is the methodology for a Software License Compliance Review?

Answer 37

○Contract Analysis: Reviewing contract terms and metrics.
○Data Collection: Gathering software usage data with scanning tools.
○Data Normalization: Identifying licensing requirements.
○Effective Licensing Position (ELP): Identifying over/under spending.
○Risk Assessment: Evaluating risks and opportunities.
○Reporting: Discussing results with the software vendo

Question 38

How do software vendors enforce copyright?

Answer 38

Software vendors may conduct audits to ensure customers are compliant with their software licenses. These audits can be a way for software vendors to enforce their copyright

Question 39

How has software licensing evolved?

Answer 39

Early models were per-installation.
○Floppy disks led to activation codes.
○Then came node-locking and user-based licensing.
○Now there are electronic license keys and metrics based on hardware or software parameters

Question 40

How is AI impacting software licensing?

Answer 40

○ Automated Inventory Management: AI identifies and catalogs software.
○ Compliance Monitoring: AI monitors software usage for compliance.
○ License Optimization: AI suggests alternative license metrics.
○ Predictive Analytics: AI anticipates software needs and issues

Question 41

What are some tactics used by 3rd parties during software audits?

Answer 41

○Insisting on onsite meetings with the vendor only.
○Positioning a self-declaration as the quickest approach.
○Highlighting business relationships.
○Negotiating settlement terms in advance.
○Requesting an NDA before commencing the audit.
○Imposing conditions on data collection.
○Delaying the sharing of data.
○Anonymizing user data