Post Registration: Licensing

Question 1

What does a valid contract require?

Answer 1

• offer
• acceptance
  -consideration
  -intention to create legal relations

Question 2

What is a license?

Answer 2

An IP license is a contract between the owner of a specific IP right and a third party that provides the third party worth the right to use the IP. This will be under certain terms and conditions that are set out in the license agreement.

Question 3

Why would someone licence their IP?

Answer 3

To generate revenue through exploiting the IP
To expand your business (into new product lines)
To settle a dispute
To keep ownership and control of the IP.

Question 4

Define licensor and licensee

Answer 4

The licensor ir the party that owns the trade mark and the licensee of the third party that was t to use the trade mark. Without the license the third party would be infringing the trade mark .

Question 5

What are the different types of licences?

Answer 5

Exclusive - only licensee can use the trade mark not even the licensor can use it

Sole - only licensee and licensor can use it.

Non-exclusive - the licensor and the licensee can use the trade mark the licensor can grant a license to anyone.

Question 6

What are the key terms in a license?

Answer 6

Mnemonic - Penguins Typically Interrogate Desperately Tired People Quickly.

Parties
Type of license
IP Rights
Duration
Territory
Payment
Quality control

Question 7

What is it nessasry or desirable to record a license in the UK?

Answer 7

Once recorded the licensee has the right to fall on the licensor to being infringement proceedings. If the owner refuses or fails to do so within 2 months the licensee is entitled to do so in its own name. A licensee cannot recover its costs in an infringement action if the license is not recorded before the mark is infringed, unless the application to record the license is made within 6 months of the grant of the license.

Recording a license is deemed to put third parties on notice of the licensee’s rights. Without recordal, a licensee could find its right to use the trade marks null or void.

Question 8

Is recordal nessasary?

Answer 8

Not necessary in all territories.

Question 9

What country is licence recordal not possible in?

Answer 9

New Zealand