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Intellectual Property Licensing Agreements

An intellectual property transaction is a business transaction, and licensing agreements are subject to the general rules of contract law. Licensing agreements typically deal with conveying rights to intangible property created and defined by statute or to technology that derives value solely from the proprietary possession and the exclusion of others.

One of the major differences between regular business contracts and licensing agreements it the typical length of time.

Regular contractual agreements typically last a specified short amount of time. On the other hand, a patent licensing agreement can last up to 20 years. A trademark agreement can last indefinitely, and a license for a trade secret can last forever.

Considering that licensing agreements can last so long, it is important that an effective licensing agreement memorialize the business relationship over time. This requires an attorney who is, not only experienced in contract formation, but also in intellectual property.

Attorney for Intellectual Property Agreements in Houston, TX

If you own intellectual property and are considering licensing your work to a company, having an efficient and effective licensing agreement is imperative. At Sydow Law Firm, attorney Michael Sydow has represented clients licensing intellectual property for years. He has experience with the U.S. Patent and Trademark Office and the World Intellectual Property Office.

Bring your questions about licensing agreements, intellectual property enforcement, infringement, or other issues to Sydow Law Firm. Our office accepts cases throughout the greater Houston metropolitan area in Harris County, Fort Bend, and Galveston County, Texas.

Call (713) 622-9700 to schedule an initial consultation.


Licensing Agreements Information Center


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Transferring Intellectual Property in Houston

A license simply gives someone permission to do something that would otherwise be unlawful if done without permission. It creates a privilege to the licensee.

Thus, a person who licenses intellectual property (the licensor) essentially waives his or her right to sue the licensee. In the context of intellectual property, a license is a waiver by the intellectual property owners of its right to prevent the licensee from using, selling, making, or offering to sell the intellectual property.

One of the most common questions regarding licensing agreements is who has the standing to sue. Since licensing agreements typically waive the rights of the licensor, the questions of when the original owner may be able to sue is important.

Whether a licensee has an exclusive license or non-exclusive license will determine its standing to sue. Under the U.S. Constitution, Art. III § 2, a party must show “injury in fact” that a favorable judgment will redress.

Thus, a licensee must be able to show that another entity’s infringement injured it and that a judgment in his, or, or its favor will fix that.


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Exclusive Licenses vs. Nonexclusive Licenses

Just like regular contracts, licensing agreements may be express or implied. Exclusive or non-exclusive licenses are granted under express agreements. A non-exclusive license is one of the simplest types of licenses.

A non-exclusive license simply grants the licensee the ability to do certain acts identified in the scope of the license. The licensee of a non-exclusive license has no property interest in the intellectual property.

Thus, the original owner may freely license to others or may tolerate infringers. If, however, the licensee engages in activities with respect to the intellectual property, the licensor maintains the right to sue for that infringement.


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Exclusive Licenses

The exclusive license is an entirely different matter. An express grant of an exclusive license comes with additional promises that the licensor will not conduct business using the intellectual property and not grant any further licenses.

Moreover, an exclusive license, despite the name, does not always mean that an intellectual property owner has transferred all of the substantial rights under such property. An exclusive license may be granted for a particular field of use, for a limited term, or for a geographical scope.

For example, an owner of an original work in copyright might license the use of the copyright only with respect to producing a movie, but not for reproduction in written form.

An exclusive license is an effective method for getting maximum use out of a work without creating competition for the intellectual property owner.


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Types of Licenses in Houston

The type of license that an individual negotiates for will be particularly important with respect to the kind of business that he or she desires to conduct using the property.

Some of the most common types of licenses include the following:

  • Field of Use License
  • Grantback License
  • “Have Made” License
  • Shop Right License
  • Cross License
  • Compulsory License
  • Sublicense
  • Exclusive License
  • Non-exclusive License

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Find a Lawyer for Licensing Agreements in Harris County, TX

If you or someone you know is seeking to license intellectual property, contact an experienced intellectual property attorney at Sydow Law Firm.

Attorney Michael D. Sydow has been practicing intellectual property, protecting client’s interest in trademarks, trade dress, copyrights, and other intellectual property for years.

If you have questions regarding intellectual property that you own, call Sydow Law Firm at (713) 622-9700 to schedule an initial consultation to learn more about our practice.


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Sydow Law Firm