Many of the traditional benefits often cited for the licensing of startup business are applicable in today's marketplace. For example, licensing a business venture may be the least expensive alternative to litigation. It may provide income from otherwise dormant assets. Obtaining technical assistance and providing a presence in foreign markets are now more important than ever. In addition, however, e-commerce provides new challenges that need to be in the forefront of the licensing lawyer's mind. These challenges may include a need for standardization, becoming a brand leader in an area of technology, participating in technology shifts resulting from underlying changes within an industry, and assuring long-term profitability in an unpredictable world.
There are various recipes for disaster in drafting and negotiating such technology licensing contracts. Clearly, contracts prepared by those with a shallow understanding of how the intellectual property rights to be licensed operate can lead to some extremely undesirable results. Ignoring or providing tacit attention to regulating authorities can result in provisions of an contract that are unenforceable or entire contracts that are essentially invalid. In short, the negotiation and preparation of licensing contracts should never be equated to the preparation of the simpler, ordinary contracts, which usually involve much shorter time spans and more easily understood property rights. This is particularly true when international entities are the parties to the proposed contract. While it is certainly true, that not all technology licensing contracts are created equal in complexity, no matter the sophistication of the transaction it is vital to specifically identify both the technology being licensed and the specific bundle of rights being licensed.
Lawyers and business executives have very different perspectives on the topic of licensing. To lawyers, agreements require a focus on the rights, obligations and liabilities created in a license whether it is exclusive or non-exclusive; its field of use; indemnifications and warranties; termination clauses, etc. To a business executive, the question is whether by granting or taking a license on a patent, trademark, or other proprietary right, the business will successfully advance its business strategy. Stated simply, the licensor or licensee wishes to maximize dollar profits and technology profits.
This difference in perspectives sometimes leads lawyers to draft license agreements without having a clear understanding of the business goals of their clients. By understanding the overriding business strategy behind the granting or taking of a license, lawyers can produce a far better product for their clients - both the deal and its written expression. Moreover, we all know that some clients are so enamored with the end result, they are unwilling to focus on the details of the agreement. By clearly understanding your client's business strategy, we can help to direct clients' focus to the terms that will achieve those goals.
We represent emerging and established
businesses in a variety of sectors of economy including computer
information, hardware manufacturers, multimedia and software developers,
publishers, distributors, end users, Internet and online service
companies, medical device and biomedical engineering companies, and
venture capital firms. We assist in dealing with a variety of
legislative and administrative agencies regarding licensing and
regulatory compliance matters. We maintain an active practice before
various provincial and federal agencies and boards and work with
business clients by providing services in the following areas -
regulatory and administrative law; government contracting law;
legislative advocacy and representation; litigation challenges to