USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
10.3 Requirements or Restrictions to License an Intellectual Property Right An intellectual property licence must describe the terms of the licence agreement in writing and clearly identify all parties and the intellectual property involved. The licence may be exclusive or non-exclusive. In an exclusive licence, the licensee receives all rights in the patent except ownership of title. This allows an exclusive licen- see broader rights, such as the ability to sue for patent infringement. A non-exclusive licence can be granted to more than one party, but a licensee cannot enforce the patent against oth- ers. For public policy reasons, a patent licence cannot require payment of royalties beyond the term of the patent. The USPTO allows recording of licences, but recording is not required for a licence to be valid. No approval from the USPTO is necessary for a licence. 10.4 Procedure for Licensing an Intellectual Property Right Licence agreements are contractual rights; the parties agree to the terms and execute the agreement in writing. Unlike an assignment of a patent, the rights assigned by licence revert to the licensor after the agreed time period.
Additionally, a patent owner can avoid the risk of a court’s judgment of patent invalidity.
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights Assignment of all or part of the rights in a pat- ent must be in writing. The assignee or assignor may record the assignment with the USPTO, but recordation is not required to enforce the assign- ment. 10.2 Procedure for Assigning an Intellectual Property Right Generally, the procedure to assign patent rights involves the same type of negotiations as other contract rights. The parties negotiate the terms of the agreement and execute a written assign- ment contract. An employer’s employment con- tract may require its employees to assign rights to the employer for inventions developed during employment. Although not required, any assign- ments should be recorded with the USPTO.
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