UNDERSTANDING IP RIGHTS AND LICENCES
Intellectual property (IP) rights agreements are contracts between collaborating parties that set forth confidentiality obligations and/or stipulate the ownership or transfer of IP rights. These agreements can take the form of simplified assignments of subsisting rights, or may govern the ownership of future inventions that are under development. IP agreements can take many different forms and structures depending on the types of IP involved and the context in which they are used. They often encompass different aspects of IP and can be used to protect or secure enforceable IP.
IP licence agreements can also outline the terms respecting a party’s right to the use of IP both nationally and internationally. IP license agreements are common options for owners who want to grant third parties the right to use IP without relinquishing control of their benefits.
There are many reasons to license or acquire IP. For example, a company may want to secure the ownership of inventions that were created by third-party consultants or contractors on its behalf to ensure they have continued or exclusive rights to the IP use. Artists are another example: they may choose to authorize larger distributors to reproduce a work in exchange for royalties. A business may choose to strategically acquire patents and designs to improve their operations or hinder competitors who could introduce competing products.
Each of these situations requires competent legal advice and the drafting of agreement terms that ensure clients are aware of any limitations or receive the intended benefits.
THE BENEFITS OF AN INTELLECTUAL PROPERTY RIGHTS AGREEMENT
IP property rights agreements may be important in defining the relationship with an inventor or original owner of a protected work. A properly drafted agreement may clearly and advantageously define a purchaser’s or licensee’s specific rights over the IP.
Poorly drafted agreements can lead to problems for both the IP originator/transferor and the transferee. From the transferor’s perspective, a poorly drafted agreement could result in the loss of valuable IP without the intended gain. From the transferee’s perspective, a poorly drafted agreement could result in failing to obtain the full rights to the IP that they had hoped for—a circumstance that could interfere with the intended or future use of the property. For these reasons, IP agreements must define the new rights of both parties clearly and precisely.
WHY YOU SHOULD RETAIN AN IP LAWYER
Riches, McKenzie & Herbert LLP is a Canadian law firm whose practice is restricted to IP matters. As our sole focus is IP, our lawyers have extensive experience in drafting and negotiating a variety of different types of IP rights agreements.
Types of agreements
Confidentiality/non-disclosure agreements can protect confidential IP and prevent its unauthorized disclosure to other individuals and institutions. A confidentiality agreement is strongly recommended when, for example, IP is still in development or is not the subject of a pending utility patent or industrial design application, since any public or non-confidential disclosure may possibly bar clients from securing valid patent and/or design rights later on.
We structure joint ownership agreements that define co-ownership rights when two or more individuals contribute to the development of an intellectual property. We also structure agreements that stipulate moral and use rights for both users and creators of artistic and other written works. Such agreements are typically aimed at delineating the rights of authors and individuals who work in creative industries, such as photographers, authors, designers, and musicians. They can take many forms, including publishing agreements, release contracts, consignment agreements, and contributor agreements.
Due Diligence and Auditing
For clients who are seeking to exploit or acquire IP, we offer due diligence services to assess intellectual property, including patent validity and infringement analysis opinions. Such opinions may examine both the owned and/or licensed IP of competitors as well as potential acquisition targets. We also provide opinions with respect to clients’ IP ownership rights, identify possible ownership issues, and advise them on how they can potentially increase the value of their IP.
Audits may be helpful in addressing potential risks to IP agreements or acquisitions, ensuring the success of IP transfers. Our attorneys have considerable experience drafting various types of IP agreements for universities, financial institutions, industries, and technologies in all fields, from the chemical and biotech arts to high tech, telecommunications, data transfer, and process control systems as well as consumer and mechanical arts.
Feel free to contact us if you have any questions regarding our Intellectual Property Agreement services, or to arrange a confidential telephone appointment with our knowledgeable staff.
We are conveniently located at the northeast corner of Yonge and Bloor Streets in Toronto. Our offices are located on the 18th floor at 2 Bloor Street East.
Riches McKenzie & Herbert LLP
2 BLOOR STREET EAST, SUITE 1800,
TORONTO, CANADA M4W 3J5
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