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When an intellectual property owner wishes to work with others in the commercialization of intellectual property, an agreement that defines the intellectual property rights granted and the obligations of the parties is essential. Whether you need an agreement for others to use your technology or to collaborate with others to develop a new idea using your intellectual property, our intellectual property attorneys have the experience to assist you throughout the entire process.

The owner of any intellectual property may transfer some or all of those rights to others. The owner of the intellectual property may grant a license authorizing activity that would otherwise be infringing. For example, a licensee may be granted a license permitting the sale of a product covered by the patent in exchange for some form of consideration, such as a royalty.

Intellectual property rights may be transferred in whole or in part by agreement; that is, by a written contract. When the IP right is transferred outright, the transfer is generally referred to as an assignment. An assignment changes the ownership of the IP. A license, on the other hand, transfers only a portion of IP rights. The owner remains the same and the scope of the license may be limited by time, geography or field of use, for example.

Intellectual property owners commercialize their creations in a variety of ways. Some undertake manufacturing, marketing, sales and distribution activities directly, for example. Others perform some of those activities and engage other parties to do the rest. Still other IP owners perform none of those activities; instead, they grant others certain rights to carry out those activities. When the IP owner wishes to work with others in the commercialization of intellectual property, it is essential for both parties to enter an agreement that defines the IP rights granted and the obligations associated with their roles.

Intellectual property agreements can be quite complex and even those that may appear to be straightforward will have critical features that should be handled properly to avoid unintended consequences. At Caseiro Burke, we have the experience to assist in the negotiation, preparation and review of all IP-related agreements. Examples of the types of IP-related agreements we deal with for our clients include, but are not limited to:

  • Patent, Trademark, and Copyright Assignments and Licensing
  • Material Transfer Agreements
  • Confidentiality and Non-Disclosure Agreements
  • Software License and Maintenance Agreements
  • Commercialization, Distribution and Supply Agreements
  • Strategic Alliances, Joint Development, and Collaboration Agreements
  • Technology Consulting Agreements
  • Due Diligence Supporting IP Acquisition, Licensing, Divestment and Investment
  • Outsourcing Agreements

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