Matthias Rößler - 24. July 2018

The drafting and negotiation of license agreements

When drawing up an individual contract, it is regulated how and to what extent the use is permitted. In this context, the topics of license model, license fee, contract term, liability, warranty, contractual penalties, etc. are defined, among others. The design possibilities are manifold.

The license

Licenses can be granted for patents, utility models, trademarks, designs, in the area of copyright and for software. Licenses can also be part of other contracts, such as development contracts or cooperation agreements.

The right of use

The spatial, temporal and content-related use of the industrial property right must be defined.

When negotiating a simple right of use, the licensee can grant the same rights to any number of licensees and can also still use the licensed industrial property right himself.

In the case of negotiation of an exclusive right of use, the license holder transfers substantial parts of the right of use to the licensee, who then has the sole right of use to the licensed subject matter.

At the end of the contract, the right of use reverts to the owner of the industrial property right.

The license fee

The amount of the license fee is usually agreed as a flat license fee, a per-unit license fee or a royalty on sales.

The negotiation of contracts

Depending on the property right, the options for drafting contracts can vary greatly. For the drafting and negotiation of license agreements, it is therefore advisable to seek legal advice.

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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