The value of IP licensing is growing, but until now there’s been nothing in
the marketplace to provide the necessary level of detail and professional
analysis regarding these unique agreements. For the first time anywhere, Roger
Milgrim shares his in-depth, detailed analysis of what works— and why—when
drafting IP licensing agreements.
Only Milgrim’s Guide to IP Licensing enables you to:
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Recognize the licensing plusses and minuses of each form of IP
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Avoid costly pitfalls in drafting
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Bring focus on methods and techniques to advance your clients interests
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Effectively optimize the value of your clients’ IP assets
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Follow Roger Milgrim’s personal, proven approach for negotiating and drafting
effective IP licensing agreements, on either side of the license
Roger Milgrim’s unparalleled guidance is designed to enhance the transactional
skill of IP lawyers and supplement the IP knowledge of transactional lawyers.
Milgrim’s Guide to IP Licensing is a directly written,
professional resource delivering practical, proven and expert guidance that
enables you to:
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Master each provision in IP licensing agreements
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Focus on the grant, royalty, improvements and other key provisions
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Increase your awareness of how boilerplate provisions can be a pitfall
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Understand the reasons behind certain licensing provisions, so you know when
and when not to apply them
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Exploit and protect valuable IP assets
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Successfully negotiate necessary language in your agreements
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Follow hundreds of examples with practical explanations of licensing techniques
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Develop greater knowledge of the ways in which other practice areas impact
licensing law, including contract, bankruptcy, business entity, antitrust,
tax, securities, dispute resolution (arbitration), and mergers and acquisitions
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Navigate the America Invents Act with regard to process licensing—and
understand the potential risks in the new “first to file” system
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Avoid the often unperceived pitfalls of an agreement’s arbitration clause
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Manage the tax treatment of royalties for both licensor and licensee
INTRODUCTION AND THE IP LICENSING TOOLBOOX
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Int. 1 IP: An Invisible, Invaluable Asset.
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Int. 2 Our IP Menu: Four Entrees.
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Int. 3 Patents.
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Int. 4 Copyright.
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Int. 5 Trade Secrets.
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Int. 6 Marks.
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Int. 7 This Guide’s Approach And Aspiration.
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Int. 8 Know The IP Tools: Then Innovate.
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Int. 9 Sensitizing Executives And Practitioners To Issues and Pragmatic
Solutions.
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Int. 10 IP Licensing Calls For Teamwork.
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Int. 11 This Is Not A Form Book.
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Int. 12 What’s Off Limits.
Chapter 1. PRELICENSING CONSIDERATIONS
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1.1 Strategizing: IP Viewed At The Outset.
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1.2 Selecting The IP And Crafting The Structure.
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1.3 Exclusive, Sole Or Nonexclusive Licensing.
Chapter 2. PRELICENSING STEPS
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2.1 Strategy.
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2.2 Identifying License Prospects.
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2.3 Exclusive Or Otherwise
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2.4 Franchising: A Major Form of Nonexclusive Licensing
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2.5 Prelicensing Steps Pertinent To Various IP License Arrangements
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2.6 Know Your “Customer”
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2.7 The “Buyer” (Licensee) Should Check Out The Seller (Licensor)
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2.8 Nondisclosure Agreements
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2.9 Exceptions To Confidentiality
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2.10 The “Public Domain” Exception
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2.11 What’s “Independent Development”?
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2.12 “Black Box” Disclosure
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2.13 Transactional Related Disclosure
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2.14 MFL, A Key Prelicense Consideration
Chapter 3. PARTIES
Chapter 4. RECITALS
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4.1 Recitals Can Matter In Disputes
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4.2 Recitals Aid The Businessmen And Set A Tone For The Future
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4.3 Recitals Can Illuminate For Future Readers
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4.4 Recitals Can Have Substantive Import In Respect To Third Parties
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4.5 Recitals Can Be Helpful In The Regulatory And Antitrust Context
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4.6 Recitals Can Lay The Groundwork For Separating (And Thereby Achieving
Distinct Treatment Of) Multiple IP Rights
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4.7 Recitals To Emphasize The Importance Of Licensor Quality Control And
Supervision In A Mark License
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4.8 Objections Encountered To Meaningful Recitals
Chapter 5. DEFINITIONAL CONSIDERATIONS
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5.1 Define Terms Early
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5.2 Make Defined Terms Accord With Accounting Or Other Business Considerations
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5.3 Words Alone May Not Do The Job
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5.4 Technical/Business Folk’s Language Merits Respect
Chapter 6. TERMS OF GRANT: ASSIGNMENTS AND LICENSES
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6.1 The Grant Has Wide Ranging Consequences
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6.2 Causes of Action Predating The Assignment Or Exclusive License
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6.3 Inherent Issues Concerning An Assignee’s/Licensee’s Post Transaction Effort
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6.4 Royalty Promises Going Forward
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6.5 Divvying Up IP By Territory
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6.6 The Specific Requirements For IP Assignments Vary
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6.7 It Ain’t Yours Until It’s Paid For
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6.8 Consider Both Named And Potential Parties
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6.9 Territorial Aspects Of Grant
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6.10 Specificity Of Rights To Be Granted
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6.11 Don’t Assume Away The Significance Of “Irrevocability”
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6.12The Nature (Scope) Of The Grant
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6.13 Defining The Grant In Cross Licenses
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6.14 No License: I Just Agree Not To Sue
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6.15 A License Doesn’t Necessarily Flow From A Writing
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6.16 Limiting A Grant
Chapter 7. STRATEGIZING IP GRANT APPROACHES
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7.1 Basic Licensing Approaches
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7.2 Licensing Strategies
Chapter 8. OTHER MATTER FURNISHED APART FROM THE IP GRANT: AT OR NEAR
INCEPTION
Chapter 9. IMPROVEMENTS: BASIC REFLECTIONS
Chapter 10. HYBRID LICENSING
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10.1 For Hybrid Licensing, “The More The Merrier”
Chapter 11. ANCILLARY MATTER
Chapter 12. LICENSOR AND LICENSEE IMPROVEMENTS: NUTS AND BOLTS
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12.1 Hub and Spoke
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12.2 Licensor May Seek Improvements Back Even Where The License Is Exclusive
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12.3 When A Licensor Or Licensee Wants The Other’s Improvements, The Game
Begins
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12.4 Defining “Improvements”
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12.5 Improvements In Patent Cross Licenses
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12.6 Indemnification And Improvements
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12.7 Duration of the Improvement Period
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12.8 Delivering Improvements
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12.9 Terms And Conditions For Improvements Can Be Distinct From Those That
Apply To The Initial IP Grant
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12.10 Grants Back Can Trigger Antitrust Concerns
Chapter 13. CASH CONSIDERATION
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13.1 “Cash” In Transnational Licenses
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13.2 Royalty Comes In Many Flavors
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13.3 “Royalty”: An Installment Purchase Or A Periodic Payment For A License?
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13.4 Sometimes It’s Desirable To Allocate Royalty
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13.5 For Patent Applications, Consider Using An Option/License Approach
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13.6 Allocating Royalty To Different Forms Of IP In A Single License
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13.7 Royalty And Accounting: They Need To Work In Sync
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13.8 The Big Question: How Much (aka, Rate Of Royalty)?
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13.9 Using Royalty Terms To Motivate Licensee Performance
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13.10 Application Of Upfront Or Periodic Royalty To Other Periods
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13.11 Best Efforts
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13.12 A Licensee Won’t Want To Pay Royalty For What Others Are Using For Free
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13.13 Setting Outer Limits To A Royalty Obligation
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13.14 Even Without A Contractual Way Out, A Patent Licensee Still Has A
Potential Escape .
Chapter 14. TECHNICAL ASSISTANCE
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14.1 Ground Rules For Technical Representatives At The Other’s Premises
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14.2 Nuts and Bolts Of Technical Assistance
Chapter 15. ROYALTY AND ROYALTY STATEMENTS
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15.1 Clarifying The Royalty Duty
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15.2 Make Royalty Reporting Parallel Accounting Practices
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15.3 Disputes And “Phantom” Royalty Payment
Chapter 16. INFRINGEMENT AND MISAPPROPRIATION
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16.1 A Licensee’s Two Basic Concerns
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16.2 Realities Of Suing Infringers
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16.3 For Licensees To Notify Licensor Of Suspected Infringement And To Not
Foment It
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16.4 Conditions To A Licensor’s Bringing An Infringement Action
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16.5 Third Party Claims Against The Licensee/Licensor
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16.6 Practical Issues Of Licensor/Licensee Cooperation In
Infringement/Misappropriation Actions
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16.7 Thoughts About Where To Sue
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16.8 Taking Into Account That The Licensee (And Possibly TheLicensor) May Be
Sued
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16.9 Settlement Issues
Chapter 17. REPRESENTATIONS, WARRANTIES AND COVENANTS AND LIMITS ON
LICENSOR LIABILITY
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17.1 The Terminology
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17.2 Representations And Warranties Can Put Flesh On The Bones Of The Dead
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17.3 Even “Basic” Reps Can Serve A Vital Purpose
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17.4 Get Help From Transactional, Not Just IP, Lawyers In Negotiating
Representations and Warranties
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17.5 Representations About IP Ownership
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17.6 Patent Specific Representations
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17.7 Check Out Ownership And Other Critical Elements
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17.8 Representations Concerning The Absence Of Third Party Rights
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17.9 Representations Are The Essence In Black Box Licensing And Play A Vital
Role In Turnkey Arrangements
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17.10 Indemnification For And Limitation Of Liability In Respect Of
Representations And Warranties
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17.11 Limitations On Licensor Liability Generally In Respect Of Specific Types
Of License Agreements
Chapter 18. GOODS, SERVICES OR FACILITIES AS PART OF THE LICENSING
TRANSACTION: DURING THE COURSE OF THE LICENSE
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18.1 Many Arrangements Go Beyond IP
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18.2 Needs Of The IP Licensee In Complex Arrangements
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18.3 Possible Adverse Consequences of Required Licensee Purchases Of
Goods/Services
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18.4 Describing Technical Assistance
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18.5 Issues That Arise From “Lending” Personnel
Chapter 19. LICENSE SECRECY PROVISIONS
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19.1 To Cover Confidential Matter Disclosed In The Course Of The License
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19.2 Disclosures Are Made To Individuals
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19.3 Method Of Disclosures Should Be Detailed
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19.4 Some Disclosures Might Justify Restrictions On Individuals’ Competitive
Activity
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19.5 Restricting Competitive Activity By Entity Disclosees
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19.6 Clarifying A Disclosee’s Burden Of Proof If It Asserts An Exception To
Confidentiality
Chapter 20. MOST FAVORED LICENSEE PROVISIONS
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20.1 Fairness And Comparability Are Often The “Deal” Goals Of Licensees
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20.2 MFL Covering Royalty And Possibly Other License Terms
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20.3 “Elaborating” What MFL Means
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20.4 MFL Can Be Like Janus, Facing Both Ways
Chapter 21. HOW LONG THE LICENSE AND WHAT EVENTS CAN END IT?
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21.1 The Termination Provisions In The License Agreement Should Inspire You To
Think Analytically
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21.2 IP Licenses Have An Indefinite Term Even If That’s Not What They Say
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21.3 In Some Licenses, The License Survives The Contract Term
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21.4 Considering How To End The Relationship Is Best Done When The Agreement
Is But A Prospect
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21.5 Material Breach
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21.6 Bankruptcy Can, But Needn’t, End An IP License
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21.7 During Negotiations, As An Exercise, Play Out “Likely” Kinds Of Breach Or
Failure Of Performance And The Impact
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21.8 Consider Self Help
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21.9 Termination Events Can Have Wide Ranging Implications
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21.10 The Term Of The Agreement And Of The Licensed IP Can Differ
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21.11 Change Of Identity Of A Party
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21.12 Bankruptcy
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21.13 Termination Usually Involves Notice
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21.14 Impact Of Termination On Licensee’s Sublicensing
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21.15 Breach Occurring During Litigation
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21.16 Step Termination
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21.17 Post-termination Competition
Chapter 22. BOILERPLATE: CAVEAT SLAVISH COPIER
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22.1 Thoughtless Boilerplate Can Ruin An Otherwise Excellent IP License
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22.2 Selecting Home State Governing Law And Courts Is Not Necessarily To Your
Advantage
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22.3 Think Remedies
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22.4 Fixing Damages In The Agreement
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22.5 Alternate Dispute Resolution: Beware The Standard Form Contract!
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22.6 “Bespoke” (Or, For The NonAnglophile, “Tailored”) Arbitration: The
Parties Write Their Own Procedural Rules
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22.7 Ways To Influence The Pace Of Arbitration
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22.8 Baseball Arbitration
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22.9 Integration: That’s All There Is, Folks
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22.10 Assignment, Or “Who’s Actually A Contractual Party”
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22.11 Effectiveness
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22.12 Notice
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22.13 Sign On The Dotted Line
Chapter 23. COMMENTED KEY POINTS (A QUASI OUTLINE OF AN IP LICENSE)
“This is a must have for the library of any professional involved in licensing
practice. Roger Milgrim, a long-time leading expert and practitioner in the
field of intellectual property law, has brought together his experience and
expertise to produce an essential guide for those who work in this constantly
changing and complex field of contract, technology, and intellectual property
law.”
Raymond Nimmer, Dean and Leonard Childs Professor of Law, University of
Houston Law School, Author Modern Licensing Law (2012)
"The book's practical and insightful treatment of Antitrust issues raised in
licensing should be especially valuable to the user and not likely to be
available anywhere else because the author is one of the few people in the
world who understands Antitrust for what it is and can write clearly and
succinctly what he has to say."
Edwin Rockefeller, Former Attorney with the Federal Trade Commission, Former
Chair of the ABA Antitrust Section, Author, The Antitrust Religion
(Cato, 2007)
“In today’s world, information circulates and advances emerge with astonishing
speed. Competition requires constantly remaking the enterprise to face
changing conditions. Creativity and innovation have become the basic elements
of progress and success of an enterprise. That brings into sharp focus how to
protect advances and how to share them with others. This book, the product of
50 years of experience, opens new perspectives. In relatively few pages it
addresses licensing broadly and covers it in considerable depth, yet in clear,
direct language that will aid executives and lawyers to effectively deal with
the challenges of licensing IP.”
Jacques Puechal, Former Director of Licensing of Societé Nationale de Petroles
d’Aquitaine (now TOTAL)
"Roger Milgrim is …an esteemed a scholar.… In several decades as a corporate
in-house counsel at a Top 20 corporation, I and my peers owed a lot to the
insights of his venerable wisdom. Now after decades of teaching young would-be
lawyers, I will have the benefit of [Milgrim’s] …guide… This distills much of
Venerable Roger Milgrim in a most approachable form, and [his] readers will
benefit [from it]."
Jim O'Reilly. Professor of Law at the University of Cincinnati School of Law
"This book shows why Roger Milgrim has been the leading authority on licensing
for several decades and remains so today. As a patent litigator, I have often
seen how parties believe their license properly protects them, only to find
that their contract fails to do so, resulting in needless litigation. This
book gives the reader the benefit of Roger Milgrim’s years of experience on
how to draft a well-constructed and thought-out license that avoids dangerous
pitfalls. If you are looking for practical and understandable insights into
how to protect or gain rights to intellectual property, this book is a concise
treatise of wisdom."
John Flock, Senior Partner, Kenyon & Kenyon
"For the seasoned intellectual property practitioner, Milgrim's Guide
to IP Licensing presents a comprehensive, practical, and insightful
resource covering most critical issues in this important field. Yet thanks to
its colloquial style but lucid prose, the Guide should be readily
accessible to inexperienced attorneys, or even lay readers, interested in IP
licensing. The Guide appropriately uses numerous real-world and
hypothetical examples to illustrate clearly various legal principles that
might otherwise be difficult to understand. In a single volume of reasonable
length, Milgrim’s Guide addresses application of licensing
principles and best practices to virtually all forms of intellectual property.
One of the features of the book that makes it most useful is the Guide’s
explanation as to how considerations from other legal specialties such as
corporate, antitrust, tax, bankruptcy and litigation interrelate to IP
licensing. For this reader, however, the best part of Milgrim's Guide to IP
Licensing was that this text was enjoyable to read."
John E. Porter, Partner, Paul Hastings LLP
