Often, the value of intellectual property lies less in one’s own use, and more in licensing outrights to the property to others – or selling it outright. Such arrangements require a good deal of skill and judgement to negotiate, draft, execute, and review – especially if they occur across borders and jurisdictions.
There are two main methods of selling rights in one’s property. The first is through a licensing arrangement – through which specific rights in the property are allocated to another. These rights may be granted temporarily or permanently – and they may be as narrowly or broadly tailored as you wish. However, despite the extent of the license, you remain the owner and author of the property.
The second means of selling rights is in an all-out sale. Through this process, you transfer all of your rights in the property to another – similar to selling a parcel of land or automobile. In this case, all rights are ceded to the other party irrevocably. They become the legal owners of the property.
Whether going through a license or all-out sale, navigating through the legal formalities of an agreement involves a time-consuming and complicated process. Whether you’re dealing with experienced companies or a young novice, going it alone can prove a costly business decision.
Licensing or selling one’s intellectual property is a multi-tiered process that involves several spheres of legal expertise. Getting from initial offer to an executed and binding licensing or sale agreement involves the following stages:
Negotiation: Getting from offers to sell or license to a fullIP transfer contract can prove tricky. While most offers are framed as “take it or leave it”, in truth you often have many more options than the other party would have you believe. If you aren’t satisfied with the terms of an offer, or just need to work out the fine-print, we can help negotiate the terms for you. This involves drawing up a list of enforceable terms, and rigorously negotiating with opposing counsel to get you the best deal you can get.
Drafting: Once you have an agreement with a seller, the deal still must be solemnized into a binding contract. Otherwise, while you may think the deal settled, it will be difficult to hold the other party to the agreed upon terms. However, getting from an agreement or offer to a binding contract can be tricky. Our attorneys can help – by drafting a contract that expresses the totality of your agreement, in a form narrowly tailored to protect your interests and within the bounds of the law of the land and, if necessary, CISG compliant.
Execution: Once a licensing or sales contract is negotiated and drafted, it still must be executed to become binding. While execution is usually a simple process, making deals across borders can make this process a cumbersome ordeal. Our attorneys work to facilitate the execution of contracts across borders, to ensure that the requisite formalities for all appropriate jurisdictions are met to solemnize your agreement and make it enforceable.
Trying to go through the licensing or sale process alone can prove difficult without experienced legal advice. But we are here to help.
Our offices can help with crafting the perfect licensing or sales agreement for you – whether short term or permanent, partial or complete. Our staff is fully qualified to help, whether your material is patented, trademarked, copyrighted, or unprotected. We also provide comprehensive consultation services – both for specific problems and overall legal advice.
At the Law Offices of Akash Kashyap, Esq., we use only the best intellectual property lawyers available, trained and licensed in the US and India. We provide these legal services both through our Indian offices in New Delhi and Gurgaon, as well as online.