KEVIN W L CROFT
Drafting a Licence Agreement
National Advanced Training Program on Successful Technology LicensingJakarta, June 2015
© K Croft, Croft IP, 2015
Croft IP
● Established 2005
● Based in Australia, works with clients around the world
● Assists clients to improve returns on their investment in
the intellectual property they create and use
● Strategy Policy IP management
Procedures Deals Skills development
● Collaborates enthusiastically and effectively with a
range of professionals
© K Croft, Croft IP, 2015
Kevin W L Croft
● Intellectual property commercialisation professional since 1986
● Heads consulting company – Previously worked in universities & companies
● Consults to industry, government, WIPO, UNESCO, inventors & universities
● External member, CSIRO Commercial Executive Committee 2007 to 2010
● Trustee, Licensing Executives Society, Australia and New Zealand 2000-2009
● Board Member, Association of University Technology Managers 2004-06
● Graduate of the Australian Institute of Company Directors course
● Certified by the Licensing Executives Society International as a trainer in
intellectual property management and licensing
● AUTM President’s Award 2007 for championing technology transfer and the
Association’s international development
© K Croft, Croft IP, 2015
What does a good licence do?
Establishes an enduring commercial relationship between the parties
Meets legal, financial, and commercial objectives of all the parties
Provides a means for addressing and resolving unanticipated issues that may arise over time
Clearly expresses its purpose and the obligations of the parties when read by
someone else© K Croft, Croft IP, 2015
Who should draft the licence?
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
Lawyers Negotiators
• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouraging
© K Croft, Croft IP, 2015
Who should draft the licence?
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
Lawyers Negotiators• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouraging
© K Croft, Croft IP, 2015
A good licence
Is as unique as the transaction
• While precedent is useful, and some conditions may not be negotiable, the terms of licences you have done before should not constrain the licences you negotiate today and in the future
© K Croft, Croft IP, 2015
Who drafts the licence?
© K Croft, Croft IP, 2015
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouraging
Lawyers Negotiators
Who drafts the licence?
© K Croft, Croft IP, 2015
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouraging
Lawyers Negotiators
The structure of a licence
© K Croft, Croft IP, 2015
• Preamble• Recitals• AGREEMENT• Definitions• Grant• Reservations• Improvements• Consideration• Reporting and accounting• Duration
• Warranties and Indemnities• Measures of performance• Auditing performance• Right to vary and terminate• Jurisdictional issues• Dispute resolution• Signatories• Other issues – publicity,
ancillary rights, …
Examples of university technology transfer
© K Croft, Croft IP, 2014
Examples of university technology transfer
© K Croft, Croft IP, 2014
Preamble and Recitals
• Preamble– Identifies the parties to the
agreement
– Needs to be clear and precise
© K Croft, Croft IP, 2015
• Recitals– Describes the background
of the relationship
– Is descriptive and is not part of what is agreed
Preamble
Licence agreement between
Academic University, a body corporate established by the Academic University Act, 1980, located at University Street, Surfer’s Paradise in the State of Queensland, Australia (“Academic”) AndEntrepreneurial Business, a company having its registered business address at 5 Kangaroo Street, Brisbane in the State of Queensland, Australia (“Entrepreneurial”)
© K Croft, Croft IP, 2015
Recitals
WhereasAcademic has developed technology relating to _______ (“the
technology”) and owns the patents, patent applications, and other registered intellectual property listed in Annexure A
Academic has developed and owns commercially valuable confidential information and know how relating to the technology
Entrepreneurial has sought an exclusive licence of the patents, patent applications, other registered intellectual property, confidential information and know how owned by Academic and related to the technology on the terms and conditions set out in this agreement
© K Croft, Croft IP, 2015
The Agreement
EVERY agreement must state clearly what has been agreed
If something isn't stated in the Agreement, it has not been agreed
Conversation and acknowledgement aren't part of what is agreed - even if there is something in writing
© K Croft, Croft IP, 2015
The Agreement
"It is hereby agreed between the Parties"
"The Parties hereby agree"
"It is agreed between the Parties as follows:"
© K Croft, Croft IP, 2015
Definitions
Clear definitions of terms used in an agreement make it easier to understand
Consistent use of defined terms is essential.Spelling may be critical.
If you define "Technology" as "all intellectual property, including all registered and unregistered intellectual property licensed by University to Entrepreneurial under this Agreement" if you use the word "technology" in the Agreement, it doesn't have the same meaning as the defined term
© K Croft, Croft IP, 2015
Grant
The grant clause is a critical component of every licence. It sets out the rights of the licensee.
Who is licensed? The licenseeSubsidiaries? Associated entities? (be careful to
ensure clear definitions)
Exclusive, non-exclusive, or sole licence?
Right to sublicense must be explicit
© K Croft, Croft IP, 2015
Grant
Territory - In whah jurisdictions is the licence granted?
Duration - State a clear duration, not just "the life of the patent".
Field of use
© K Croft, Croft IP, 2015
Reservations, grant backs, and Improvements
Reservations are clear statements of rights reserved by the licensor. A university should reserve the right to continue to utilise the licensed IP for research and own the results of that research.
A grant back is an obligation for a party to use IP that is created after the licence is executed.
Improvements include all additional IP developed after the licence is executed where that IP can only be practised by a party that a right to use the licensed IP
© K Croft, Croft IP, 2015
Reservations, grant backs, and Improvements
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Consideration
What the licensee gives the licensor in exchange for the rights granted under the licence
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Consideration
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Reporting and accounting
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Reporting and accounting
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Duration
How long does this deal endure?
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Duration
Life of the patent
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Warranties and Indemnities
A warranty is a guarantee of performance
An indemnity is an agreement to protect the other party from loss
© K Croft, Croft IP, 2015
Warranties and Indemnities
What does the Licensor warrantThat it owns the licensed IPThat it has the authority to license the IP
What does the Licensee warrantThat it has authority to enter into the licence
© K Croft, Croft IP, 2015
Warranties and Indemnities
What does the licensor NEVER warrant?Validity of the patentThat the IP can be practisedThat the licensee will make money
© K Croft, Croft IP, 2015
Measures of performance
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Measures of performance
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Auditing performance
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Auditing performance
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Rights to vary and terminate
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Rights to vary and terminate
© K Croft, Croft IP, 2015
Jurisdictional Issues
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Jurisdictional Issues
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Dispute resolution
Disputes happen
Take a staged approach to resolving disputes
IF you don't agree,• University Vice President and senior representative of
the licensee• External mediation - An expert listens to both parties
and then recommends a resolution• Arbitration - An expert listens to both parties and
determines the resolution. The parties must abide by the decision of the arbitrator.
© K Croft, Croft IP, 2015
Signatories
Make sure that the person signing the agreement is authorised to do the deal.
© K Croft, Croft IP, 2015
Other issues
PublicityDo the parties agree to publicise the existence of
the licence?
Ancillary rightsUse of the university's name, symbols and
trademarks
© K Croft, Croft IP, 2015
Other issues
Publicity
Ancillary rights
© K Croft, Croft IP, 2015
Exclusion from challenging the patent
It is wise for a licensor to require the licensee to agree never to challenge the patent that is the subject of the licence. This is especially true when there is a lot of valuable confidential information in the licence.
© K Croft, Croft IP, 2015
Severability
This clause states that if any of the provisions of the agreement are determined to be ineffective, or even in breach of law, then the rest of the agreement will remain in effect.
© K Croft, Croft IP, 2015
© K Croft, Croft IP, 2015
Examples of university technology transfer
© K Croft, Croft IP, 2014
© K Croft, Croft IP, 2015
Managing IP in agreements between Research Institutions and Industry
© K Croft, Croft IP, 2015
RecitalsWhereasAcademic has developed technology relating to _______ (“the
technology”) and owns the patents, patent applications, and other registered intellectual property listed in Annexure A
Academic has developed and owns commercially valuable confidential information and know how relating to the technology
Entrepreneurial has sought an exclusive licence of the patents, patent applications, other registered intellectual property, confidential information and know how owned by Academic and related to the technology on the terms and conditions set out in this agreement
Jurisdiction and Applicable Law
• Jurisdiction is a matter of negotiation• The licensor is usually in the driving seat
- PROVIDED THAT there is a balance in the negotiations
© K Croft, Croft IP, 2015
KEVIN W L CROFTMANAGING DIRECTOR
CROFT IP PTY LTD
Ph: 0407 219208
Thank you
© K Croft, Croft IP, 2015
• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouragingKnow the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
© K Croft, Croft IP, 2015
© K Croft, Croft IP, 2015
© K Croft, Croft IP, 2015
Who should draft?Lawyers
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
Negotiators
• Know the deal• Know the spirit of the
negotiation• Want the agreement to be
positive and encouraging
• Know the common ways to draft a legal document
• Address the legal issues• Want the document to
protect the rights of the client
© K Croft, Croft IP, 2015
IP in your company’s business
Trade mark(s)Business name registration
Domain name registration
Trade marksBusiness name registrationPatentsDomain name registrationConfidential information Laboratory procedures Formulations Supplier information Product information Customer data
Confidential Information Recipes Supplier information Customer data
Definitions
Licences typically define terms like:
Improvements
© K Croft, Croft IP, 2015
Key parts of a licence • Preamble• Recitals• AGREEMENT• Definitions• Grant• Reservations• Improvements• Consideration• Reporting and accounting• Duration
• Warranties and Indemnities• Measures of performance• Auditing performance• Rights to vary and terminate
the licence• Jurisdictional issues• Dispute resolution• Signatories• Other issues – publicity,
ancillary rights, …
Key parts of a licence • Preamble• Recitals• AGREEMENT• Definitions• Grant• Reservations• Improvements• Consideration• Reporting and accounting• Duration
• Warranties and Indemnities• Measures of performance• Auditing performance• Rights to vary and terminate
the licence• Jurisdictional issues• Dispute resolution• Signatories• Other issues – publicity,
ancillary rights, …