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Product ID: UK-IPipp32

IP licence agreement: to use name or trademark for merchandising in a different field or industry

Not yet reviewed

This is a heavyweight agreement for licensing the merchandising rights in any form of intellectual property.

The key element is that the licensee will exploit the IP in a different application or market.

The merchandising rights may be limited in some way, for example, to certain geographic regions or for certain applications.

The agreement could be used across different industries or markets or in the same one.

For example, this agreement might be used to license:

  • a set of children's cartoon characters for use on the packaging for a food product
  • a shampoo under a brand well known for cosmetics
  • a sports brand for use at an event (the agreement allows for branded merchandise at the event also to be included)

You can choose whether the agreement continues for a long duration, or for the duration of a particular event such as a consumer show.

There is a choice as to whether payment should be upfront, a royalty based on sales or both. A licensor will often want a fixed sum up front, just in case the merchandiser is not as good as he claims.

The document differs from our other merchandising agreement by providing for:

  • support by the licensor of additional licensed material, for example updates by the addition of new material. This additional material is not covered by the main licence, but rather subject to stricter protection. This may be because it could be used in the same market for other applications, or because it might need stronger protection because the licensor does not own all rights in it.
  • protection of new IP derived from the original. For example, if the licence concerns children’s cartoon characters, the agreement can specify who owns rights to a new supporting character developed by the licensor.
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Suitable for use in: England & Wales and Scotland

£94.80 inc VAT
(£79.00 ex VAT)
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Product ID: UK-IPipp30

IP licence agreement: of technical product in a single industry or market

Not yet reviewed

This is a heavyweight licence agreement for rights in an invention. It could be any technical IP. It can be limited in any way, including by industry, geography or application.

It is likely that the IP could be used in more than one industry, and that the owner or inventor will licence it widely, but to only one licensee per industry or sector

The licence is perpetual, irrevocable, non-exclusive, royalty-free and worldwide. The licensee is therefore entirely free to incorporate it into any product he makes, provided it is in his industry only.

The document also provides for the licensee additionally to obtains a secondary licence to some sort of supporting intellectual property (if appropriate to the deal). This is most likely to be a trademark or a patent. That right is also perpetual but it is limited so that the licensor can allow others to use it too. The licensor may grant this separately because he wishes to protect additional material more strongly because it may have far wider application, or because it contains IP that is not his own and to which he does not have rights to do anything else.

The deal is for a single payment up front.

Examples of applications:

  • a carpet manufacturer invents new way to cut and mould carpet shapes to a room in one piece. He licenses the idea to a car finisher who patents it for use in cars, but in name of licensor
  • a microchip designer creates a new chip that can process images much faster than any competitor product. He licenses the idea to two manufacturers: one of graphics cards in Europe, and a camera manufacturer in Asia
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Suitable for use in: England & Wales and Scotland

£82.80 inc VAT
(£69.00 ex VAT)
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Product ID: UK-IPipp39

IP licence agreement: educational or training system

Not yet reviewed

This is a heavyweight licence agreement for an intangible product such as an educational or training system.

The IP in the product is likely to be a process. However, the IP may also include physical objects as well. Licensees may download components, or it may be delivered in hard copy.

This agreement covers the intellectual property rights in every aspect of the work: from designs to copyright and patents.

The IP may be applicable to one industry or many. The agreement allows the licensor to protect the intellectual property whilst licensing its use to many people or businesses.

Payment may be a single upfront one, a period licence fee (such as an annual fee), and/or a royalty based on a metric such as the number of users.

The licence may be granted for as long as you decide. It can be limited to a particular market or application or territory. Re-sale and sub-license are forbidden.

Included is an option for the licensor to provide additional supporting systems on a separate licence basis. For example, the licensor may provide updates, expansions or training in how to use the system.

This document could be used, for example:

  • by a professional services organisation to license use of a distance learning system that it has developed to a training provider
  • by a swimming instructor who has devised an 8 week summer-holiday programme for teaching children to swim and who wishes to licence that system to swimming pool operators
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Suitable for use in: England & Wales and Scotland

£70.80 inc VAT
(£59.00 ex VAT)

License rights to use IP using these documents

These agreements allow you to grant use of your intellectual property to someone else whilst retaining ownership in the long term.

Intellectual property encompasses many types of created work, from images and designs to processes and systems. IP can even be a combination of other works.

However, the majority of deals in IP require similar provisions. So a licence of rights in a set of magazine articles is not dissimilar from a licence of design rights for manufacture. For that reason, our documents can be used for a very wide range of alternative deals and arrangements.

It follows that when you look for a document, look for a description that is similar to, or matches your deal, not just a title that references the same type of IP that you wish to license.

Who should use these documents?

These documents can be used by either the owner of the IP (most likely the creator) or the licensee.

Most contracts are written to favour the interests of one party over the other. However, most of these documents are written so as to be fair to both sides (even if one side is favoured). The reason is that any arrangement that is intended to be continuous for any period of time requires mutual co-operation.

Our guidance notes explain each paragraph so that you don’t need prior experience of licensing intellectual property to edit one of our documents.

Strong legal documents

We describe some of our documents as simple. That does not mean that the legal effect of the document is not strong, but rather that the document is uncluttered by supplementary provisions like options for support, sub licences, licence back, and so on.

Similarly, a “heavyweight” document contains many options. You are unlikely to use all of them, but they will bring to your attention ideas that you may not previously have considered. Of course, you can easily edit out those that you decide not to use.

Limiting the use of the licence you grant

All our documents allow you flexibility to grant a licence to use the IP subject to conditions that you decide.

For example, you could limit use in certain countries or for certain purposes.

Limiting the circumstances in which the IP can be used lets you license the same IP multiple times to different people or businesses in order to maximise the return on your work.

It also might the case that your work has a component that is the intellectual property of someone else, and that you don’t have a permit to sublicense it in certain circumstances.

What you will find in your document

So far as applicable, our documents cover:

Named people and products

In many documents we have given a fictitious name to a party or product. We do this to make it easier for you to follow what the document is about. Of course, you will need to edit the document to use your own comparable names or generic ones.

Complete legal framework and commercial structure

Every agreement provides a complete structure for a deal. We cannot mention every smallest point, but you can reckon that if you need it, we have thought of it. If you have special requirements we can always help further with our review service.

International deals

Our use of plain English and statement that English law applies will help you to create a document that holds water in any jurisdiction.

However, every country has its own laws, so we cannot guarantee what a judge in Panama or Portugal might say. However, you will always be able to terminate a Net Lawman agreement for breach of a term.

Support by the owner or creator to the licensee

Many arrangements to exploit intellectual property involve a prime deal concerning specific IP and also a secondary deal for ongoing support. Where this support may include a second licence for additional IP, we provide for it.

There are two reasons why you might wish to protect this additional support material more strongly:

  • First, the supporting material may have far wider application. You might want to use it in the same market for other applications, or in other products and other markets.
  • The second reason is that you may not own all the supporting material. You may yourself use in the material some IP that has been licensed to you from others. So all you can do is to sublicense under whatever conditions you can do so.

These terms can easily be edited to suit your deal, or be deleted if you do not require them.

Preserving moral rights

The right of a creator of a work to be recognised is enshrined in law. Nonetheless, we do mention it in many agreements.

Protecting your rights

Who must sign?

Unlike a manufacturer of physical products, a licensor of IP rights can be up against theft on a large scale. It is very easy for a single individual to steal your rights or disclose your secrets. When your deal is with a company, only that company is bound. If one of its employees steals your secrets, all you can do is rely on your copyright.

Copyright needs no registration. In law, you can simply prove that you are the originator and you have not given permission and you are home and dry in a court claim. But that leaves two problems:

  • you do not want to have to go to court
  • when someone beaches your copyright, your “work” is immediately spread around, making it far harder to control and to catch further thieves.

While no legal document can guarantee to prevent theft, there are three small points that will help you (all of which we include in our documents as appropriate):

  • word the signature point so that the person signing also takes personal responsibility
  • insist on a personal guarantee
  • have the document signed by every member of the team who will be dealing with the work

What you can do in practice of course depends on what your IP is, how easily it is stolen and whether your counter-party will agree.

Who owns copyright?

You need to be aware that the law differs in the USA from the UK and most other Western countries.

As far as we are aware, in most countries, intellectual property created by an employee is owned by the employer.

However, ownership of IP created under a contract is far less clear. In the USA, they use a term “work made for hire” to describe work done by a person who is not an employee. All such work belongs to the creator. So if you contract with a US designer for artwork for your website, that work remains his and not yours. What you get is a permit to use it for ever, on your site.

In the UK, the position is unclear. It is therefore best, when you commission work from an originator, always to include the point that “the resulting work shall be the property of” you.

Why choose Net Lawman

Immediate delivery of the document template by e-mail after checkout
DocX file format compatible with all popular PC & Mac word processing software. We can convert into other formats for you
Use of plain English makes our documents easy to edit and understand
Detailed guidance notes explain the purpose of each paragraph and how to edit
Review service available - a Net Lawman lawyer can check your edited document
Full money back guarantee if the document isn't right for you
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