Intellectual Property Licensing: A Comprehensive Guide to Structuring and Negotiating License Agreements

85 questions on intellectual property licensing, answered and cited by the UpLaw editorial team.

• Are field-of-use restrictions in patent licenses lawful?
• Are non-exclusive patent licenses assignable?
• Can a bankrupt licensee assume its own license?
• Can a licensee sublicense without an express grant?
• Can a patent licensee challenge the validity of the licensed patent?
• Does a patent create a presumption of market power for tying claims?
• Does copyright misuse exist?
• Does owning intellectual property create an antitrust exemption?
• Do ipso facto clauses work in bankruptcy?
• How can a company grant an implied license without meaning to?
• How does copyright standing work for licensees?
• How does patent exhaustion limit what a licensor can control downstream?
• How do field-of-use definitions fail?
• How do licensors respond contractually to MedImmune challenges?
• How do you draft a license restriction as a condition rather than a covenant?
• How do you draft around the change-of-control problem?
• How do you prevent an implied license during pre-contract collaboration?
• How long should trade secret confidentiality obligations last?
• How much can the definition of the royalty base change the money?
• How should a license handle post-termination inventory?
• How should a licensor structure a deal to control downstream markets after Impression Products?
• How should express diligence obligations be structured?
• How should "Improvement" be defined in a license?
• How should minimum annual royalties be designed?
• Is a covenant not to sue the same thing as a license?
• Should a company license its most sensitive trade secrets at all?
• What are the last-to-expire and bundled-patent Brulotte traps?
• What are the lawful workarounds to the Brulotte rule?
• What are the leading naked licensing cases?
• What are the three corollaries of patent exhaustion for a licensing lawyer?
• What are the two crucial limits on Section 365(n)?
• What bankruptcy protections should a licensee build into the agreement?
• What compromises resolve a change-of-control consent fight?
• What conditions should attach to an IP infringement indemnity?
• What did Brulotte v. Thys decide about post-expiration royalties?
• What did Mission Product not resolve?
• What does a Brulotte-compliant hybrid royalty structure look like?
• What does a workable royalty audit regime look like?
• What does granting exclusivity actually cost a licensor?
• What formalities apply to IP assignments?
• What grant-back structure actually works in practice?
• What happens to a trademark license when the licensor rejects it in bankruptcy?
• What indemnities belong in an IP license?
• What is a grant-back, and which versions attract antitrust scrutiny?
• What is a have-made right, and why does a licensee need one?
• What is an intellectual property license, legally speaking?
• What is a residuals clause, and why do licensors resist it?
• What is naked licensing, and what does it cost a trademark owner?
• What is patent misuse, and how has it been narrowed?
• What is royalty stacking, and how is it addressed?
• What is the difference between a condition and a covenant in a license?
• What is the difference between an assignment and a license?
• What is the difference between exclusive, sole, and non-exclusive licenses?
• What is the exclusive licensee's enforcement trap?
• What is the have-made laundering problem, and how do you guard against it?
• What is the public-sector analogue to diligence obligations?
• What is the Section 204(a) writing requirement for copyright licenses?
• What is the trap that swallows royalty audit rights?
• What licensing conduct still draws antitrust scrutiny?
• What loopholes must a Net Sales definition close?
• What must a trademark quality control program contain?
• What must a trade secret confidentiality clause contain?
• What must survive termination of an IP license?
• What protection does Section 365(n) give a licensee whose licensor goes bankrupt?
• What questions must a most-favored-nation clause answer on the page?
• What royalty structures are used in IP licenses?
• What seven questions must a grant clause answer?
• What should a sublicensing clause address?
• What should be carved out of a license's limitation of liability?
• What warranties should an IP licensor give, and which should it refuse?
• When does a trademark license become a franchise?
• Which parts of IP licensing law are federal and which are state?
• Who has standing to sue for patent infringement?
• Who owns improvements the licensee invents?
• Why did the Supreme Court refuse to overrule Brulotte in Kimble v. Marvel?
• Why does a "worldwide" license sometimes give the licensee nothing abroad?
• Why does every software EULA say "licensed, not sold"?
• Why does the "permission, not transfer" framing decide real cases?
• Why do the three IP clocks in a bundled license rarely match?
• Why is a plain anti-assignment clause unreliable against a change of control?
• Why is a trade secret license structurally different from every other license?
• Why is insurance a state-law question in IP licensing?
• Why is joint ownership of a patent a disaster?
• Why is "Net Sales" the most litigated term in licensing?
• Why isn't the implied duty of best efforts enough for a licensor?