In today’s economy, it is not uncommon for a major portion of a company’s assets to consist of intellectual property. Income from the licensing of intellectual property assets or other transactions involving such assets can form a significant portion of the revenue of such companies.

ERUUM & LEEON IP professionals have extensive experience in providing counsel on a broad range of licensing matters. Our services include: reviewing and analyzing potential licensing opportunities, negotiating and drafting license agreements, and representing licensees in acquiring new licenses.

There are many ways technology is transferred. It may be “sold” and assigned to a purchaser. It may be gifted, bequeathed (in a will), or exchanged and assigned to the recipient. Ownership may be retained by the owner while exclusive or nonexclusive rights may be granted via a license. Technology may also be subject to transfers to secured creditors, judgment creditors, or a bankruptcy estate.

A patent license is essentially a contractual promise not to bring an infringement suit. Even an exclusive patent license does not convey an interest in the patent unless it has the legal effect of an assignment. As an example, an exclusive license may amount to a grant of the “exclusive right to make, use, and vend the invention throughout the United States.”

Our office can assist in structuring these transactions, reviewing/drafting proposals, assessing the validity of the trademarks and patents, negotiating royalties, and related services.