IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.
Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office.
You can sell your IP asset to another person or legal entity.
When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.
Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.
Learn more about the commercialization of patents, trademarks, industrial designs, copyright.
You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.
Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.
If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.
Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.
Through a technology licensing agreement, a technology usually protected by patents and/or trade secrets (know-how) can be licensed to another business.
For the business owning the technology and granting the license (the licensor) it could mean entering into a new market or growing in an existing one, for example by expanding the application of its technology into new application fields. For the business acquiring the right to use the technology (the licensee) it often means using another’s technology to improve the quality of its own product/service, to develop something new using the original technology, or sometimes to simply manufacture it.
Similarly to patents and know-how, through a trademark licensing agreement, a business can get a license to use a trademark of another business. This allows the licensee to market a product or service, which is protected by a trademark owned by another enterprise. Alternatively, granting a license for a particular product or service allows the trademark owner to enter other markets and expand its business.
Trademark licenses can be granted within broader licensing agreements, for example franchising agreements, or agreements including the licensing of other IP rights such as patents, know-how and industrial designs.
Expert tip: Licensing is linked to the source of goods/services and the accompanying perception of quality/reputation. Therefore, a trademark owner (licensor) is well advised, and often required by trademark law, to retain some degree of control over the authorized user (licensee) to guarantee that a certain quality of goods/services is maintained.
A copyright licensing agreement gives a copyright owner the chance to expand his/her options by giving another the right to use its copyright-protected works. And vice versa, those interested in accessing copyright protected works have the opportunity to do so by acquiring a license.
Businesses often need to use works protected by copyright or related rights works to support their business activities. When using the work of others you must first determine if copyright permission is required.
Expert tip: A common misperception is that works published on the Internet, including on social media platforms, are in the public domain and may be widely used without the authorization of the right owner. Some websites contain a general license that may exempt you from requiring a direct authorization for certain uses.
Copyright owners can find it difficult to manage rights on their own, so many have formed collective management organizations that represent them and manage their rights.
In a franchising agreement, an entity (franchisor) that has developed a system for conducting a particular business allows another person (franchisee) to use its proven business model. The franchised system includes a package of IP rights, which can consist of one or more trademarks, trade names, patents, industrial designs, copyrighted works, together with relevant know-how and trade secrets.
In essence, a successful business is replicated and run by a franchisee, who can use the associated IP rights under the supervision, control and assistance of the franchisor. The franchisor will ensure, through the supply of technical and management skills, that the franchisee maintains the quality and other standards in relation to the used brand.
Learn more about franchise licensing, read our guide entitled In Good Company: Managing IP Issues in Franchising.
Merchandising is also a specialized form of IP licensing, when the owner of a trademark, industrial design or copyright gives another person the right to apply that mark, industrial design or copyright, usually on ordinary consumer goods to enhance the appeal of those goods. This provides the owner of the right with an avenue to obtain additional revenue from his right and gives the licensee the possibility of enhancing the value of his goods and thus the likelihood of sale and of higher price of these to gain more revenue and profits.
A joint venture may consist of any business relationship that involves two or more enterprises pooling their resources with the objective of implementing a common business purpose. Often, in such agreements, one party will contribute technology or know-how belonging to them and the other party may contribute financially or through expertise.
The joint venture will, therefore, often include license agreements to regulate the use of relevant IP rights. In addition, the joint venture agreement may also need to regulate the ownership of any new IP arising from the collaboration.
Expert tip: In the international context, a formal licensing agreement is relevant only if the IP rights sought to be licensed are also protected in the other country or countries of interest. If relevant IP assets are not protected in other markets then the issue of licensing does not arise.
