The real "plumbing" of any commercial IP practice is the nitty-gritty of contracts terms. I, for one, as I approach almost 25 years in the practice, still find IP-based agreements, especially licensing agreements, to be a continuing challenge to both my analytical and drafting skills. That said, something that I heard in preparing for the bar exam of the State of Ohio about the time that Ronald Reagan was getting elected president: "When it comes to knowledge, you collectively is always smarter than you individually."
And so--I am reaching out to all of you. I would like to devote periodic posts to issues of IP contract drafting and construction. To do so, I would be most grateful if the readership (whether lawyer or otherwise) would share his/her thoughts. What kinds of IP clauses do you most like, what clauses are most problematic, what kinds of IP contract issues are most troubling, and so on? I will then fashion your comments into posts for the readership. The benefit will hopefully redound to all of us.
One that often causes problems when negotiating a licence is where a licensee seeks a warranty/indemnity that exercising their rights under the licence will not infringe the IP rights of a third party.
It can be difficult to communicate to the licensee that the licensor is simply agreeing not to sue under its IP rights, not making a positive statement that there are no other IP rights which might affect what the licensee will be doing, and that it remains the licensee's responsibility to carry out any clearance searches that may be necessary to establish whether any such rights exist.
Thanks for this.
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