• Skip to primary navigation
  • Skip to main content
  • Skip to footer

KPPB LAW

Corporate Law Firm

  • About Us
  • Attorneys
  • Practices
    • Asset Based Lending
    • Bankruptcy Law
      • Chapter 7
      • Chapter 11
      • Purchasing Assets
      • Creditor Committee Representation
    • Business Debt Collection
    • Commercial Loan Workouts
    • Commercial Real Estate Finance
    • Commercial Real Estate Transactions
    • Construction Law
      • Construction Project Planning
      • Construction Claims and Disputes
      • Construction Contracts
    • Contract Law
    • Corporate Governance
      • Formation of Entities
    • Cross — Border Transactions
    • Hotel Law
    • Immigration Law
    • Intellectual Property
    • Labor & Employment Law
      • Employment Litigation
    • Landlord/Tenant Law
    • Litigation & Dispute Resolution
    • Mergers & Acquisitions
    • Securities
    • Tax Law
    • Technology Law
    • Trusts & Estates
  • Firm News
  • Legal Blog
  • 1-678-443-2244
  • Contact Us

Assignments and Licensing of Intellectual Property

› Intellectual Property › Assignments and Licensing of Intellectual Property

Intellectual property rights such as patents and copyrights are often transferred in whole or part so that a third party can make use of them. Some common examples of assignments and licensing of intellectual property include an author who licenses her copyrighted novel to a publisher for a time or a software developer that purchases the right to incorporate code created and owned by another into one of its products.

Licenses and Assignments as Options

Licenses and assignments are both ways of granting rights in intellectual property to a third party, but the two alternatives are quite a bit different, and it is important that a person or organization transferring intellectual property rights understand the difference and the ramifications of each. It is equally important that a party seeking to purchase intellectual property rights enters into the type of agreement that will allow the intended use on the intended terms.

Working with an experienced intellectual property lawyer when you are considering entering into a licensing or assignment agreement will ensure that you have the information you need to make the best decision. The attorney can also draft or review the agreement to ensure that the language accurately reflects your intentions and there are no unanticipated obligations or limitations.

Intellectual Property Licensing

Licensing a patent or copyright to a third party means granting that person or organization permission to exercise some or all of your rights. When you grant a license, you still own the intellectual property rights, although the terms of the license may place some limitations on your use of those rights. A license may be exclusive or non-exclusive.

Non-Exclusive Licensing

A non-exclusive license grants a third party the right to use your intellectual property but does not prohibit you from using those rights yourself, or from granting licenses to others. A simple example would be a software platform provider such as Salesforce. Salesforce licenses a customer the right to use its protected intellectual property to manage customer contacts and prospects–the software can even be integrated with other platforms or tweaked to serve the customer’s needs. However, the company’s business model requires that it have the freedom to license that software again and again, to thousands of clients at a time. Thus, the licenses it grants are non-exclusive.

Exclusive Licensing

An exclusive license grants the purchaser the sole right to use the intellectual property, or some portion of it, for either the duration of the licensing period or a portion of the licensing period. For example, when a magazine or other publication purchases an article from a writer, the publication typically takes an exclusive license for a specified period of time, such as 90 days. That short period of exclusivity allows the publication the benefit of being the first to publish and the only source for a period of time. The agreement may also include a non-exclusive license that lasts longer so that the publication can include the piece in anthologies or keep it in an online archive.

Limited Licensing

A license, whether exclusive or non-exclusive, may be limited in various ways. One of the most common is that the license may be time-limited: a license may be granted for a specific time period or in perpetuity. Another is that the license may apply to fewer than all the rights associated with the copyright or patent. For example, a novelist may license book rights to a publisher, but retain movie rights for herself or to license to another party.

Assignment of Intellectual Property Rights

The key difference between a license and an assignment is that an assignment transfers rights away from the original copyright or patent holder. Whereas the licensor retains ownership of the intellectual property rights, the assignor gives up the rights entirely. In simplest terms, licensing is akin to rental, whereas an assignment operates as an outright sale. A copyright or patent holder who has assigned his rights retains no interest in the intellectual property, just as a person who sells a car no longer has a legal interest in that vehicle.

Obviously, a patent or copyright holder who is considering an assignment must think carefully about the legal ramifications and the impact on existing products and systems, and must ensure that the compensation is commensurate with the rights transferred.

Talk to an Intellectual Property Lawyer Before Licensing or Assigning Your Rights

The decision as to whether to license or assign your rights as the holder of intellectual property rights or to pursue a license or assignment as a purchaser, can be a complex one. A miscalculation could mean serious complications and costs. Protect yourself before you start by getting knowledgeable guidance from an experienced attorney at KPPB LAW who can ensure that your agreement protects your interests.


Intellectual Property Attorneys at KPPB LAW

sonjui kumar
Sonjui L. Kumar

Partner
Gaines Carter headshot
Gaines Carter

Of Counsel

info@kppblaw.com


Footer

Atlanta, Georgia

One Lakeside Commons
Suite 800
990 Hammond Drive
Atlanta, GA 30328
678-443-2244
[Corporate Office]

Gainesville, Virginia

7330 Heritage Village Plaza
Suite 201
Gainesville, VA 20155
703-594-4040

Chicago, IL


312-857-5263

New York, New York

12 East 49th Street
New York, NY 10017
203-875-0808

© 2023 KPPB LAW · All Rights Reserved · Legal Disclaimer

Website powered by 321 Web Marketing