Intellectual property (IP) can be an important source of revenue to a business. There are three main ways intellectual property (IP) owners generate revenue from their IP rights: use the IP rights themselves to produce a product or service; assign (sell) the rights to another party to produce a product or service; or license them to another party to do so. Licensing all or a part of the IP rights to another party (the “licensee”) to use in exchange for a fee (usually called a “royalty”) is one of the most common ways. A license of IP rights does not transfer ownership in the IP; it only gives the licensee permission to use the IP within the terms of the IP licensing agreement (the legal contract by which the IP rights are licensed). The three primary kinds of IP licence are:
對生意而言，智慧財產權是一個重要收入來源。這裏有智慧財產之權利人從其所有之智慧財產產生收益之三種方式。利用智慧財產權去生產產品或服務；讓與智慧財產權與他人去製造產品或服務；或授權他人去製造產品或服務。智慧財產權之全部或部分授與他人以取得權利金，是最普遍利用方式之一。智慧財產權之授權並非移轉智慧財產權；其僅是授權他人於授權契約之期間內取得許可去利用智慧財產權。三種主要的智慧財產權授權類型是：
Whichever kind of licence the IP owner grants, it’s critical that the IP owner enter into a written IP licensing agreement that’s carefully drafted both to satisfy the requirements of any laws applicable to the particular IP right, and to adequately protect the IP owner’s rights. An IP licensing agreement can be lengthy and complex, and its terms will vary somewhat depending on the IP right being licensed and on the deal struck. However, IP licensing agreements typically all include these 10 key terms:
智慧財產權之權利擁有者，要採取何種授權模式，在訂立智慧財產權授權契約，是極其關鍵的；而該授權契約應小心翼翼地草擬於適用特定的智慧財產權及適當地保護智慧財產權人兩者，皆須符合任何法律要件才是。一紙智慧財產權授權契約能能適及其冗長及複雜的，同時其內文條款會根據其被授與之權利及所觸及之交易而有些許不同。然而，典型的智慧財產權授權契約，包括下列10個關鍵條款：
1. Grant. Identification of the IP that’s licensed and the scope of the rights granted, such as any geographical limitation, the degree of exclusivity of the grant, and whether the licensee has the right to sublicense the IP rights (and if so, any related restrictions or limitations).
授權：智慧財產權授與者之身分及授權範圍，例如：任何地域之限制、授權排他性之程度及被授權人是否有權再授權（假如有，任何相關的限制都要敘明）。
2. Reservations & Restrictions. Any limitations on the purposes for which the licensee is permitted to use the licensed IP rights.
3. Term & Termination. The length of the licence, the grounds on which the parties can terminate the licence, and the parties’ rights and obligations on termination or expiration of the licence. In many cases, it will be important to require the licensee to immediately cease using the IP rights and to remove any references to the IP from all of its materials in the event of termination or expiration of the agreement in order to best protect the IP owner’s ownership of the IP rights. However, the nature and extent of the licensee’s obligations in this respect may vary depending on the nature of the IP, the nature of the industry in which the licensee operates and the reason for the termination (for example, termination for cause versus expiration).
4. Acknowledgement. The parties’ acknowledgement of the IP owner’s exclusive rights and the licensee’s agreement not to challenge those rights.
5. Maintenance & Improvements. The licensee’s acknowledgement that it will take whatever steps are necessary to protect the IP owner’s rights, and that the IP owner will own any improvements the licensee makes to the IP rights.
6. Royalties. The amount of the royalties the licensee must pay the IP owner, the payment terms, the responsibility for any taxes, and the IP owner’s reporting and audit rights vis-à-vis the licensee.
7. Confidentiality. The information the parties exchanged and the terms and conditions of their confidentiality obligations respecting that information.
8. Representations & Warranties. Often hotly negotiated terms, these typically include: the IP owner’s representations and warranties respecting the validity of the licensed IP right(s); confirmation the licence does not infringe any third party’s IP rights; and the licensee’s agreement to indemnify the IP owner for any loss caused by its acts and/or omissions and any limits on the licensee’s liability to do so.
9. IP right-specific clauses. Particular clauses that are specific to the type of IP right(s) licensed in the licensing agreement, either to ensure the requirements of any applicable laws are satisfied, to ensure the IP owner’s rights are adequately protected, or both. For example, Canada’s Trademarks Act (which in June 2019 underwent significant changes) is the law governing Canada’s trademark ownership and protection regime – including the licensing of trademarks to third parties. If the licencing agreement includes a grant of the right to use, advertise or display a trademark, then to comply with the Act and ensure the IP owner’s rights are protected, it’s crucial to include clauses dealing with the IP owner’s ongoing control over the character and quality of the goods and services associated with the licensed trademark. This includes the IP owner’s right to inspect those products and services to ensure they are of a character or quality required by the IP owner and defined in the licensing agreement.
10. General “legalese”. The “standard” (but still important) contract clauses, including: the “governing” law (the law that applies to the licensing agreement); rights of the IP owner and of the licensee to assign the licence agreement; what occurrences will constitute a “change of control” of a party (such as a sale or bankruptcy, for example) and the consequences of a change of control taking place; and the severability of the agreement clauses.
