Click here for book table of contents. Trade secrets are an important consideration when licensing a technology. The addition of trade secrets to a patent license can increase the value of the license by three to ten times. Learn the importance of the specific language used, the economic value trade secrets add, the industries where trade secrets are most desired, and the actual valuations and rates used for trade secret licenses.
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Tech Transfer Central is pleased to present this valuable resource in conjunction with FreePatentsOnline for searching university patents by institution. Simply select a university below to view all of their patents, from the most recent to the oldest.
Select an institution Arizona State Univ. Auburn Univ. Baylor College of Medicine Boston Univ. Bowling Green State Univ. Brigham Young Univ. Brown Univ. California Inst. Case Western Reserve Univ. Clemson Univ. Under such circumstances, if the situation changes subsequent to granting of the license for the patent alone, the licensor can always later grant a license for the associated trade secrets.
Intellectual property licenses are contracts which are interpreted and construed under the law of contracts and are interpreted in substantially the same way as any other contract. In patent licenses, the patented grant gives the owner the right to exclude others from the enjoyment of the patented subject matter and thus, the license serves as an understanding on the part of the patent owner not to assert his right to exclude others against the licensee, if and when the licensee practices the invention.
In the field of patents, a license is typically either an exclusive license or a nonexclusive license. An exclusive license includes a requirement on the part of the licensor not to enter into any similar agreement with any other party, or to assert the right to use the patent on its own behalf. To remedy patent infringement, a civil action in a federal court is permitted under the patent law.
However, it is to be understood that if the licensee terminates the agreement and is subsequently threatened with an infringement suit, the licensee has the opportunity to file a declaratory judgment action for obtaining a judgment with respect to the invalidity of the patent. While exclusive and nonexclusive patent licenses are the most commonly known in use, other types of licenses are found in the field of intellectual property.
These include a sole license, a shop right, a label license and a franchise license. In addition, oral licenses, electronic licenses, implied licenses, compulsory licenses in foreign countries, and licenses which arise by the sale of a patented or unpatented article or by estoppel exist.
Additionally, computer software, shrink wrap licenses and click wrap licenses have now come into existence, and compulsory licenses exist in some countries and require licensing of local industries if patent protection is granted, in addition to judicially imposed licenses. Trademark and copyright licenses also are of great importance as well as multimedia licenses. An exclusive license precludes licensor from granting other licenses and the grant of such license bars the licensor from practicing the invention unless the licensor has specifically reserved the right to do so.
If the licensor retains the right to practice the licensed subject matter, such licenses are often referred to as a "sole license". A nonexclusive license is, in effect, an agreement by the licensor not to sue the licensee for infringement of the intellectual property rights being transferred. Such nonexclusive license is also normally not transferable by assignment to any other party by the licensee and, unless otherwise expressly provided for in the agreement, a nonexclusive licensor may practice the invention or authorize others to do so on behalf of the licensee.
The nonexclusive licensor may freely license others, or may tolerate infringers. As a general rule, the nonexclusive licensee does not have the right to sue for infringement whereas if an exclusive license is granted to the licensee, this would typically be permitted, as provided for in the agreement.
A label license is a license which can be granted under either patented or unpatented products. These label licenses typically require labeling of the patent number on patent products. A franchise license differs from a normal patent license in that the bundle of rights transferred directly affects the image of the franchisor and the degree of control imposed by the transferor is correspondingly greater.
A franchise license allows for the expansion of business through independent franchise operations and is a significant recent event in U. An express license is a contract whose terms have been stated with specificity and which usually appears in a written agreement. However a license can be an oral license. Oral licenses may, however, be void or unenforceable if they violate the Statute of Fraud provision of the jurisdiction in which the contract is made.
Disputes of this type arise more frequently in connection with oral parol licenses which are not to be performed within one year. The existence of terms of an oral license must be proven in court by a preponderance of evidence.
Electronic licenses have evolved as a result of the impact of computer technology which has provided easy access of e-mail and the Internet. The result is the establishment of a new type of contract which often appears on a computer screen and invites acceptance by clicking on the acceptance symbol on the computer screen.
As with oral licenses, these electronic contracts may create problems under a state's Statute of Frauds law. This area of contract law is presently evolving and raises complex issues which have not yet been addressed by many states. However, the Virginia General Assembly enacted a law of this type on March 14, Implied licenses can result from the conduct of parties where no written agreement has been signed.
A license to make, use or sell patented invention can arise by implication from the acts of the patentee or one acting for the patentee. It is also possible for a patentee to allege that the conduct of an infringer was such as to imply acceptance of a license. However, the existence of an implied license ultimately is determinable based upon the intention of the parties and the scope of such license depends on the circumstances surrounding the creation of such license.
A determination as to whether a license will be implied depends on whether the patent owner under the circumstances is estopped from asserting infringement. An implied license can arise from the sale of a patented or unpatented article. In particular, the authorized sale of an article, patented or unpatented, whose sole use is in the practice of a patented combination, process, etc.
The implied license, however, will only last for the life of the component. Consideration is generally in the form of royalties that are paid throughout the duration of the license. Because payment methods and amounts can vary depending upon the circumstances of the transfer, it is usually a good idea to consult an experienced attorney before entering into any trade secret license agreement. In addition to the license and payment terms, which often are the basis for negotiation in a trade secret license agreement, there are terms often considered boilerplate, but important nonetheless.
These include: a provision for arbitration; a clearly defined governing law that can be used in cases of enforceability and the interpretation of contract terms ; language that does not diminish any previous non-disclosure pacts signed by the parties; a survival clause that maintains the secrecy of the property after termination of the license; and notification provisions that compel the licensor to immediately contact the licensee should an unintended disclosure of the trade secret occur.
While trade secrets have not traditionally had the standing of other intellectual property, such as patents, trademarks , and copyrights , in the minds of the general public, they are nonetheless important to a large number of businesses. All Trade Secrets licensed pursuant to this Section 8. Sample 1. Sample 2. Sample 3.
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