4 Provisions of the Contract Licensing Definite o o Limitation / Identification of Rights Licensed o Extent of Allowed Use – entirely or in part o Exclusive or not – Restriction and licensing conditions for licensees o Territory o Sublicensing and reservation of the right to license for other purposes “International distribution and marketing agreements” – Legal Aspects – © Copyright 2008 Naomi Assia – Co. – Law Offices, Patent Attorney. The validity of the relevant dates for validity is generally related to the introduction of an agreement, but may also appear in the Definitions, Signatures or Terms section. Terms details are usually documented in the “Duration” or “Definitions” section of the agreement, but often appear in grants of Right (s) when they are permanent. Licensing (s) is generally included in one of the most intuitive sections of an agreement with labels (e.g., payments. B, royalties, considerations) which are clear indicators of its content. This section may also describe warranty transactions, such as lump sums and staggered payments, which may affect the results of an analysis and/or the overall comparability of the licensing agreement with the transaction being tested. The analysis of all royalty rates in an agreement is essential to determine whether specific adjustments should be made to calculate an effective royalty rate. Industry (s) relevant (s) The sector or sectors document all applicable sectors directly related to the intangible assets granted to them and the industry in which the underwriter has the right to value intangible assets. The SIC code recorded the SIC code registered by the filing company when one of them was indicated.
Sector information can often provide a reliable measure for the initial validation of the comparability of an agreement, since the SIC code may not be linked to intangible assets or industries actually exploited in the agreement. Figure 1, provided by ketMINE Royalty Rate Finder, provides an example of a summary licensing agreement that contains significant licensing conditions that may influence the comparability of one transaction with another. In response, it is likely that analysts will apply to third-party licensing agreements for intangible assets for comparable transactions and terms. While licensing agreements can provide an excellent source of evidence based on facts, the search for important licensing conditions in these documents can be quite complex. Neither agreements are constructed in the same way, and an appropriate analysis to find evidence of comparable results can often involve intensive research of themselves from the most experienced analyst.  The author generally proposes a thorough review of each licensee and licensee from different sources as part of due diligence. Relevant Date The validity date is useful for verifying whether a transaction is being made at the same time as the market conditions of the subject`s situation. The “Term” summary helps determine whether the agreement is still in effect. Any licensing negotiation and the resulting agreement are different, but they all have one thing in common: using clear and clearly defined terms is important to clarify the rights and duties of each party and to bring the interests of the parties to market in pursuit of academic innovation.
Licensing calculations and capital rules to the cost of patent implementation and sublicensing, and everything that happens in between, the details of this agreement are essential to become good for your inventors, your TTO, your licensee and your university. In the future, analysts will be responsible for determining how the analysis of intangible asset licensing agreements can be conducted effectively and meticulously. In the absence of two intangible licensing agreements, the process can often be laborious, even for the most experienced analyst. The use of this two-step approach provides additional defence capability when providing final results to a team, clients or in the courtroom.