One of the rights that you have as the holder of intellectual property is the ability to license it out to others. While you have a lot of power to determine how the asset is used, there are still significant questions that need to be answered when you secure and license intellectual property in Boca Raton. At Lomnitzer Law, we recommend consulting with our tenacious intellectual property attorneys before deciding how to manage the rights to your work.

How to Secure Intellectual Property

First, a lawyer counsels their clients as to what kind of intellectual property they are seeking to protect, and determines whether it is a copyright, trademark, or patent. At that point they would proceed with obtaining an application at the relevant agency (the U.S. Copyright Office or the U.S. Patent and Trademark Office). Sometimes there are other individuals or businesses using the same name for their work, or a name that is similar. With respect to patents, there could be other patents of prior art that would prevent the issuance of the client’s new patent.

If they are not counseled by an attorney, it is easy for a person in Boca Raton to make a mistake when trying to secure their IP by not performing the proper searches. Our lawyers have the experience to determine what IP needs protection, as well as the proper strategy to protect their respective intellectual property.

Another way that someone can secure their intellectual property is through license agreements and coexisting agreements. If a similar mark exists, and the two entities are not in the same type of businesses, both entities can agree to coexist together with their trademarks. Patents and copyrights can also be licensed out for 3rd-party use.

Important Aspects of an IP License

Through licensing, an IP owner grants third-parties the right to use their IP, while retaining their ownership. It is important to determine who the licensees are and how much control a client wants over them. An IP holder will need to determine the rates, terms, and territory of the license, and must have the ability to revoke the license agreement, if it becomes necessary. If there are any lawsuits during the term of the agreement, a lawyer could discuss the possibility of indemnification – or compensation – due to the breach. No one should try to secure and license out their intellectual property in Boca Raton without first consulting an attorney on the various legal decisions they will have to make.

National vs. International License

If someone is negotiating an international license for the right to use or reproduce their work, they must ensure that they have easy access to a court in the event there is a breach or a misuse of the license. This may be more difficult if the jurisdiction is international.

Exclusive vs. Non-Exclusive License

“Exclusive” use of a work means a licensee is the only person or entity that can use the intellectual property, and “non-exclusive” means that the licensor can license the intellectual property to multiple entities at once.

Lump Sum Fee vs. Recurring License Fee

A licensor will need to determine if they want a one-time fee for the use of their work or if they want to get paid in royalties; meaning every time the work is used, exhibited, or sold. Every case is different, but for some intellectual property – like a patent – it may be more advantageous to get a royalty license fee.

Granting a License Annually vs. Indefinitely

Lomnitzer Law does not recommend an indefinite license because the licensee might use the intellectual property in a negative way, possibly causing reputational damage. Additionally, the property might become more valuable overtime, which may be a reason to change the terms of the license. It would be better to have an expiration date. A description of the rights being licensed and discussions on royalties can be complicated, and geographical limits can create even more conflict.

What is the Difference Between Reproduction, Distribution, and Adaptation?

Reproduction means someone is making another copy of the intellectual property to be displayed or sold. The reproduction right is one of the exclusive rights granted to the owner of a copyright by the Copyright Act. Under this right, no one other than the copyright owner may make any reproduction or copies of the work.

Distribution means that a work is already complete, and is being sent out to a particular area or country to be screened (like a film) or sold (like a book or an invention).

An adaptation means that someone is using the essence of the copyright but making it more of their own creation. An example of this is turning a novel into a film, or turning a TV series into a comic book.

Consult a Boca Raton Attorney when Securing and Licensing Intellectual Property

Licensing the rights to your products and creative expressions can have major financial implications. In order to put yourself in a good position, retain the services of a lawyer when securing and licensing intellectual property in Boca Raton. Reach out to Lomnitzer Law as soon as possible.