Since intellectual property rights are a kind of “property right”, they can be bought or sold through an assignment or “rented” through a license (exclusive or non-exclusive). It is possible to license the trade secrets, technical know-how and common law rights to another while the other forms of intellectual property you possess await registration.
Ownership
Assignments transfer intellectual property rights from the owner of the rights (the assignor) to another who wants to own them (the assignee). The assignee could be an individual, multiple individuals, a legal entity (such as a corporation, limited liability company, partnership, etc.) or a combination of legal entity and individual(s). An assignment can convey the rights either unconditionally or conditionally. In the case of the latter, if the condition is not met, usually the assignment document provides that the rights revert back to the previous owner. Hess Patent Law Firm can draft an appropriate assignment document to suit your needs. To sue for infringement, all the current owner(s) need to be a party to the litigation, e.g., the assignee(s). In addition, any exclusive licensee would need to be a party to the litigation as well.
Licensing
Licenses transfer intellectual property rights from the owner of the rights (the licensor) to another who wants to use them (the licensee).
Licenses can be exclusive (rights granted to only one licensee) or non-exclusive (rights granted to multiple licensees). To sue for infringement, an exclusive licensee needs to be a party to the litigation; mere licensees do not.
A licensee typically pays the licensor a royalty in exchange for the right to use the intellectual property rights. Royalties generally are based on a percentage of the licensee’s revenue from the sale of products using the licensed rights.
Licenses can be valuable assets for your business. For the licensor, licenses can create a significant revenue stream from royalty payments. For the licensee, licenses give permission to sell high-quality, in-demand products in the marketplace.
If you are seeking to license patent rights from another or licensing your patent rights to others who expressed an interest, please don’t hesitate to give Hess Patent Law Firm a call to help your business move forward.