Technology Licensing & IP - Common Issues to Consider

Introduction

When you are advising upon or involved in a technology licensing arrangement it may be the case that the IP issues are skated over.

This might because the software or system is defined in the agreement or that the focus is on other clauses such as price and payment.

Because of this it is often the case that not enough attention is paid to the intellectual property rights that are involved with or underpin the software or system.

These issues can remain unnoticed or unresolved for many months or years until at some point, often upon a new investment or sale or merger of the business, questions begin to arise around the technology transaction and how the IP was or has been dealt with.

At that point the IP can be very valuable and if the rights have not been dealt with correctly then litigation can arise.

This new virtual classroom seminar will cover the common issues that can arise.

What You Will Learn

This live and interactive session will cover the following:

• Who owns IP that is created by a supplier for its customer if there is no express allocation in the agreement?
• What happens if the supplier has mingled in its own IP with fresh IP that has been created for the customer?
• What happens if the supplier has included third party IP (such as open source code) in the IP that it provides to the customer?
• At what point (if ever) is or should the IP be transferred to the customer? At the start of the deal, upon milestones being achieved, at the end of the deal or on some other trigger point such as when full payment has been made?
• Why does an IP indemnity provision need to be in a technology licence arrangement? What issues or gaps often occur in these kinds of indemnities?
• Should an IP indemnity be capped, or should it be unlimited?
• What happens if you own IP rights in software or source code, but you don’t actually have physical possession of that IP or source code?
• What is the latest position in case law regarding non-employees such as freelancers, consultants and contractors providing ideas re: IP or actually contributing to the creation of IP?

Recording of live sessions: Soon after the Learn Live session has taken place you will be able to go back and access the recording - should you wish to revisit the material discussed.