Establishing licensing structures which seek to grant different rights of use across different fields and applications and within different jurisdictions can seem complicated and challenging. Choosing the right licensing model for your business and putting in place the right documentation is essential to ensure that you maximise the value of any IP exploitation and effectively manage your licensing arrangements. An ad hoc and reactive licensing programme may lead to inefficient licensing, loss of revenues, difficulties in monitoring licensee activity and the granting of conflicting licences which could lead to licensee claims.
We have significant experience of advising a wide range of clients across numerous sectors on complex licensing arrangements. We carefully review existing licensing structures, the IP rights to be licensed and, current business strategy, as well as our client’s current licensing objectives. We help our clients to develop and implement an efficient and effective licensing structure with associated documentation that compliments their business strategy, meets their licensing objectives and which can be managed independently by the business.
R&D and collaboration arrangements can also involve complex licensing and ownership issues including use of background IP contributed by the parties for purposes outside of the project and the use of project foreground IP by the project participants, both for academic and commercial exploitation purposes.
We have extensive experience of R&D and collaboration agreements with members of the team having participated in secondments at a leading global engineering business, dealing with these types of arrangements on a daily basis. We understand the requirements and challenges faced by industrial participants and research organisations and the industry ‘ways of working’, as well as the issues associated with government funded projects including State aid considerations.
Advising a world leader in 3D holographic technology on the restructuring of its existing global licensing structure. We carried out a detailed review of their existing licensing model and agreements and helped them to implement a more accessible and efficient one. This included identifying each of the different and separate licensing and exploitation arrangements which they were using and advising on which were appropriate to which situations. We also prepared a suite of standard template agreements, with guidance on when and how each should be used, ensuring the template agreements contained robust provisions for the identification, reservation and protection of our client's IP assets. Finally, we assisted with implementing the first tranche of licensing and exploitation agreements including with partners in Slovenia, India, Korea, Hong Kong and Russia. This enabled our client to see how the template agreements would be negotiated, completed and implemented in reality.
We acted for a large high street food retailer who had engaged an international developer, producer and marketer of foodstuffs to develop a non-animal based mix of ingredients to substitute gelatine in confectionary products. We drafted and assisted in the negotiation of the R&D and exploitation agreement between the entities. This involved complex and difficult negotiations particularly around ownership and use of foreground IP. Key terms were concluded to the satisfaction of both parties including a programme of development works with milestones, ownership of foreground IP (recipes for gelatine substitute) by the food developer, obligations on the developer to seek patent protection for foreground IP, perpetual licence for the retailer to use recipes in the confectionary market under an exclusive licence for a defined period and an obligation on the retailer to purchase ingredients for recipe from food developer for exclusive licence period.
We have participated in a secondment at a major global engineering business advising on various R&D and collaboration arrangements with both industrial participants and research organisations. The work included drafting, reviewing and assisting with the negotiation of R&D and collaboration agreements, IP schedules and confidentiality agreements and advising on R&D contract structures and IP ownership under government funded projects.
In the ongoing complex litigation between Optis Cellular Technology LLC and Apple Inc., the Court of Appeal ([2022] EWCA Civ 1411) has upheld the High Court’s findings that implementers of standard-essential patents (SEPs) cannot refuse to accept a FRAND license and continue activities in the meantime which constitute infringement: that party must commit to accept a court-determined license if it wishes to avoid an injunction.
Every AI will have its own terms of use. DALL·E 2’s Terms of Use dated 3 November 2022 specify that as between a user and Open AI, a user owns their prompts and uploads. Open AI also assigns to the user all rights in any images generated by DALL·E 2 for that user (subject to the user complying with those Terms of Use, and to a licence to use inputs and output to develop and improve the services).
A deepfake of Bruce Willis is advertising Russian mobile phones. Many great artistic and metaphysical questions are raised by this performance. However, this article is going to look at the intellectual property law implications, from a UK perspective.
Browne Jacobson’s national IP lawyers are celebrating after being ranked in the 2022 World Trademark Review (WTR) 1000 - the independent guide which recognises leading trade mark experts across key jurisdictions around the globe.
In Nissan v Passi, the High Court recently considered the issue of an employee retaining confidential documents belonging to his former employer in the context of the employer’s application for an injunction seeking the return of such documents from the employee.
In July this year, four years to the month after its introduction into UK law in the Supreme Court’s seminal judgment in Actavis v Eli Lilly, the court handed down its latest decision applying the ‘doctrine of equivalents’.
The Court of Appeal has held that an AI machine cannot be named as the ‘inventor’ of a patent, because it is not a ‘natural person’, and is therefore also incapable of transferring the right in that patent to a person.
Browne Jacobson’s national IP team is celebrating after again securing Tier 1 rankings in the East and West Midlands region and maintaining its Tier 3 status in London in the latest edition of Legal 500.
Reaction: Intellectual Property Enterprise Court judgment finds patent infringement based solely on equivalents
The adoption of smart technology solutions by the health and care sector has exploded in 2020. The pandemic has driven the sector to increase its use of smart phone technology solutions (“Apps”), an example of which is conducting video consultations and assessments.
Covid-19 and the challenges associated with it grind on into a second wave. Not only that but there’s the prospect of Brexit and a looming recession ahead. It would be entirely forgivable not to be on top of the law right now. Watch our on-demand video, where we have discussed Brexit and intellectual property and consumer and commercial law changes.
We can how help you understand the potential issues that any changes will have on your business.
Lord Justice Arnold has applied the guidance of the Court of Justice of the European Union (CJEU) to the evidence before him, in the long standing trade mark dispute between Sky and Skykick.
At a time when Amazon is fielding large spikes in demand amidst the coronavirus pandemic, the online retail platform will welcome the ruling of the Court of Justice of the European Union (CJEU) received on 2 April 2020.
Our expert panel, comprised of IP and corporate law specialists, will be discussing IP commercialisation strategies, their benefits and pitfalls, drawing on experience across the private, public and higher education sectors.
Parallel importers seek to exploit price differentials for goods sold in different countries. The EU principle of exhaustion of rights prevents businesses from enforcing their IP rights to restrict this secondary trade within the EU if the goods were first marketed in the EU with their consent, other than in limited circumstances.
The sole result for a search on Westlaw for the phrase “utterly horrified” is an interesting decision from Mr Justice Arnold on June 12 2019 about evidence in passing off proceedings.
After much speculation about what the first fines issued by the Information Commissioners Office might be we have seen two significant statements of intention to fine in the same month
Innovation and creativity is driven by your people. How do you as a business encourage innovation, capture the relevant IP assets and reward your innovators?
Browne Jacobson’s intellectual property practice has again been ranked in one of the world's leading guides to intellectual property (IP) firms and practitioners.
The Hiscox Cyber Readiness report, a review of 3300 organisations, will be a stark warning for CEO’s of SME’s in the UK and in Europe.
Browne Jacobson is delighted to have assisted Wolverhampton Wanders Football Club to successfully defend a copyright infringement claim made against it which relates to the club’s iconic wolf head design. The club has used this design as an element of its badge since 1979.
As private businesses, public bodies and universities alike strive to gain a competitive advantage, each increasingly look to each other to develop next generation products and services.
In this webinar recording, our experts Mark Daniels and Helen Simm provide you with the key information you need to identify issues relating to the disclosing of documents relevant to litigation, which may have to be disclosed if they are not privileged.
Browne Jacobson has appointed Peter Allen as Partner to its Manchester office, as it continues to grow its North West corporate practice.
Two of Browne Jacobson’s intellectual property associates Nick Smee and Giles Parsons have been named ‘Rising Stars’ by leading IP publication Managing Intellectual Property.
