Intellectual Property Primer

a lex-warrier initiative

Exploiting intellectual property through agreements

Creation of value from intellectual property is the primary force of intellectual property management. Intellectual property commercialization is a significant method in which an intellectual property contributes to the knowledge economy. Exploiting intellectual property helps an organisation or an enterprise to, (a) increase its revenue; (b) increase recognition of products; and (c) establish a bargaining position in the commercial transaction.

Like all other kinds of property, even an intellectual property can be transferred from one person to other for its commercial exploitation. Agreements are one of the most commonly used medium for exploiting intellectual property.

License agreements for exploiting intellectual property

An IP is a bundle of negative and positive rights. It allows the right holders to exclude others from exploiting the intellectual property in certain ways. At the same time it also allows the right holder to assign/license such IP Rights, including using the same as a collateral in case of a mortgage.

Licensing agreements are more often related with the technology transfer. It allows interested party to commercially exploit the rights of an IP right holder by paying royalty.However, licensing is more than mere collection of royalty. It is a risky business, where expertise in the fields of negotiation, quality control, brands, marketing, retail, manufacturing process and of course the knowledge of contact law is very much essential.

Major forms of licensing agreements are (a) Exclusive agreements; (b) Non-exclusive agreements; and (c) Sole agreements. At the same time an intellectual property may be transferred from one to other by way of assignment, testamentary disposition or by operation of law.

Difference between Licensing and assigning an intellectual property

Licensing on one side limits the right of ownership of an IP holder. In other words, a license grants certain parts of the exclusive right to a third party. Assignment on the other side deprives the IP owner of proprietorship in the intellectual property. i.e., an assignment is nothing but the transfer of ownership of an intellectual property from its owner to a third party. It entails the transfer of the whole property rights or its interest alone. An assignment shall always be done in writing. Depending upon the nature of the intellectual property, the same may be assigned either as a whole, a part or as an undivided share in the whole.

Business collaboration agreementsfor exploiting intellectual property

These forms of agreements sketches the detailed role of different parties to such an agreement who are working towards a common goal under the terms and conditions of such collaboration agreement. Business collaboration agreements helps the parties to clearly identify their duties and responsibilities while collaborating each other for a specific purpose. In other words, it documents the specific terms and conditions to be fulfilled by the parties.

Scope of the agreement, time frame within which the obligations has to be completed, funding details, ownership of intellectual property rights created out of such collaboration, termination and effect of termination, dispute resolution mechanism, handling commercial confidence etc. are the common clauses dealt under a business collaboration agreement.

Assignment agreementsfor exploiting intellectual property

These forms of agreement outlines the transfer of intellectual property rights from the intellectual property owner to a third party. Through an assignment agreement, a party who transfer the IP rights is called assignor and the party in whose favour the IP rights are assigned is called the assignee.

Assignment agreements are also known as Deed of Assignment. Every assignment agreement shall postulate the rights which are assigned, time frame of such assignment, royalty payable and other specific terms and conditions to be followed by the parties during the tenure of such deed of assignment.

Non-disclosure agreementsfor exploiting intellectual property

A non-disclosure agreement (NDA) or a confidentiality agreement enable transfer of confidential information in a thriving fashion so that the disclosing party’s confidential information is protected from disclosure to third parties. These forms of agreements are entered between two parties when they are interested to understand the process used in a particular commercial activity and to frame future plans. These forms of agreements either;

  • Mutual: Where both parties to the NDA agrees not to disclose the information received by them during the course of such NDA to a third party till such period as they are governed under the terms and conditions of such NDA; or
  • Unilateral: Where one party to a confidential agreement agrees not to disclose the information received by them during the course of the agreement to a third party till such period as they agreed under the agreement.

Material transfer agreementsfor exploiting intellectual property

Material transfer agreement is nothing but an agreement under which one party transfer any tangible material to the other party for further clinical trial. Thus, these forms of agreements are also known as Sample Confidentiality Agreements. The recipient may use such tangible material for its own research purpose or may conduct necessary research for the provider.

Sample Confidentiality Agreements governs the roles and functions of the parties during the tenure of such agreement. These forms of agreements are commonly seen among the organisations involved in biological research. It protect the interest of the provider by preventing unauthorized distribution of the sample to any third party by the recipient.