Whether you need a contract to maintain the confidentiality of your proprietary information, or a licensing and/or assignment agreement for your intellectual property, our Firm has the patent attorneys, trademark attorneys, copyright attorneys, and general intellectual property attorneys to protect you.
- Prevent disclosing confidential information information without consent of the party disclosing the confidential information;
- Hold confidential information in strict confidence and protect it in accordance with the highest degree of care;
- Use any disclosed confidential information only in connection with the purpose or context in which the confidential information is disclosed;
- Not copy or otherwise duplicate the disclosed confidential information, nor knowingly allow anyone else to copy or otherwise duplicate any confidential information under the receiving party’s control;
- Restrict disclosure of confidential information solely to those persons with an absolute need to know in order to perform their duties in connection with the purpose or context in which the confidential information is disclosed, and not to disclose it to any other parties unless required by law or otherwise hereafter expressly approved by the disclosing party;
- Require that all persons given access to confidential information agree to maintain the confidentiality thereof, and otherwise comply with and agree to be bound by the provisions of the confidentiality agreement;
- Immediately return any and all confidential information to the party disclosing the confidential information, upon request of the disclosing party, and/or provide sworn certification of the confidential information’s destruction, and discontinue any and all direct and indirect use of confidential information;
- Notify disclosing party immediately upon discovery of any potentially unauthorized use or disclosure of confidential information and/or any materials based in whole or in part thereon, or any other potential breach of the confidentiality agreement by the receiving party;
- Cooperate with the disclosing party in every reasonable way to help disclosing party regain possession of confidential information and/or any materials based in whole or in part thereon, and prevent further unauthorized use thereof; and
- Not circumvent any confidentiality safeguards associated with any confidential information or materials embodying said information.
If you are an owner of intellectual property (i.e., the “licensor”), and desire to permit limited or non-limited use of said intellectual property while still maintaining your ownership rights, a licensing agreement is likely the agreement you are looking for. Whether you are trying to license a patent or patent application, a trademark, a copyright, or other intellectual property, our patent attorneys, trademark attorneys, and copyright attorneys are experienced and knowledgeable to assist. Specifically, a licensing agreement is a binding legal document that may include terms, obligations, or duties relating to:
- Scope of parties who are bound by the license, i.e., the licensor or the person receiving the license (i.e., the “licensee”), the particular intellectual property licensed, the field of use for said intellectual property;
- The licensee’s authorized activities, including the nature of grant of the license (exclusive/non-exclusive), geographic scope of the license, the triggering events associated with the license grant, limitations on the license grant, excluded fields of use, excluded IP; and
- The amount the licensee has to pay for the licensee (e.g., a lump sum royalty, a running royalty/fixed per unit, a running royalty (percent of revenue), a minimum periodic payment royalty, etc.).
As opposed to an assignment of patent rights or any other intellectual property rights, a licensing transfers a bundle of rights that is less than the entire ownership interest in said intellectual property. Said another way, as discussed above, certain rights that may be limited include the time in which the intellectual property can be licensed, the geographical area in which the intellectual property can be used, or field of use of said intellectual property. If a license agreement is executed, the licensee has consent to use the intellectual property licensed; therefore, as long as the licensee uses the intellectual property consistent with the terms, obligations, or duties of the licensing agreement, then licensee cannot be sued by licensor for infringement said intellectual property.
When you are looking to assign ALL of your rights to patent, trademark, copyright, or other intellectual property asset, the attorneys at Johnson | Dalal are your team. Said another way, an assignment means you are transferring all of your rights, title and interest in a patent, patent application, registered mark, a mark for which an application to register has been filed, work, or other intellectual property asset. An assignment can also be thought of as the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. According to Federal Regulations (37 C.F.R. 3.1), an assignment is defined as
“a transfer by a party of all or part of its right, title and interest in a patent [or] patent application . . . . “
When a person or entity owns less than 100% interest in an intellectual property assent, an assignment may still occur if that ALL of that person percentage in said intellectual property asset is transferred. For some intellectual assets, such as Copyrights, the assignment has to be “in writing” in order for it to be effective. As such, seeking professional counsel to ensure your intellectual property is effectively transferred could be critical to your business dealing.
Therefore, when you need a patent attorney, trademark attorney, or copyright attorney to handle your assignment matter, the Team at Johnson | Dalal has intellectual property attorneys here to assist.