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Licensing Agreement

The right to use a brand name, trademark, patented technology, or ability to produce and sell goods

What is a Licensing Agreement?

A licensing agreement is a contract between two parties (the licensor and licensee) in which the licensor grants the licensee the right to use the brand name, trademark, patented technology, or ability to produce and sell goods owned by the licensor. In other words, a licensing agreement grants the licensee the ability to use intellectual property owned by the licensor. Licensing agreements are commonly used by the licensor to commercialize their intellectual property.

Summary

  • A licensing agreement is a contract between a licensor and licensee in which the licensee gains access to the licensor’s intellectual property.
  • The party providing the intellectual property is called the licensor while the party receiving the intellectual property is called the licensee.
  • In a licensing agreement, the licensee typically pays an upfront fee in conjunction with a royalty fee.

Understanding a Licensing Agreement

In a typical licensing agreement, the licensor agrees to provide the licensee with intellectual property rights such as the licensor’s technology, brand name, or product creation know-how. In exchange for the licensor’s intellectual property, the licensee typically plays an upfront fee and/or a royalty fee to the licensor. A royalty fee is an ongoing fee paid for the right of use of the licensor’s intellectual property.

It is important to remember that:

  • The party that is providing intellectual property rights to another party is called the licensor
  • The party that is receiving intellectual property rights from another party is called the licensee

Contents of Licensing Agreement

A well drafted Licensing Agreement contains the following:-

  • Details about the subject matter being licensed Duration of the license
  • Mode of payment
  • Provision of payment of royalty
  • Exclusive or non-exclusive license
  • Territory of usage
  • Representation and warranty
  • Indemnification
  • Grounds of termination
  • Severability
  • Waiver
  • Other legal clauses

Laws governing Licensing Agreements in India

The different laws which govern various aspects of Licensing Agreements in India are as follows

  • The Indian Contract Act, 1872
  • Copyright Act, 1957
  • Trade Marks Act, 1999
  • Design Act, 2000
  • Patents Act, 1970
  • Competition Act, 2002
  • Stamp Duty Act (State specific)