1. FAB LAB Talk
12 October 2011
The Good The Bad and The Ugly
Regarding Licensing & Enforcement
Michael Sandys, Partner at
QualitySolicitors Jackson & Canter

2. Licensing your I.P.
 There are various ways of commercialising your Intellectual Property
(IP) and Licensing presents a good classic and cost effective way of
bringing your Intellectual Property to the marketplace, whether it is a
patent and know how or trade marks, designs and copyright.
 It is essential that the license terms are in writing and special
attention should be given to drafting and negotiating such terms.
 By licensing you retain ownership (and certain control) of your IP
whilst allowing others to exploit your IP which should have cost
benefits.

3. Types of Licenses
1. Exclusive License
2. Exclusive and sole license
3. Non Exclusive License
4. Manufacturing License
5. Joint Venture

4. The Licence Terms
1. In writing
2. Duration
3. Define exactly what you are licensing
4. Exclusivity, non exclusivity and sole
5. Royalty streams and audits (speak to your Accountant)
6. Improvements
7. Pulling the plug
8. Choice of Law
9. ADR

5. Joint Ventures
1. Corporate joint venture
2. Contractual joint venture

6. Manufacturing
License Agreement
1. R&D
2. Prototype
3. Control of your IP
4. Protection/Restrictive Covenants
5. Indemnity
6. Selling to the marketplace
7. Ultimate control of your product and marketing

7. Avoid Slipping into
Bad Ways
 Always do your homework/find out as much as possible in
relation to who you are entering into a license with.
 Ask for references – be inquisitive.
 Undertake a company / credit search.
 Ask for examples of what they have achieved in the past.

8. Avoid Slipping into
Bad Ways (Cont) …
 Ask for a copy of their latest business plan.
 Get a detailed cost breakdown and analysis in respect of
prototypes.
 Spend time developing your objectives and think
carefully about the Heads of Agreement (the foundation
stones).

9. Enforcement
(when things turn Ugly)
1. The Lawyer’s letter
2. Litigation and the risks
3. ADR
4. Costs and Insurance (BTE and ATE)
5. Settlement Terms

10. Conclusion
It is important to have the correct structure that fits your IP and the
business objectives.
Thought should be given beforehand as to what you want to achieve
and how and also the milestones.
You should consider the resources that you have and not stretch
yourself too far.
Do your homework beforehand and find out who you are entering
into a contract with.

11. Conclusion (Cont) …
Use an well experienced lawyer to ensure that the
wording is carefully drafted in order to protect your IP.
Finally always consider what you want to achieve if
things do go wrong and plan ahead ie: the alternatives.

12. Contact Details
 Michael Sandys, Partner, Head of Commercial
 Tel: 0151 702 8747
 Email: msandys@jacksoncanter.co.uk