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Intellectual Property Agreement

 

The Intellectual Property as the Product

There are companies that make their living by developing then licensing or even “selling” intellectual property rights, but these are highly specialized and/or very large companies with a large portfolio of patents and other IP rights that were meant to be easily separated and traded or sold.

 Please also see Intellectual Property Agreement Template: 5 Warnings. You may also arrange for a review of one of your agreement templates up to four pages.

The API and PDK

If the product is software (or equipment with a significant software component), then the seller is much better off developing it so that companies (the “buyer”) can create a new solution using:

  • A standardized Application Programming Interface (“API”). The API allows “buyers” to develop product without access to any source code or much in the way of operating code.

  • A Peripheral Developers' Kit (“PDK”) that will be given to potential OEM “buyers” to Flow Chartmake the development of APIs simpler.

There is a parallel well known to the reader for these solutions: the “App” for smart phones which are developed using PDK or similar devices to create new functionality for the phone. The “seller” benefits (aside from any royalty arrangement) from having more and more uses in the market for its core product.

Contracts With Built-in IP Arrangements

The two major types of agreement the author sees using these techniques are:

  • Original Equipment Manufacturer (“OEM”) Agreements. Here the intent is for one company (the “buyer” for this article) to combine another company's (the “seller's”) product, then selling a more complete “solution” to the end user customer. The “seller” incurs lest risk if this can be done through an API and perhaps a PDK.

  • Software Licensing Agreements. The “buyer” may want to “tweak” the functionality of the software in one or two areas through the API. (Yes, the difference between this and an OEM agreement is muddy.)

 In both cases, these mechanisms will be created only if there is an expectation of numerous “buyers” gaining access to the software, whether through formal OEM Contracts or simpler arrangements.

 Being able to us the above techniques makes drafting a contract that solidly protects the “seller's” IP with less convoluted license grants and other impediments. Without these, the “seller” will have to negotiate:

  • A complex software license spelling out what the “buyer” can and cannot do with the software.

  • A development agreement;

  • A Transfer of the IP to the “buyer” in return for royalties, a non-recoverable development cost or other form of payment.

Comments

I'd like to subscribe to your blog.
Posted @ Wednesday, January 04, 2012 7:28 AM by Nan Phillips
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