Drafting Licenses to Guide Whether Potential Disputes Lie in Contract or Infringement

Authors

• Edwin E. Richards

Abstract

A contract draftsperson has many questions to consider when a client decides to license her intellectual property rights to another party. What rights should be assigned or licensed? What should the duration of the license be? What should the royalties be and when and how will they be calculated?, What law should govern? The contract draftsperson must also probe further and confront a very "murky" area when attempting to craft the agreement-he must ensure that the licensing contract will not ultimately bar the client from gaining access to federal court to raise an infringement claim. The draftsperson must anticipate the client's desire to sue for infringement when a licensee breaches a licensing contract. Will a breach of a licensing contract result in a breach of contract action or an infringement action? To a great extent, the draftsperson can proactively answer this question if he considers this potential issue when drafting the agreement.

Recommended Citation

Edwin E. Richards, Drafting Licenses to Guide Whether Potential Disputes Lie in Contract or Infringement, 7 Computer L. Rev. & Tech. J. 45 (2002)