Patent License Agreements:

An owner of a patent may not have the resources to commercially exploit his or her intellectual property. In this situation, a third party may be sought to invest in a joint enterprise whereby the owner’s patent is used with the assistance of another party’s capital or expertise. Often, such arrangements involve a patent license agreement. These agreements will be different depending on the subject of the agreement, the industry in which the patent will be used and the specific obligations, rights and liabilities of the parties to the agreement. Generally, the following broad areas may be addressed in such a license document:

• The patent’s permitted use (including restrictions, prohibitions or mandates and requirements);
• The licensee’s rights and liabilities in relation to subcontracting, if ordinarily permitted under the license;
• Payment provisions for the owner of the patent as a result of its exploitation by the licensee (including provisions concerning the amount of remuneration an time for payment);
• Identifying the party which has standing to commence legal proceedings for infringement of the patent;
• Relevant provisions concerning the particulars of the business operations, how the patent is to be dealt with and handled;
• Special provisions relating to the ownership of any intellectual property that may be collateral to the patent which is the subject of the agreement;
• Specific record keeping obligations in respect of royalties (if any);
• Other mandatory reporting obligations to the owner of the patent;
• Restraint of trade and confidentiality clauses (for more information, see our section on “Restraint of Trade” under the Employment title, as well as the section “Confidential Information” under this title);
• Industry specific warranties and indemnities;
• Relevant insurance obligations (if any are recommended);
• Revision of right provisions, whereby the rights of a licensee revert back to the owner of the patent under certain conditions;
• Specific performance obligations of parties;
• An outline of Dispute Resolution procedures and processes; and
• The termination clause.

If you are the owner of a patent, our IP Team at Navado Lawyers and Solicitors can offer advice on how to protect your interest in intellectual property. We can provide drafting services for the creation of a license agreement suits your needs and business expectations. We can also asset in creating an instrument that will secure your interest while allowing you and your business partners the opportunity to efficiently exploit your patent, while knowing precisely what obligations, rights and liabilities exist between all parties.

In the event you are an individual or business that has entered into a binding patent license agreement, or are contemplating entry into such an agreement, we can provide you with the legal services that will help protect your rights in respect of the patent under license. Whether you have already entered into such a license agreement and are uncertain of your responsibilities, or whether you are contemplating such an agreement but are unsure if it is reasonable, we can offer guidance and provide you with targeted legal advice, and where necessary, the appropriate legal representation for dispute resolution or litigation.

If you require assistance with a Patent License Agreement matter, you should make an appointment to see one of our Intellectual Property Solicitors. Please contact us by telephone on (02) 9233 4048 or send an email to info@navado.com.au to arrange a consultation. 

This webpage (and any material or wording appearing on this webpage) is provided for general information purposes only and does not constitute any Legal Advice. It does not take into account your objectives, your instructions or all of the relevant facts and/or circumstances. Navado accepts no responsibility to any person who relies on the information provided on this website. We further refer you to our Disclaimer.