DelMar Law Offices 

Michelle DelMar, Esq.

Free Consultation.

Call: (617) 728-9800

or email Attorney DelMar

Trademarks  Contracts  Corporations  International Business

Licensing Agreement Checklist

Attorney Michelle DelMar

Focusing on Business, the Whole Business and

Nothing but the Business.

Trademark Attorney, Contract Attorney, Corporation Attorney

Michelle DelMar, Esq., Trademark Attorney, Contract Attorney, Corporation Attorney

 
 
Michelle DelMar, Esq.
 
Small Business Lawyer, Trademark Attorney and Executive Contract Lawyer.
 
Martindale-Hubbell®
Client Review Rating: “Preeminent” (5 out of 5)
 Peer Review Rating:  4.7 out of 5
 
Michelle DelMar, Legal Strategist for Top Growing Businesses, provides information,  guidance and services for small businesses:
 

Taking small businesses From Startup:

to Operation:

and Exit, Sale or Transfer:
 
 

Follow Me

Legal Info for Businesses

Business Checklists

Understanding Agreements

Want to Discuss your Business Issues? Click here to speak to Michelle Grenier and/or schedule a consultation.

Subscribe to our blog

Michelle DelMar, Esq.

Business Lawyer, Trademark Lawyer and Executive Contract Lawyer

Licensing Agreement Checklist

     All License Agreements are ‘NOT CREATED EQUAL!"  The type of licensed property/material involved, has a significant effect on the terms that are essential to the License Agreement.  In addition, there are several other important factors that influence the content necessary to create a comprehensive licensing agreement.

Licensing Agreement Issues.

To the extent possible, make sure the proposed licensor has the right to license the property to be licensed, without limitation (e.g. does the licensor own the property and if not, does the licensor have the right to sublicense?; has the licensor licensed rights to others?; If the licensor does not own the rights, obtain copies of license agreements back to the owner).

1. All agreements should include the full legal names and physical address of each party.

2. The Licensing Agreement should contain an accurate, concise, description of the licensed property.

3. Address ownership issues related to derivatives or inventions created by the licensee resulting from the use of the licensed property.

4. Clearly describe the license being granted, including issues of exclusivity, right to sublicense rights, etc.

5. Describe limitations, so as to avoid having the license fall within the scope of franchise law, which is highly regulated, calling registration of the opportunity and other steps to become compliant.

6. Determine the Territory for use and marketing of the licensed property.

7. Allocate responsibility for regulatory filings and export licensing issues, if applicable.

                         Click here to discuss your business goals with License Lawyer, Michelle DelMar, Esq.

8. Determine required quality control and reporting requirements.

9. Address Royalty issues and allocate responsibility for taxes.

10. Address use of related intellectual property, such as trademarks, etc., related to the licensed material.

11. Determine the terms of the agreement and whether there will be options to renew.

12. Determine what is required if quota or minimum royalty not achieved.

13. Determine what is required in event of termination.

14.  If a patent is involved, allocate responsibility for pursuing third parties for infringement.

15. Include comprehensive indemnification clauses.

16. Determined insurance requirements.

17.  Include Confidentiality, non-disclosure provisions with special language for trade secret protection.

18. Include the representations and warranties of the parties that each party is relying upon in entering the Agreement (e.g. that the licensor actually has the right to license to you without limitations, etc.).

19. Determine the governing law.

20. Include other significant and important issues that are unique to your particular situation.

 

Feel free to call to discuss your licensing agreement issues.  I offer a Free Written Analysis of goals, issues, costs, etc.  Click here to discuss your business goals with License Lawyer, Michelle DelMar, Esq.

 

Related Info and Checklists:

Trademark Licensing Agreement Checklist

Distributor Agreement 

 

 

This may be considered advertising under the Massachusetts and Maine Rules of Professional Conduct.

© 2014-2019 Michelle DelMar, Esq. All rights reserved. Boston Business Lawyer, Massachusetts, USA (617) 728-9800 | Maine Business Lawyer, Portland, Maine 

Similar posts
  • Confidentiality Agreement ChecklistCONFIDENTIALITY AGREEMENT CHECKLIST Checklist for Confidentiality Agreements ( NDA ) Consider the following important subjects to be addressed in Confidentiality Agreements.   To learn about When Do I need a Confidentiality Agreement?, click here. 1.            Full names and physical address of [...]
  • Why do I need a Confidentiality Agreement?WHY DO I NEED A CONFIDENTIALITY AGREEMENT?      The Simple answer to the question, "Why do I need a Confidentiality Agreement (or NDA)?" is, "BEFORE YOU DISCLOSE ANY PROPRIETARY SECRET."  If you don't want someone else to use the information that you are disclosing, get their promise not to [...]