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TECH & IP LICENSING > final > Flashcards

final Flashcards

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1
Q

license

A

owner of IP/info granting another the right or permission to use the IP/info under certain defined circumstances

(granting right to use as per an agreement, not selling or transferring)

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2
Q

copyright

A

original work of authorship fixed in a tangible medium

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3
Q

“tangible medium”

A

the expression of an idea, not the idea itself

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4
Q

“bundle of rights”

A
  1. reproduction
  2. distribution
  3. create derivative works
  4. public performance
  5. public display
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5
Q

how long does copyright last?

A

generally life of author + 70

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6
Q

patent

A

for new, non-obvious, useful inventions

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7
Q

types of patents

A
  1. utility
  2. process
  3. plant
  4. design
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8
Q

how long does patent last?

A

for a finite number of years
(i.e. utility = 20 years from filing application, design = 15 years from grant of letter patent)

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9
Q

patents are an ______ right

A

exclusionary - granted when issued (need paper in hand, unlike TM or copyright)

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10
Q

trademark

A

name, symbol or other device used to identify the source of a good

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11
Q

trademark protects …

A

the IP owner’s right to prohibit others from using a confusingly similar mark (sound, appearance, connotation)

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12
Q

how to get TM rights?

A
  1. use in commerce; or
  2. registration with USPTO
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13
Q

service mark

A

used for services, whereas TM used for goods

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14
Q

trade secret

A

info that is deemed secret because of it has economic value

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15
Q

examples of trade secret

A

recipe, client list, anything in terms of strategies, financial info of company, distribution schedules, list of vendors, data analytics/research

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16
Q

how long does trade secret last?

A

forever, provided it is not exploited (subject matter kept secret until its published)

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17
Q

common licensing provisions

A

names of parties (PPB for corps), date (especially commencement date), recitals (whereas clause), definitions, consideration/covenant clause, grant clause, delivery and inspection, duration (term), choice of law, choice of forum, export controls, complete agreement, assignability/severability, notices, manifesting assent

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18
Q

recitals (whereas clause/preamble)

A

discusses history of the parties and why they’re entering into the contract (sheds light on the intent of parties or terms being defined)

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19
Q

definitions

A

specific to the agreement

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20
Q

consideration/covenant clause

A

payment of money (royalties), exchange (license for license), or services

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21
Q

grant clause

A

present grant - “hereby grants”

details exclusivity, sets out territory

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22
Q

delivery and inspection

A

TM licenses have a quality control document that details acceptance/rejection of product (what constituted acceptance and when it occurs)

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23
Q

duration (term)

A

how long agreement lasts from effective date

definitive term then stop or automatic renewals?
whether breach ends agreement or just shortens it

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24
Q

choice of law

A

which jurisdiction’s law will control the agreement

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25
choice of forum
where the case will be heard
26
export controls
to ensure that not in violation of any US exportation laws
27
complete agreement
parol evidence rule: only terms of contract govern, nothing outside or prior to contract
28
assignability/severability
whether one can transfer rights/duties under agreement to another party ** transferring all rights, title, and interest in IP + goodwill
29
notices
general titles rather than names, always send copy to general counsel
30
brands signify ___________
quality and goodwill
31
goodwill
why consumer repurchase a particular good or service (notion of consistent quality - look and feel of packaging, name, designs)
32
test for TM infringement
confusing similarity
33
assignment of TM
** requires goodwill no goodwill = assignment in gross, which means no rights pass to assignee
34
license-back
1. assignor --> assignee 2. assignee licenses back for use
35
exclusive TM license
can exclude even seller from selling in that territory (requires explicit language)
36
non-exclusive TM license
generally non-transferrable without express consent of TM holder
37
quality control
if licensor does not exert quality control over goods used by licensee under TM, then naked license (rights in TM could be abandoned) generally licensor requires licensee to comply (i.e. depiction of mark, how product manufactured)
38
copyright rights are ____ and _____
divisible and separable (can give none, one, some, or all)
39
new medium of expression & derivative works
"products in this medium now known and hereinafter devised" protects potential tech advancements and future changes
40
software licenses
allow software developer to provide the same code to different users for different uses
41
normally grant rights to software?
no, but delineate rights based on various forms that software takes
42
forms of software
1. source code 2. object code
43
source code
code written by software programmers in computer language (Basic, C, Java) human readable generally no license for it
44
object code
binary code that is machine readable only can be reverse engineered to find out source code derived from source code using compiler
45
boundaries around software licenses
antitrust law, misuse, copyright & patent law preemption, fair use, unconscionability
46
misuse
term of agreement longer than term of underlying IP can use doctrine to prevent software developers from using licenses to unfairly extend IP property to monopolies
47
work for hire doctrine
someone may develop code during employment as part of job (employer owns because using employer's resources) two ways employee can own: 1. employee creating work within scope of employment 2. specially ordered or commissioned work, signed in writing, and used as contribution to collective work
48
database licensing
limited US protections, EU Database Directive
49
multimedia licensing
transfer of assets from one company to another (particularly online assets)
50
measures to protect trade secret
safety deposit box, encryption, stamp as "confidential"
51
how much effort must party take to protect trade secret?
"at least as great as the precautions party takes to protect its own confidential info"
52
restrictions on trade secret?
no restriction on independent derivation of subject matter of trade secret (can independently retrieve info)
53
protective orders
agreement that describes WHO can look at the trade secret info and FOR WHAT PURPOSE otherwise places info under seal so that it remains confidential different tiers (low, intermediate, most restrictive)
54
NDAs/CDAs
non-disclosure agreements/confidential disclosure agreements
55
NDAs must include ____
survival clause ("following cancellation/termination of agreement, all confidentiality obligations shall survive and continue in full force and effect")
56
NDAs can be ____ or _____
one way or mutual
57
NDAs include (1), (2), (3)
1. definition of confidential info 2. for what purpose 3. that no other IP license granted
58
what do patent licenses do?
restrict fields of use and geography (territory) reserve rights to any improvements
59
reasons for patent license
increase revenue, sale of business, manufacture product, settlement of infringement suit, joint ventures
60
patent misuse
equitable defense used when patent holder trying to collect royalties pursuant to contract after patent term has expired
61
elements of patent license
recitals (IP and what licensee wishes to license) definitions (subs, affiliates, parent companies) whether there is licensor warranty of title (licensor owns patent and has right to grant license) grant-back clause
62
do's of licensing
know the client (follow up, understand objectives/timeline/subject matter) understand the tech and transaction good form file (similar agreement/same perspective) use style you are comfortable with quality control provisions (for TM licenses) if it looks too good to be true, probably is due diligence (factual and legal research) different royalty systems define scope carefully (narrowly/specifically define exclusivity and field of use)
63
don'ts of licensing
put binding terms in definitions fail to specify duration/scope of license assume all warranties/damages should be disclaimed fail to review attachments/appendices create purposefully ambiguous language fail to anticipate changes to tech, distribution methods, business models propose/accept provision because deemed boilerplate use legalese
63
types of negotiators
cooperative (open, friendly, courteous, do not seek to advance/exploit advantage over other side) competitive (high initial demands, conceals actual target lines, frequent threats/arguments, few concessions, inflexible)
63
effective negotiations
1. clarity of thought 2. precision in numbers and words 3. secrecy 4. speed
64
negotiations
principal objective to minimize/eliminate any future disputes between the parties
65
do's of negotiation
listen, be flexible, spell out objectives clearly and specifically early on, master facts of both parties and understand other sides proposals/reasons for them
66
3 types of software
custom, enterprise, mass market
67
enterprise software
in hands of businesses for fundamental tasks
68
mass market software
in the hands of millions for everyday use
69
upstream vs. downstream licenses
upstream: licenses to build products, create solutions, source code licensing downstream: licenses to distribute, describe usage
70
elements of grant clause
parties, hereby grants, exclusive/non-exclusive, for what use, all other rights reserved, geography (territory)
71
assignment vs. license language
assignment: all possession goes to assignee and their future successors license: licensor still keeps rights because they are returned after the contract terminates

TECH & IP LICENSING (1 decks)

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