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IP LICENSINGBy
Dr. Kalyan C. [email protected]
www.bananaip.comWritings: www.kalyankankanala.com
www.sinapseblog.com www.bananaip.comCopyright, BananaIP, 2016
Example• MindSoft develops a software for assessing mood of
a person. It calls it 'MOODS.' The software can be installed on any computing device and assesses a person's mood based on his voice, heart beat, breathing pattern and other factors. The software is based on thirty years of research and an algorithm developed based on said research by the CEO of MindSoft.
• The software is tested extensively, and performs beyond expectations. Realizing its potential in various areas from business dealings to foreign affairs, MindSoft wants to protect all IP relating to the software aggressively.
• Does MindSoft have any IP?Copyright, BananaIP, 2016
IP in MOODS• Patents• Copyrights• Trade Marks• Trade Secrets• Industrial Designs
Copyright, BananaIP, 2016
Licensing Program• What is Licensing?
• Authorization• Rights• Term• Territory
• Handout - Rights and TermCopyright, BananaIP, 2016
Example• BrainWare, a competitor of MindSoft,
reviews publications of MindSoft's CEO and builds a software for assessing mood based on algorithms disclosed in the publications. The code is totally different from that of MindSoft, but the software follows the same process and produces improved results when compared to MindSoft's software.
• Rights? Infringing? License Required?
Copyright, BananaIP, 2016
Example• MindSoft acquires patents in
India, EU and USA. MooChi, a company based in China develops an identical software. It calls it 'SDOOM.'
• Rights? Infringing? License Required?
Copyright, BananaIP, 2016
Example
• Thirty Years after the initial launch, AniMoo develops an software based on the process of MindSoft to identify mood of animals.
• Rights? Infringing? License Required?
Copyright, BananaIP, 2016
Licensability• Strength of IP• Enforceability• Interested Licensees
Copyright, BananaIP, 2016
Example Patent Claim
"I claim a Table comprising of a flat piece of wood connected to wooden legs at the corners.
Licensability?
Copyright, BananaIP, 2016
Example• Ten patents have been filed by
different organisations with respect to processes for assessing human behaviour, physical and psychological, based on signals from different sensory organs. About four of them specifically deal with emotional dynamics and related behaviour.
• Licensable?Copyright, BananaIP, 2016
Example• MindSoft wishes to initiate its
licensing program in India and USA.
• Is enforceability relevant?
• What factors would you consider?
Copyright, BananaIP, 2016
Basic License Provisions• Types of Licenses
• Exclusive• Non-Exclusive • Sole
Copyright, BananaIP, 2016
Copyright, BananaIP, 2016
Important clauses• Recitals• Definitions• Grant • Royalties• Term and Termination
Copyright, BananaIP, 2016
Recitals• Parties – Licensor/Licensee
• Addresses
• Dates
• Background of the transaction
Copyright, BananaIP, 2016
Definitions• Interpretation clause
• Consistently used words– Specific/certain/lucid
• Attribute specific meaning
• Apply to entire agreement
Copyright, BananaIP, 2016
Example• "Licensed Software" shall mean the
proprietary software of the Licensor, entitled 'MOODS', for assessing mood of humans.
• "Licensed Intellectual Property" shall mean
• a. Patents and patent applications covering the Licensed Software in USA and India, bearing numbers In123, and US879; and
• b. Copyrights over the object code, source code, and interfaces of the Licensed Software.
Copyright, BananaIP, 2016
Grant Clause• Most important
• Defines scope of agreement
• States• Parties• Type• Subject• Rights• Territory• Term
Copyright, BananaIP, 2016
Example• Licensor grants to Licensee a non-
exclusive license to use the Licensed Software on mobile phones sold within the territory of India.
• Who grants to whom -Licensor to Licensee.
• Type of license – Non-exclusive License
• Rights – Use Licensed Software on mobile phones sold in India
• Territory - India
Copyright, BananaIP, 2016
Term and Termination• Term
• Events• Material Breach - Nonpayment of
royalty, etc.• Bankruptcy• Act of god
• Rights after termination
• Confidentiality
Copyright, BananaIP, 2016
Royalty Clause• Type of Royalty• Lump sum royalty• Fixed Royalty• Running royalty
• Combination.• Mode and Date of payment• Accounting and Record keeping• Non payment consequences.
Copyright, BananaIP, 2016
Example• The Licensee shall pay the
Licensor a consideration of:• a. Rupees Ten Lakhs as lump
sum payment before the Effective Date of the agreement; and
• b. A sum of Rupees Ten Lakhs for every calendar year for the term of the license.
Copyright, BananaIP, 2016
Other Clauses• Indemnity
• Warranty
• Liability
• Support and Maintenance
• Updates and Upgrades
Copyright, BananaIP, 2016
Open Source LicensesPrinciples
• Free Distribution• Source Code• Attribution• No Warranty/Liability• License
License Types• Software• Software Plus• Content• Hardware
Copyright, BananaIP, 2016
Social Media Licenses
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Example• Facebook Terms of Service - Facebook
Services
"... you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with
Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have
not deleted it. ..." Copyright, BananaIP, 2016
Copyright, BananaIP, 2016
Copyright, BananaIP, 2016
Copyright, BananaIP, 2016
Pre-order Dr. Kalyan’s Upcoming Books
When Medicine Clashes with Law!Dr. Krishna, a conscientious and kind-hearted doctor,
is arrested and put on trial for treating naxalites, a banned war group. Many police officers are killed in encounters with naxalites, and the police are looking for payback. They want Dr. Krishna to pay for treating naxalites, to pay for the massacre
of their officers, and to pay for their failure. They mount irrefutable evidence against Dr. Krishna, and the Public Prosecutor has never lost a case.
With the system stacked against him, can Dr. Krishna survive the legal onslaught? Does his ageing lawyer have enough in him to defend a lost cause?
Set in Zala, the hot bed of naxal activity in India, The Oath narrates a gripping, entertaining and intellectually stimulating tale of the clash between Medicine and Law.
Copyright, BananaIP, 2016
Dr. Kalyan Kankanala’s Bookswww.kalyankankanala.com
Copyright, BananaIP, 2016
THANK YOU
How to reach Dr. Kalyan Kankanala:♦Email: [email protected]
♦Phone: +91 80 2686 0414 / 24 / 34
♦Web: www.bananaip.com♦IP News Tracker: www.sinapseblog.com
♦Download Sinapse Blog app: https://play.google.com/store/apps/details?id=sinapse.wordpress.blog&hl=en
Copyright, BananaIP, 2016
