Legal Question in Business Law in California

License Agreement

We need to create a Licensing Agreement that will allow a new company the rights to Manufacture, Sell and Distribute applications deriving from the Licensing Company's Patents and Intellectual Properties.

We seek to allow the new company the ability to Private Label Hardware and Software products for sales and distribution.

This License may be Exclusive for applications developed for certain Vertical Markets, but allows ABC Software the Rights to sell, on a ''Non-Compete, Non-Circumvention'' basis

to other Clients.

For Instance: ABC Software Company owns the Patents to create a new type of Document called ''Type One'' A new Company, XVZ Software wants to bring out ''Type One'' as ''XYZ-Easy Type.'' XYZ also has developed a new type of Fax called, ''XYZ-Easy Type Sender.''

XYZ needs an OEM Licensing Agreement to cover the above. What is the best method and Form? ABC Software wants to retain all IP as a ''Holding Company,'' place the IP in an Escrow in case ABC Software Inventor is hit by a bus, the IP reverts to his heirs AND XYZ Software, so they can continue to expand the business.


Asked on 4/12/05, 2:26 pm

6 Answers from Attorneys
Daniel Harrison Berger Harrison, APC

Re: License Agreement

Our firm has experience in drafting and litigating over the type of licensing agreement you mentioned. Give us a call if you would like assistance.

Read more
Answered on 4/19/05, 10:55 am
Ken Koenen Koenen & Tokunaga, P.C.

Re: License Agreement

The best method is to hire an attorney to sit down with you, review in detail what you are trying to acheive, and have the agreement drafted properly. A "form" will not help you.

Read more
Answered on 4/12/05, 2:36 pm
Austin Bosarge Turning Point Law

Re: License Agreement

I agree with the prior response that an attorney's assistance is needed. There are far to many variables and issues to resolve to rely on a form. Find a competent intellectual property attorney in your area, or if you feel comfortable with email and phone as a way of doing business, you can work with one in any location. I would be happy to answer any questions you may have about IP licensing and company formation for the holding company.

Regards,

Read more
Answered on 4/12/05, 2:40 pm
Terry A. Nelson Nelson & Lawless

Re: License Agreement

You must appreciate that there are no pre-made forms for these kind of complex issues. Companies have to spend considerable money having such documents created to suit their needs. It is just a cost of doing business that must be accepted. I would be happy to help you do so. Contact me if interested; we would have to initially determine just how thorough you want to be in the contractual and trade protections and details.

Read more
Answered on 4/12/05, 3:27 pm
Christopher M. Brainard, Esq. C. M. Brainard & Associates - (310) 266-4115

Re: License Agreement

You need a good attorney. Email me and I'll forward you my resume. Thanks.

Read more
Answered on 4/12/05, 3:29 pm
Daniel King Law Offices of Daniel King

Re: License Agreement

The situation that you address is quite specific. There may be some types of forms that you could find on the Web, however, even if there were a form that you could find, I would hardly suggest that you use it.

You will need to sit down with an attorney in order to discuss your particular needs, and be aware that in order to fully protect your interests and address your situation, you will need to, potentially, spent a fair amount of money in getting the licensing agreements and protection that you seek.

If you would like to have a meeting concerning your needs, please feel free to contact me.

Daniel King

818-587-9299

Read more
Answered on 4/19/05, 2:29 pm


Related Questions & Answers

More Business Law questions and answers in California