Technology licensing only occurs when one of the parties owns valuable intangible assets, known as Intellectual Property (IP), and because of that ownership has the legal right to prevent the other party from using it. A license is a consent by the owner to the use of IP in exchange for money or something else of value. Technology licensing does not occur when there is no IP. Since technological innovation is a key component for companies to face more and more increasing market competition new products with new functions appear on the market on a regular basis. Companies thus need to innovate by developing or acquiring technology. The process of acquiring the rights related to a third party’s technology through a licence agreement is indicated as technology licensing-in.
Technology licensing involves reaching agreement on a complex set of terms, each of which has several possible solutions. Therefore, advance preparation is essential. In advance of the negotiation, before the other party has been approached, a party may spend many months defining business objectives, assessing leverage, researching the other party, deciding positions on key terms, preparing documentation, and protecting IP, among other tasks.. Note that acquiring the rights related to a third party’s technology through a licence agreement is indicated as technology licensing-in. Granting the right to use an IP protected technology is called technology licensing-out. At Calculus Energy, we pride ourselves in providing expert solutions for both licensing-in and licensing-out.
IPR management in software development
Software, or computer programs, are in general complex asset(s). At the boundary between pure creations of the mind and technical inventions, multiple Intellectual Property Rights (IPR) can protect it. The intangible nature, diversity of uses, and the various related means available in order to create value with software also has an impact on such a complexity. Software creation aimed at generating revenue through licences to individual final users implies specific intellectual property management strategies, completely different from cases where such software is developed in the framework of a scientific project with no intended exploitation strategy. However, an approach focusing only on short term R&D technical challenges might disregard medium and long term advantages of securing IPR, including not only revenue but also abilities to re-use the software in future applications.
A full understanding of an exploitation strategy meant for software is therefore a necessity. A product is developed for a market by way of exchanges, in a commercial or other framework. Whatever the choices made about software exploitation strategies, appropriate intellectual property management should be considered, as decisions relative to such exploitation strategies can evolve with time. At CE, we provide you with this expertise.
IP joint ownership and open innovation
Joint ownership often arises in connection with collaborative innovation and is of particular relevance to EU-funded programmes, joint ventures and more generally to any research project involving co-development of intellectual property (IP). In these situations, collaborating partners often disregard the proper regulation of the allocation of the ownership of the intellectual property co-developed. Such negligence is likely to generate disputes that could bring about court litigation, with all the inconveniences linked to legal proceedings. Therefore, the issue of joint ownership should be addressed at the start of such collaborative projects. Calculus Energy is involved in a number of highly innovative R&D projects and is well aware of the complexities involved with joint ownership of IP. To this end, our inhouse lawyers are able to help technology companies devise a maximum return strategy for their products.
On the other hand, the R&D landscape has witnessed a rise in technological complexity. This entails the presence of a pool of intellectual property rights (IPR) within the most advanced products and services. Also considering that the number of patent filings increases steadily, companies therefore have to rely on third party IP rights to innovate. A natural outcome of this multi-invention background is the need for companies to cooperate with other research and technology development performers (RTDs) in order to produce innovative solutions.