Different rights, different rules
Each type of IP brings its own requirements to a license. A trademark license needs real quality control by the owner, because a license without it can weaken the mark or even cost the owner its rights. Royalties for use of a patent after it expires generally cannot be collected, so agreements that combine patents with know-how often separate the payments for each. Copyright licenses depend on precise grant language, and trade secret licenses depend on confidentiality terms that will actually be followed in practice. A single fee for everything may be convenient but can create trouble when one right ends earlier than the others.
Improvements and ownership
Many disputes arise over improvements made while the license runs. The agreement should say who owns improvements the licensee develops, whether the licensor receives a license back, and how new inventions are reported. Know-how should be described clearly enough that both sides can tell what was handed over and when. Exclusivity, field-of-use limits, and territory define what each party can do, and antitrust law can restrict some of those limits, especially between competitors. Each side should also confirm that it has the right to grant what it is granting, since earlier licenses or a lender's lien can limit it. Bring the list of patents, registrations, and software at issue, any existing licenses that might conflict, and the commercial terms discussed so far.
Planning for the end
Termination, breach, and change-of-control clauses decide what happens when the relationship sours or one party is acquired. A licensor's bankruptcy is a real risk in technology deals, and federal bankruptcy law gives some licensees protection, though how far it reaches depends on the type of IP. Tax and transfer pricing questions arise when the parties are related companies in different countries. Going through a bundled license, we look at each right being licensed, whether the payment and duration terms fit each one, and what happens to the licensee's business if the deal ends early.
