The evaluation should also take into account the efforts required to obtain the details, Perumal adds. For example, records of laboratory experiments conducted years ago could be buried in notebooks and not easily accessible. “Sometimes it`s a lot of work to collect this information,” and the price of the know-how license should reflect that, she says. The agreement should also carefully clarify whether the taker has an exclusive or non-exclusive right, as well as the geographical area of the licence. A reflection must also be defined. Where the know-how licensing agreement applies within the European Union, competition rules should be taken into account. See also the chapter on competition law [8.1 Competition Law]. My main focus is on licensing, supply and procurement agreements in the field of information technology, as well as labour law, corporate law and marketing and IPR issues. Licensing agreements cover a large number of known situations. For example, a retailer could enter into an agreement with a professional sports team for the development, manufacture and sale of goods bearing the sports team logo. Or a small manufacturer could concede a production technology owning a larger company to gain a competitive advantage rather than investing the time and money to develop its own technology.
Or a greeting card company can agree with a movie distributor to create a series of greeting cards that carry the image of a popular animated character. Using know-how “is still a bit of black magic,” says Dipanjan “DJ” Nag, director of private equity firm Ocean Tomo. “It is very difficult to define exactly what know-how is.” Nag defines it as unreported trade secrets and patents. Other technology transfer experts believe that source code and software research notes would also be covered by “know-how.” Finally, special attention should be paid to the duration of the issuance of intellectual property rights, since the duration of the licence must not exceed the maximum period of the right (for example. B 20 years for patents). In the case of a patent license and know-how, this means that the parties must make a clear distinction between the patent license (which cannot last beyond the expiry date of the patent) and the know-how licence (which the parties wish to maintain after the patent expires). The know-how licensing agreements are distinguished by the fact that they generally require the taker to use the know-how. It may be agreed that the taker`s right to use expires or will be restricted if the taker does not use the right within a specified period of time.
It is particularly important that the know-how licensing agreements contain confidentiality provisions, since know-how is not protected by law or public authorities. Confidentiality issues should be agreed before negotiations begin. The know-how licensing agreement itself should also include a confidentiality clause. “They can make the source code available to someone, and they basically get a know-how license,” he says. In this case, “whatever product they make with [the code], they owe us royalties.” The concept of know-how is very important for licensing software patents, Friedman adds. Software licensees don`t want abstract inventions – they want things that work. “If you give a licensee the know-how tools to use the invention, then you gave them a “springboard” to get to market earlier with that invention, he says. In the biotechnographic arena, with the huge dollars involved and the long development process, it is generally assumed that each licensee gets the patent, know-how and kitchen sink if necessary, says Karthika Perumal, deputy director of the Center for Technology Management at the University of Texas Medical Branch.