Licensing Law and Contracts

The attorneys at Gulde & Partner offer their clients advice on licensing law as well as on the drafting and negotiation of multilingual and international contracts.

Contract drafting is of crucial importance in the fields of research, development, technology, know-how and software as well as in the creative industries. Special attention must be paid to the individual circumstances of the parties involved. For recurrent situations it is advisable to use general terms and conditions, conditions of use and standard contracts, which can be adapted on a modular basis if necessary.

If you intend to exploit a patent, a utility model, a design patent, a trademark or a product or know-how protected by industrial property rights, you will generally need a right of use, a license or a right of license. The best way to protect the right of use of industrial property and protected works as well as software and content is a license contract or a right of license respectively. Like license contracts, manufacturing, design and development contracts also contain license elements. This is true, in particular, of software development contracts, software generation contracts, software maintenance agreements, service level agreements, provider agreements, further development agreements, updates and upgrades, etc.

Research and development contracts (R&D contracts) should be drafted in the technological sector, and cooperation and consortium agreements concluded between universities and industrial partners.

If several persons, institutions or companies are involved in the production of software and IT products, it is advisable to clarify the rights of use and exploitation by means of a contractual instrument, such as a contract for work and service, a co-operation agreement or in the articles of association. Due consideration should also be given to the licensing terms contained in labour law, employment contracts and supplementary agreements. This applies not only to scientists, researchers, engineers, programmers and software developers with an employment contract, but also to freelancers working on a contractual basis.

Prior to the commencement of co-operation use should be made of the opportunities offered by drafting, for example by the setting forth of key terms in a letter of intent or a preliminary contract.

To safeguard the observance of secrecy and the confidentiality of trade secrets and sensitive know-how it is advisable to use non-disclosure agreements, confidentiality agreements and confidentiality clauses. Contractual penalty and damage clauses should be included in such agreements to ensure compliance.

Many different aspects need to be taken into consideration when assigning intellectual property rights, such as a patent or a trademark (e.g. who is going to pay the registration costs?). During negotiations on a license agreement the question often arises of how a license fee should be calculated and what it should cost.

It might also be necessary to draft marketing agreements, contracts with suppliers, delivery contracts, subscription agreements as well as agency agreements.

When it comes to international agreements, consideration should be given to whether an arbitration clause is appropriate. It is also important to decide on the applicable law (German law, Swiss law, English law, American law, etc.) and the place of jurisdiction (home or abroad).

At Gulde & Partner the combined legal skills of specialised lawyers and the technical expertise of patent attorneys will provide you with all the advice you may need on the drafting of tailored contracts for your IP portfolio.