Licensing agreement checklist

This list is not comprehensive, but is intended only as an indicative checklist for those intending to license their inventions. In practice, you should check each invention on a case-by-case basis and take account of the prevailing circumstances when drawing up the agreement.

• Parties and introduction
• Specifications
• Object of licensing agreement
  • Type of licence
  • exclusive right parallell right
  • joint right
• Industrial property rights pertaining to the object of the agreement
• Scope of licence
  • authorised exploitation methods
  • geographical scope
  • any restricted application areas
  • authorised exploitation period
• Changes, further development and improvements to the licensed technology
• Obtaining and maintaining industrial property rights
• Licence payments
  • one-off payment
  • initial payment
  • royalty
  • minimum annual royalty
• Bookkeeping obligation, inspection rights and reporting
• Obligation to exploit
• Authorisation to sub-license
• Technical assistance and training
• Confidentiality
• Compensation for damage  
• Limitations of liability
• Enforcement of industrial property rights
• Action against infringements of industrial property rights
• Invalidation of industrial property rights
• Official approvals and permits
• Manufacture of competing products
• Rights of notice and cancellation
• Implications of ending of contract
• Period of validity
• Transfer of contract
• Force majeure
• Invalidation of contract in part
• Notifications
• Applicable law
• Resolution of disputes