Crafting Effective IP Licensing Agreements: Key Insights from Licensor and Licensee Perspectives

Amy A. Abeloff | Kirkland & Ellis

Amy Abeloff is of counsel in Kirkland’s Los Angeles office. Amy counsels on intellectual property matters and has extensive experience in full-service global trademark portfolio management. Amy has extensive experience advising clients on the availability to use and register trademarks worldwide, preparing trademark filing strategies ranging from single trademarks to large, multijurisdictional projects, advocating for her clients offensively and defensively in pre-enforcement activity, and developing complex enforcement strategies incorporating online marketplace and social media takedowns as well as anti-counterfeiting activities. She also provides counsel to clients  regarding availability to use and register copyright protectable material.

Amy is active on multiple committees of the International Trademark Association. She also represents several small businesses and nonprofit organizations in various pro bono matters, including trademark and copyright advising and counseling, prosecution and enforcement strategy.

Amy has assisted multiple large-scale, international companies across the alcoholic beverage, healthcare, insurance, financial services and consumer goods industries with global trademark portfolio management matters, including prosecution, filing strategies, clearance, pre-enforcement, enforcement, domestic and international oppositions and cancellations, coexistence and settlement negotiations, license review and revisions, among other intellectual property matters.

I. Patent vs. Trademark vs. Copyright vs. Trade Secret license agreements | 1:00pm – 1:10 pm

• Understanding the different types of IP rights and the unique considerations for each

II. The grant clause | 1:10pm – 1:20pm

• Clearly define the scope of the license and the legal rights being transferred

III. Reservations and restrictions| 1:20pm – 1:30pm

• Determining what rights are reserved and what limitations should be included in the agreement

IV. Term and termination | 1:30pm – 1:40pm

• Setting clear terms of duration and termination clauses to protect both parties

V. Acknowledgment and maintenance of IP | 1:40pm – 1:50pm

• Defining each party’s responsibilities related to IP maintenance, including upkeep of IP rights and registration

VI. Consideration and royalties | 1:50pm – 2:00pm

• Structuring compensation terms, including upfront payments, royalties, and other forms of consideration

Break | 2:00pm – 2:10pm

VII. Confidentiality and infringement provisions| 2:10pm – 2:20pm

• Ensuring protection of sensitive information and addressing how infringement issues will be handled

VIII. Indemnifications, representations, and warranties | 2:20pm – 2:30pm

• Key clauses for liability, ensuring that each party is protected from certain risks and responsibilities

IX. Disputes, jurisdiction, and venue | 2:30pm – 2:40pm

• How to structure the dispute resolution process, including selecting jurisdiction and venue

X. Clauses specific to the type of IP rights license | 2:40pm – 2:50pm

• Tailoring clauses based on the specific IP rights being licensed

XI. Special issues with software licenses and cloud computing | 2:50pm – 3:00pm

• Addressing unique concerns with licensing software and cloud-based services

XII. Common drafting mistakes to avoid | 3:00pm – 3:10pm

• Highlighting typical errors and oversights that can lead to costly issues for your clients