Group 4

Stage 4 IT negotiations

Liability, Warranty, Ownership of IP, Ownership of Improvements

Diego Armando Marulanda Castro

Group Number: 212032_15

2004

LIABILITY

The licensee offers product liability for any product it manufactures under the license and indemnifies the licensor for any damages. For example. damages 20% additional value of the patent.

WARRANTY ON LICENSED PATENTS

The licensor is expected to give certain warranties on patents in which the licensee has certain rights. Typically, the licensor warrants that it is the rightful owner (or licensee, as the case may be) and that it is entitled to grant the patent rights. But it should not be expected to give absolute warranties on aspects over which it is impossible for it to have certainty or control, for example, that patents will not be infringed or that any pending patent applications will be granted. For example. Providing technical advice, know-how

OWNERSHIP OF INTELLECTUAL PROPERTY

For any agreement in which there is a development element, ensure that the work program is written and contains a well-defined description of the work for which each party is responsible. Define the background, foreground and joint intellectual property and provide ownership statements for each. For example. Ownership is 100 percent of the patent owner.

OWNERSHIP OF IMPROVEMENTS

When a licensee independently makes an improvement (an invention that cannot be separated from the licensed IP), the licensor might consider negotiating a provision for a non-exclusive, royalty-free license to the improvement including the right to grant sublicenses. For example. Ownership of the improvements are shared.