If you have a product or technology and are ready to take it to market, you have a number of commercialisation options. We can help you with licensing, manufacturing and distribution agreements.
We advise on many different commercial agreements which involve important IP issues. The types of agreement can, and in our experience usually do, vary significantly in terms of size and complexity.
The approach taken will depend on the size of the deal, and on language and cultural differences. It is important to think carefully about what type of agreement is appropriate for your particular circumstances. We can advise you about this.
In many cases, the owner of an IP right may not be the person best placed to commercially exploit it. Often the owner lacks the necessary skill, capital or commitment. A common solution is for the IP owner to find someone who does have these things, and grant a licence to that person. IP licensing is also common in joint venture arrangements and in the settlement of disputes.
IP licences take many forms, depending on whether the IP involves patent rights, design rights, copyright, trade marks, know-how, or a combination of these things. IP licences also include franchise agreements and software licences.
How can AJ Park help me?
We have a dedicated team of commercial lawyers who specialise in licensing, manufacturing and distribution.
Our commercial and strategy team members have backgrounds at commercial law firms, and many have also worked as in-house counsel at multi-national organisations. We understand the complexities of licensing, manufacturing and distribution agreements, and can provide specialist advice that is useful, practical, accurate and timely.
We have expertise in all types of IP licensing, and can help you negotiate a licence that protects you and your IP. Our licensing expertise covers all areas of IP including patents, know how, copyright, trade marks, and plant varieties. Our licensing expertise extends across all fields of technology.
We will ensure your licence agreement covers key terms, such as:
- the scope of the licence
- technology transfer and handover
- quality control
- payment terms
- IP protection, enforcement, and defence
- liability issues
- term and termination
We can help you document your relationship with your manufacturer.
Some of the key clauses in a manufacturing agreement include:
- basic terms of trade—ordering processes, payment and delivery terms, risk and title, warranties and liability, and termination rights and consequences
- any specifications that must be followed, including restrictions around the selection of materials, and packaging and assembly requirements
- quality control requirements, such as requiring the manufacturer gives you adequate and regular samples, the right to inspect the manufacturer’s facilities, and the right to return products that are defective or do not meet your specifications
- provisions about how product recall issues will be handled
- provisions ensuring the manufacturer acknowledges you own the IP rights in the products, and, if permitted by law, any improvements to the products
- provisions ensuring that your trade marks are used only on your product
- provisions setting out who owns the tooling, dies, moulds or other manufacturing equipment used, and what happens to it when the contract ends
- confidentiality to ensure your confidential information is adequately protected.
We can help you document your relationship with your distributor. We will focus on including the following provisions.
- A clear definition of the products. Only give the distributor rights to what they are able to sell. Consider whether future products will be included in the deal.
- Exclusivity and territory provisions that specify whether the distributor has exclusive or non-exclusive rights, and what the distributor’s territory is.
- Price and payment terms—what the price is, how price changes will be dealt with, the currency of payment and payment terms.
- The obligations of the distributor to report on its activities and to provide demand forecasts.
- Where the products will be delivered to, how they will be delivered, who bears the cost, and when risk and title passes.
- The obligations of the distributor regarding marketing, inventory levels, staffing, training, technical support, after sales service, and insurance.
- The performance targets the distributor must achieve.
- Restrictions on the distributor’s use of your trade marks and other IP.
- Product warranties, and limitations or exceptions to those warranties, and terms dealing with how warranty claims will be handled.
If you need plain English advice on licensing, manufacturing & distribution law, get in touch with one of our experts below.