Drafting a Licence to Evaluate a New Product

Jane LambertJane Lambert

12 June 2010

I was asked to take over the instructions of another barrister but it was not clear what those instructions were. I was handed a bundle of emails, a draft patent specification and confidentiality agreement which I read carefully. My predecessor had asked a number of pertinent questions but had not received any clear reply. I wrote a note repeating my predecessor’s enquiries and adding a few of my own.

It transpired that the client was hoping to market his invention overseas, an overseas company had expressed interest in the technology and had asked for an opportunity to evaluate it. It required a licence in order to do so.

I settled a non-exclusive and non-transferable licence to set up the system and test it in the overseas market. I required the licensee to collaborate with my client in enforcing the patent. The licence was to terminate after one year or at the end of the trial. Disputes were to be referred to mediation and expedited arbitration before neutrals appointed by the WIPO Arbitration and Mediation Centre but the agreement was to be construed and enforced in accordance with English law.

The client also needed to know about IP insurance and I referred him to some articles on the topic that I had written in my blog some years earlier.