Intellectual Property Lawyers for Maine

Yes, you can and should include clauses in an Intellectual Property License Agreement that protect your rights as the licensor. A license agreement is your main tool for controlling how your software is used, setting boundaries for your clients, and limiting your financial exposure. The key is to draft it in a way that leaves no doubt about what rights are granted, what’s restricted, and what happens if there’s a breach. Grant of License Start with a clear license grant. Spell out that you’re giving the client only limited rights, not ownership. Most licensors define the license as non-exclusive, non-transferable, and revocable if the client doesn’t follow the terms. For example, you might allow a client to use the software only for its internal business operations, and only on a set number of machines. It’s equally important to list what the licensee cannot do, such as reverse engineering, modifying, sublicensing, or providing the software to third parties. Intellectual Property Ownership Reinforce that you retain all ownership rights in the software and any related intellectual property. A simple but strong statement is that you hold all right, title, and interest in the software, and the client only receives a limited right to use it under the agreement. This prevents confusion between a license and a sale. You can also require the licensee to notify you if they discover third-party infringement and confirm that you alone have the right to pursue action against infringers. Confidentiality If you’re providing source code, algorithms, or other sensitive information, a confidentiality clause is essential. Define confidential information broadly to include not just the software itself but also any documentation or business information you share. Require the client to protect that information with at least the same care they use for their own confidential material, and make the obligation survive termination of the agreement. Termination Every strong license has a termination clause. Termination for cause should allow you to end the agreement if the client fails to pay, violates the license scope, or breaches confidentiality. Many agreements include a short cure period, such as thirty days, for the licensee to fix the breach before termination takes effect. Spell out the consequences of termination: the licensee must stop using the software immediately, return or destroy all copies, and certify that they’ve complied. Without this, you risk losing leverage if the relationship breaks down. Payment Terms Protect your revenue by making payment terms clear. Define license fees, support or maintenance fees if applicable, the payment schedule, and penalties for late payment such as interest. Courts generally enforce these provisions as long as they’re reasonable. Disclaimers and Limitation of Liability These clauses protect you from lawsuits if things go wrong. A limited warranty might cover basic performance for a set time, but beyond that you should disclaim all other warranties. Standard language is that the software is provided “as is” and you disclaim implied warranties of merchantability and fitness for a particular purpose. To limit your exposure, cap liability at a defined amount, often the fees paid by the licensee in the previous twelve months, and exclude liability for indirect or consequential damages such as lost profits. Courts usually enforce these limits, except in cases of fraud or intentional misconduct. Audit Rights If your pricing model depends on the number of users or installations, an audit right is valuable. This allows you to check, on reasonable notice, that the licensee isn’t exceeding their rights. For example, you might reserve the right to inspect usage records once a year during normal business hours. Governing Law and Dispute Resolution Designating which state’s law governs and how disputes are resolved reduces uncertainty. Many licensors choose their home state’s law and either local courts or arbitration for disputes. Remedies Make sure your agreement lets you seek injunctive relief if the licensee misuses or discloses your software. Monetary damages often aren’t enough to protect intellectual property, so courts will enforce contract terms that authorize immediate injunctive relief. Protect Your Software with Legal Guidance When you’re licensing valuable software, the details in your agreement can make the difference between real protection and unnecessary risk. The lawyers on Contracts Counsel are available to draft, review, or negotiate a license that secures your rights and keeps your business protected.

As a legal entity, a joint venture (JV) can own a patent. Given the temporary nature of JVs and the fact that there will be multiple owners of any patents, there is a complex mix of intellectual property (IP) ownership rights, dispute resolution, and enforcement issues that need to be agreed upon in order to properly protect everyone's intellectual property rights. Consideration will need to be given to what IP ownership and rights will look like during and after the JV and it may be easier to have both companies listed as the patent authors for inventions from the outset (versus naming the JV as the author). A joint IP agreement is the best solution to outline the rights of each party, the process for developing patentable technologies sufficient to be a patent author, filing and prosecuting patents, and future licensing and exploitation of the patent.

A Patent Assignment Agreement transfers ownership of an invention or patent rights from the inventor, known as the assignor, to another party, often a company serving as the assignee. To protect your business and ensure enforceability, the agreement should cover specific provisions that make the transfer clear, complete, and legally sound. What Is the Core Assignment Clause? The assignment clause is the heart of the agreement. It should use present-tense language such as “hereby assigns, transfers, and conveys all right, title, and interest.” Courts and the USPTO treat this as an immediate transfer, while “will assign” is only a future promise. The clause should also cover continuation, divisional, or continuation-in-part applications, along with reissues, reexaminations, and foreign filings. What Rights Should Be Transferred? The assignee should receive the full bundle of rights granted under 35 U.S.C. § 154, including the right to make, use, sell, offer for sale, import, and license the invention. The agreement should also transfer the right to sue for past, present, and future infringement, so the company can recover damages even for activity that occurred before the assignment was signed. Do You Need Consideration? Every contract requires consideration, and patent assignments are no different. Even if the transfer is to your own company, the agreement should recite consideration. This can be nominal, such as “ten dollars and other good and valuable consideration,” or it can be tied to equity or to your role as founder. How Should the Patent Be Identified? The intellectual property should be identified with precision. If a patent has issued, include the number and issue date. For pending applications, list the application number, filing date, and invention title. If no application has been filed yet, provide a detailed description and later update the record once official filing details exist. What Warranties and Representations Are Common? The assignor should warrant ownership of the rights, authority to assign, and absence of liens or conflicting assignments. Over-warranting should be avoided. Do not guarantee novelty or validity, since those are determined by the USPTO and courts. Be cautious about warranting sole inventorship unless you are certain no other inventors contributed, since misstatements on inventorship can create validity problems. What Other Provisions Should Be Included? Other common provisions include further assurances requiring the inventor to assist with future filings, litigation, or USPTO actions, a limited power of attorney for patent prosecution and enforcement, and improvements clauses that attempt to capture future modifications or developments. Improvements provisions must be drafted carefully, as vague scope language can lead to disputes. The agreement should also address corporate authority, ensuring the company has approval under bylaws or state law before accepting the assignment. What Administrative Details Matter? The agreement should contain standard contract terms such as governing law, entire agreement, amendment requirements, successors and assigns, and dispute resolution through arbitration or mediation. Both the inventor and the company should sign, and notarization is advisable because it makes USPTO recordation smoother. Do You Need to Record with the USPTO? After execution, the assignment should be recorded with the USPTO through the Electronic Patent Assignment System. Recordation should occur promptly after execution to establish clear priority and maintain a clean chain of title. While recordation is not required for validity between the parties, it protects ownership against third-party claims. The USPTO currently charges little or no fee for electronic filings, so this step is inexpensive and essential. Should You Assign or License? An assignment transfers complete ownership, which investors generally expect. A license keeps ownership with the inventor while granting defined rights to the company. Licensing may be useful when the inventor wants to retain control, license the technology to multiple companies, or test the market before giving up ownership. For most startups, assignment is the preferred approach. What About Tax Considerations? Assignments can have tax consequences, especially when IP is transferred for equity or other forms of consideration. Professional tax advice is essential to evaluate both immediate tax effects and ongoing obligations. This is particularly important if the company later earns royalties or sells the patent. What Are the Next Steps? The implementation process should include drafting the agreement with qualified legal counsel, executing it with proper corporate authority and notarization where possible, recording it promptly with the USPTO using EPAS, and consulting a tax professional to address both the transfer itself and any ongoing obligations. If you need help drafting or reviewing a Patent Assignment Agreement, the attorneys on Contracts Counsel can guide you through the process so that your company’s rights are fully protected.

I can do that. I am an IP lawyer over 20 years experience in this area. I work on SAAS and similar agreements daily.

Although not necessarily required, the parties to an asset purchase agreement oftentimes find that it is in their best interests to work with a knowledgeable intellectual property attorney. The attorney can negotiate and draft the parts of the agreement that pertain specifically to intellectual property. The attorney can also assist with the parts of the agreement that do not appear to affect intellectual property but have the potential to. If you are considering an asset purchase agreement that involves intellectual property, you should also consider hiring an intellectual property attorney.