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Milgrim on Licensing
Complete guide to intellectual property licensing transactions in all substantive IP practice areas.
Publisher: Matthew Bender Elite Products
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Milgrim on Licensing is a comprehensive guide to licensing transactions in every substantive area of intellectual property. Written by two top-flight experts with practical experience in all aspects of intellectual property licensing, Milgrim on Licensing has been cited by the U.S. Supreme Court, U.S. court of appeal and numerous lower courts.
This resource provides extensive analysis of the significance of a very wide array of license agreement provisions in a variety of commercial/industrial settings, typically with sample language, including alternative phraseology that reflect a licensor’s or a licensee’s preference, and identification of potential pitfalls. In particular, it provides in-depth coverage of provisions concerning:
- Scope of the license grant
- Proper identification of the parties
- Recitals, which can influence contract construction and regulatory review
- Definitions
- Matters to be provided by the licensee
- Improvements and grant backs
- Royalty, royalty structure and other approaches to consider
- Duties concerning third-party infringement
- Representations & warranties
- Confidentiality concerns
- Most Favored Licensee status
- Term and Termination
- Assignment
- Bankruptcy considerations
- Jurisdiction and venue
- Merger clauses
In addition to the forgoing, Milgrim on Licensing provides insightful, comprehensive coverage of the areas of law that are the backdrop for any license negotiation. That coverage includes the laws that define the significance of the various forms of assignments and license grants including their impact on standing to sue for infringement and the laws governing:
- Patents
- Copyrights
- Trademarks
- Trade secrets
- Antitrust
Importantly, Milgrim on Licensing focuses on hybrid licensing, the art of combining two or more forms of complementary intellectual property, enabling comprehensive transactional coverage of real-world licensing in a complex industrial/commercial setting.
Milgrim on Licensing also includes a full volume of form license agreements for a remarkable variety of potential licensing scenarios.
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Part I LEGAL CHARACTERISTICS OF INDUSTRIAL PROPERTY PERTINENT TO LICENSING
CHAPTER 1 INDUSTRIAL PROPERTY PERTINENT TO LICENSING
CHAPTER 2 LICENSING CHARACTERISTICS OF PATENTS
Appendix 2A: Patentable Subject Matter: Mathematical Algorithms and Computer Programs
Appendix 2B: Copyright and Patent Protection for Computer Software: Are They Mutually Exclusive?
Appendix 2C: Tales from the Algorithm War: Benson TO IWAHASHI, It's Deja Vu All Over Again
Appendix 2D: Examination Guidelines for Computer Related Inventions Final Version
Appendix 2E Using Apportionment to Rein in the Georgia Pacific Factors
CHAPTER 3 LICENSING CHARACTERISTICS OF TRADE SECRETS
CHAPTER 4 LICENSING CHARACTERISTICS OF TRADEMARKS
Appendix 4A: FRANCHISE RELATIONSHIP LAWS: A MINEFIELD FOR FRANCHISORS
CHAPTER 5 LICENSING CHARACTERISTICS OF COPYRIGHTS
CHAPTER 5A INSURANCE COVERAGE FOR INTELLECTUAL PROPERTY LITIGATION
Appendix 5A: Contract Principles as a Guide for Protecting Intellectual Property Rights in Computer Software: The Limits of Copyright Protection, The Evolving Concept of Derivative Works, and the Proper Limits of Licensing Arrangements
Appendix 5B: International Legal Protection of Computer Programs
Appendix 5C: Computer Software: Treatment Abroad
CHAPTER 6 LICENSING MULTIPLE INTELLECTUAL PROPERTY
CHAPTER 6A NAFTA'S INTELLECTUAL PROPERTY ASPECTS
CHAPTER 6B Intellectual Property and Dispute Resolution Under the Uruguay Round
CHAPTER 6C The Internet
CHAPTER 6D UCITA
Appendix 6D 1: The Evolution of the Uniform Computer Information Transaction Act
Part II TRADE REGULATION PERTINENT TO TECHNOLOGY AND TRADEMARK
CHAPTER 7 GENERAL TRADE REGULATION CONSIDERATIONS PERTINENT TO LICENSING
CHAPTER 8 SPECIFIC LICENSING PRACTICES ANALYZED UNDER THE ANTITRUST LAWS
Appendix 8A: Department of Justice: Antitrust Enforcement Guidelines for International Operations (Nov. 10, 1988)
Appendix 8B: Statement of Charles F. Rule Deputy Assistant Attorney General Antitrust Division Before the The John Marshall Law School
Appendix 8C: The Antitrust Division's Perspective on Intellectual Property Protection and Licensing The Past, The Present and The Future
Appendix 8D: Validity Challenges and the Obligation to Pay Accrued Royalties: Lear v. Adkins Revisited
Appendix 8E: Antitrust Guidelines for the Licensing of Intellectual Property
Appendix 8F Know How and Technical Information Consent Decrees
Part III CONSIDERATIONS ABOUT PRELICENSE DISCLOSURE, PROCEDURES, LICENSE STRUCTURE AND NEGOTIATION
CHAPTER 9 PRELICENSE STEPS
Part IV LICENSING PROVISIONS, ALTERNATIVES; TECHNICAL AND NEGOTIATING COMMENTARY
CHAPTER 10 GENERAL OBSERVATIONS ABOUT DRAFTING
CHAPTER 11 BASIC TYPES OF AGREEMENT
CHAPTER 12 CONSIDERATIONS RELATING TO THE PARTIES AND THEIR AFFILIATES
CHAPTER 13 NARRATIVE EXPLANATION OF PURPOSES OF AGREEMENT
CHAPTER 14 DEFINITIONAL MATTERS
CHAPTER 15 RIGHTS GRANTED AND LICENSED
CHAPTER 16 OTHER MATTER FURNISHED
CHAPTER 17 IMPROVEMENTS AND DEVELOPMENTS OF EITHER PARTY
CHAPTER 18 MONETARY CONSIDERATION
CHAPTER 18A TAXATION OF LICENSING TRANSACTIONS
CHAPTER 19 TECHNICAL ASSISTANCE
CHAPTER 20 ROYALTY AND RELATED REPORTING
CHAPTER 21 CONFIRMATION OF ROYALTY REPORTS
CHAPTER 22 DUTIES TO DEFEND/PROSECUTE ALLEGED INFRINGEMENT AND MISAPPROPRIATION
CHAPTER 23 REPRESENTATIONS
CHAPTER 24 SUPPLY OF GOODS AND SERVICES
CHAPTER 25 SECRECY PROCEDURES
CHAPTER 26 ASSURANCES OF TERMS AS FAVORABLE AS OTHER LICENSEES
CHAPTER 27 DURATION AND BASES FOR TERMINATION
CHAPTER 27A RESTRICTIVE COVENANTS CONCERNING TERMINATION IN FRANCHISE AGREEMENTS
CHAPTER 28 GENERAL CONTRACT CLAUSES
Part V FORMS
FORM GROUP I CONFIDENTIAL DISCLOSURE AGREEMENTS
FORM GROUP II PATENT LICENSES
FORM GROUP III TRADE SECRET LICENSES
FORM GROUP IV COPYRIGHT LICENSES
FORM GROUP V PATENT AND TRADE SECRET LICENSES
FORM GROUP VI COPYRIGHT AND TRADE SECRET LICENSES
FORM GROUP VII TRADEMARK LICENSES
FORM GROUP VIII OTHER HYBRID LICENSES
FORM GROUP IX INTERNET AGREEMENTS
FORM GROUP X OUTSOURCING AGREEMENTS
Part VI UNIFORM COMPUTER INFORMATION TRANSACTIONS ACT