Milgrim on Licensing
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Milgrim on Licensing is a comprehensive guide to licensing transactions in every substantive area of intellectual property. It provides practical advice and guidance on drafting individual clauses as well as complete agreements. It devotes one entire volume to sample forms. The strategy behind using particular language when drafting an agreement is discussed, and the discussion of individual clauses contains citations for many key points. It examines complex or hybrid licenses that cover more than one aspect of IP in the same license. It also examines the role of bankruptcy when licensing agreements are involved. Invaluable to both licensor and licensee attorneys, it is the most comprehensive resource on the subject.
Key coverage includes:
• Licensing characteristics of patents, trade secrets, trademarks and copyrights
• Licensing of multiple intellectual property
• Antitrust considerations
• The effects of NAFTA on licensing
• Drafting and sample contract clauses
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Table of contents
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