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checklist of key considerations

Trade Mark Licences


SCOPE

Nature of exclusivity, territory, duration, field of use and who can use, related service/assistance


OBLIGATION TO USE

Include development obligatio / path and minimum performance criteria / standard


PAYMENT

Clearly set out royalty structure, payment obligation, audit rights and taxes


IP MANAGEMENT

Registration, maintenance, costs, enforcement, new registrations, disagreements, liability for infringements and reporting


PROTECT THE ASSET

Restrict challenges to the IP, ensure it remains confidential and audit use


PROTECT SPRINGBOARD USE

What happens to improvements? Are they licensed back, are they assigned back? How do royalties apply to improvements?



 

GOVERNANCE

Communication protocols - reports, meetings and dispute resolution

MANAGE YOUR RISK

Warranties, limitations of liability, product liability, insurance and termination rights