DIFFERENCE BETWEEN LICENSING AND ASSIGNMENT IN IP

For every business benefit, Intellectual property (IP) plays an important role. Intellectual property includes patents, copyright, trademarks, or trade secrets. Similar to any asset, intellectual property can be profit-oriented, can be licensed, and can be sold out for profit. The main thing is to combine all assets and make sure that we have properly allotted or licensed our intellectual property.

Trademark May 28, 2021 0 Add to Reading List

DIFFERENCE BETWEEN LICENSING AND ASSIGNMENT IN IP

INTRODUCTION -

For every business benefit, Intellectual property (IP) plays an important role. Intellectual property includes patents, copyright, trademarks, or trade secrets. Similar to any asset, intellectual property can be profit-oriented, can be licensed, and can be sold out for profit. The main thing is to combine all assets and make sure that we have properly allotted or licensed our intellectual property.

Without a doubt, properties which are perceptible by touch are worth a great deal of money. But intellectual properties have better worth a great deal of money as it permits the companies to make capital by retailing their things under assured protection of Intellectual Property Rights (IPR). Therefore, it is important to assure the shield of our intellectual property with the help of copyrights, trademarks, patents, or other lawful ways of intellectual property.

Sometimes the intellectual property rights gives us a better suitable choice of creating income by allowing any third party to utilize them in interchange for a concurred amount. The two legal papers that allow us to make money by moving our rights to others contain intellectual property assignment agreements and intellectual property licensing. These are the legal papers that add up to our Intellectual property protection by finding out how the allowed party can utilize it.

This article will give a summary of the three main differences between our Intellectual property through n intellectual property license and assignment agreement.

INTELLECTUAL PROPERTY LICENCING

As the holder of intellectual property, one may license their intellectual property to any other person or company to utilize it. Both the parties require concurring on the terms and conditions to utilize it which is known as a licensing agreement, in which one party is the licensor and the other party is the licensee. The terms and conditions summarised in the agreement for utilizing it need to be negotiated between both parties to protect the best interest. These terms and condition control the agreement which consists of –

Limiting the licensee for utilizing to a specific place.
The remittance of rights in the way of royalties.

THE TYPES OF LICENSES INCLUDES

Exclusive – Exclusive license are those license where the holder of the intellectual property allows only one license and will not be able to utilize the intellectual property by their self.
Non – exclusive – Non-license is those license where the holder of the Intellectual Property allows more than one license and will be able to utilize the Intellectual Property by their self.
Sole – Sole license are those license where the holder of the intellectual Property allows only one license and will be able to utilize the Intellectual Property by their self.

INTELLECTUAL PROPERTY ASSIGNMENT

An Intellectual Property Assignment is not similar to a license; it is a permanent transfer of Intellectual Property. The transfer is irreversible and normally happens as the exchange of a commodity for money or transfer from a holder (assignor) to the buyer (assignee).

If anybody is thinking to transfer intellectual property possession, then they must assure that transfer is in writing by a procedure of a deed or other written agreement. Present or future intellectual property rights may be transferred by these legal documents in exchange for a single payment made at a particular time, as opposed to several smaller payments or installments.

ASSIGNMENT VS LICENSE

In Intellectual Property, the transfer of interest is said to be an assignment. As intellectual property made up of many rights, such kind of transfer can –

Can be done partly or wholly.
Can be limited by a particular amount of time.
Can be limited by a particular area, and/or
Consist of one or more of the several rights that are enforceable in link to the intellectual property.

THE THREE MAIN DIFFERENCES BETWEEN INTELLECTUAL PROPERTY ASSIGNMENT AND INTELLECTUAL PROPERTY LICENSING ARE AS FOLLOWS

Interest vested in Intellectual Property

The first things to think about while understanding how these two accords vary from each other.

When the licensor allows the licensee to utilize its benefit in a specific method then it is called Licensing Intellectual Property. Particularly, in the licensed property the holder can continue to have an interest. If anybody desires to possess the advantages of transferring their intellectual property, but at the same time continuing their control, then it is favorable to go for intellectual property licensing. It gives anybody to not only obtain stable earnings over a particular period but also grant equal rights to many users. Under this, anybody cannot just control how the licensed party is utilizing their intellectual property but also end the partnership if it seems to be unfavorable.

On the other side, assigning intellectual property is that property where the intellectual property owner gives all of his rights, i.e. possession of the assignee. This is a perpetual assignment, and once it is assigned, the assignor ceases to grasp interest in their intellectual property. If anyone allocates their intellectual property to another person, then all the duty with regards to the product finishes up. That means they cannot any longer, assert or institute legal proceedings against the assignee for the problems connected to their intellectual property. These kinds of agreements are appropriate when anyone is either giving off their entire business in exchange for money or going away from that field completely.

Notification

The second substantial difference between the two agreements is the need for notification to form them imposable.

When it occurs to intellectual property assigning, the assignor requires filing an application expressing his desire for transfer of ownership (intellectual property rights) with the assignment recordation branch. As the intellectual property assignment is perpetual, it must be in the written form. In the case of intellectual property licensing, one can allow the rights orally.

Payment and reversing of the transfer

But, IP assignment expects upfront payments and doesn’t allow reverse transfer.

Intellectual property licensing supplies alternative options for long-term remittance and undoing the transfer of rights if the agreement appears profitless. But, intellectual property assignment anticipates in advance remittance and it does not permit undoing to transfer.

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