Home > Topics > Technology and Product Licensing > A Checklist for Negotiating License Agreements > Editor's Summary, Implications and Best Practices

For the seasoned technology transfer professional or contract attorney, the idea of preparing a detailed checklist for every licensing agreement may seem like unnecessary busy-work. Yet these same professionals could probably relate stories where a missed detail or vague contract provision led to a costly and protracted legal battle. Given the high stakes, it is certainly in the best interests of those involved in IP deal making to make sure that every last detail is checked and re-checked. When multiple deals are being negotiated at once, it is only reasonable to assume that something, somewhere could get missed. To help avoid this unfortunate, and potentially costly, error, this chapter provides a comprehensive, yet flexible, checklist that can be deployed to help manage the details of license agreements. Although the author provides a template for most elements of the license, she is quick to note that users should feel free alter the checklist to suit the realities of their particular business practices.

The checklist covers all the major elements of a standard IP license, particularly as they are used in agriculture, starting with a section detailing the most basic, yet crucial, matter of getting all the parties pertinent contact information. Sections covering whereas clauses, definitions, rights granted, sublicenses, improvements, warranties, and infringement, among other matters, are discussed, with useful sample checklists included for each component. The chapter concludes with a consideration of “boilerplate sections,” including confidentiality and arbitration stipulations, before noting, again, that all aspects of the checklist can easily be adapted for different fields and different uses. Although, in the chapter, each section comes with annotation, an online version can be downloaded without accompanying text.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Most organizations are structured based on examples set at the top. By demonstrating best practices in organization, a government will establish examples that will be emulated by organizations and institutions in the country.

For Senior Management (university president, R&D manager, etc)

• Organization is the key to success. With respect to negotiating licenses, detailed checklists to guide the actual negotiations will be a key to successful, and fruitful, licensing agreements.

For Scientists

• If your participation in negotiating license agreements is sought, ask to see any checklists in order to be prepared and thus a more effective team player.

For Technology Transfer Officers

• Develop a checklist for negotiating license agreements, but feel comfortable altering the list to reflect both your operational priorities and the nature of the licensing agreement in question.
• Go through the list before, during and towards the end of complex licensing negotiations.