Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 56

Instead university has by contrast a rather restricted scope of action, since it is
not allowed to market inventions directly (except through a spin-off) and must
therefore identify a company on the market to negotiate a license agreement
(either exclusive 32 or non-exclusive) for the use of the patent or an assignment
agreement, which however is an outright transfer [ 23 ].
A license agreement, which may relate to either patents or know-how or both,
is an atypical (free-form) agreement and has some limitations such as [ 17 ]:
1. the territorial scope: outside the borders of the States in which the exclusive
right title has been validated, the holder has no exclusivity (the invention can be
freely implemented);
2. the time scope: the duration of protection is limited (20 years from the filing of
the patent application) and affects the duration of the agreement;
3. the scope resulting from the right of use: scope of coverage determined by the
contents of the claims;
4. the market sector or field of use.
During negotiations, the potential licensee must check carefully:
• the ownership of industrial property rights;
• the legal status;
• the validity of the titles;
• the time to market;
• the estimation of the ields of use and of the markets;
• the freedom of implementation.
The agreement may provide for:
• a license on later improvements;
• collaboration to ease the implementation of the invention and to obtain the
exclusive right titles, since these activities may extend beyond the time when
the transfer operation is accomplished, when the object of the agreement is a
patent application;
• any sub-licenses.
The costs of maintenance of industrial property rights are usually borne by the licensee,
whereas a decision about who will be in charge of management will have to be made.
Other useful tools during negotiations are: confidentiality agreements, letters of
intent, joint development agreements.
The only guarantee that the licensor takes on is the one relating to ownership,
whereas guarantees are expressly excluded from agreements with regard to:
• the validity of industrial property titles;
• the patentability of the inventions;
• the presence of infringements.
32 The licensee will prefer an exclusive license if additional investments are required before
launching on the market.