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IP-License Agreement / IP-Purchase Agreement

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Foto: Colourbox.de / Nuthawut

What is an IP-License Agreement / IP-Purchase Agreement?

Intellectual Property (IP), e.g., invention disclosure, patent application(s), patent(s), software, know-how) belonging to Marburg University may be made available to third parties either by a license, or by a complete transfer of the IP by means of an IP purchase agreement. While Marburg University does remain the owner of the IP under the terms of the user license, it shall lose all rights to it in the event of a complete transfer via purchase.

These agreements are entered into by Marburg University, as holder of the IP right, with a licensee or a purchaser. They allow the licensee/purchaser to use the IP exclusively or non-exclusively, or to purchase it against a payment for reasonable and market-standard royalties. An exclusive right of use may be confined to specific geographical regions and/or areas of application. Such use equally includes modification, further development, use, commercial utilization and transfer of the licensed subject matter.

What about Regulations concerning Intellectual Property (IP)?

In the event of a licensing agreement, Marburg University retains ownership and rights of the licensed IP subject matter and the right to use them free of charge for its own scientific purposes in research and teaching.

In the event of an IP sale, Marburg University shall transfer the entire IP to the purchaser. In this instance, Marburg University shall lose all rights to the IP, yet in some cases may obtain a license in return.

What should be covered by such an Licence/ Purchase Agreement?

Subject matter of the agreement with all details of any associated IP (e.g., patent applications /patents, software etc.) to be licensed or sold; notably, information on the framework conditions, including the tasks and solutions involved in developing the IP (free research, third-party funding or cooperation project), as well as all relevant details concerning the persons or contracting parties involved:

  • Type of License Agreement (e.g. exclusive or non-exclusive)
  • Contract Territory (for Patents / Patent Applications)
  • Scope of Application 
  • Details on the type and amount of Licence Fee (reference value, acquisition sum, minimum licence fee)
  • Details on Payment of Patent Costs
  • Limitation of Liability
  • Applicable Law / Jurisdiction

Furthermore, licensing and utilization agreements are individually tailored according to the nature of the subject matter (for instance, a device, a process, or an active pharmaceutical ingredient).