b'PROTECTING INNOVATIONLicensing Todays InnovationsTODAY,we are seeing more and more innovationsEnsure that the grant and obligations associated in the vegetable industry, from new germplasm towith the licensed technology is clearly defined traits to breeding techniques, as well as seed treatmentsas well as the territory where the license is being and much more. However, as we have discussed in thisgranted;column in the past, more and more of these innova- Clearly identify who owns what. If both parties tions are being protected by intellectual property rights,are bringing materials to the table, be sure it is including patents, plant variety protection, as well asunderstood who owns what and if materials are trade secrets. Developing new innovations and protect- being developed, be sure to define who owns the ing those innovations takes resources, including timeresulting technology; JAMES WEATHERLY and money, but that is only the start of the work. Make sure you own what you are licensing basedSeed Innovation andThere are a wide range of license agreements thaton proper inventorship, employment agreements, Protection Allianceare used in the vegetable industry, some include butassignment of rights or licensing;executive director not limited to: Watch out for the term and termination clausesConfidentiality (CDA)/Non-Disclosure (NDA) and ensure you have the capability to get out ofMaterial Transfer (MTA) an agreement if you want, or you can continueResearch marketing the product over time as desired. TheProduction/Propagation last thing you want is to get stuck in an unwantedCommercialization license or lose a valuable right; and Marketing Make sure you understand what happens whenSales the agreement terminates. What happens to theAny combination above licensed materials and what obligations will sur-Most complex agreements can be divided into twovive termination.basic components: boilerplate and non-boilerplateAdditional things to think about:clauses. Non-boilerplate clauses often include, defined What systems need to be in place for compli- WHEREWEB terms, a grant of rights, definitions of ownership ofance with the license, are there audits, reporting ON THE what is being licensed, obligations of the parties,requirements (e.g. royalty payments) and/or qual-For more information restrictions, compensation (such as royalties), as well asity control provisions that need to be in place?on the intellectualterm/termination of the agreement. Examples of boiler- What concerns do you have, are there issues that property protectionplate clauses often include severability, entirety, notices,have come up in the past that you want to avoid associated with waiver, and assignment clauses.going forward?seed, visit the There are no true licensing templates that will work Are there any concerns with a term or obligationSIPA website atfor every situation. The parties need to spend timein the agreement, such as compliance with local, seedipalliance.comdrafting the agreement to ensure all of their goals forstate or federal laws?or contact James Weatherly at jamesw@ an agreement are adequately provided and to avoidIn the end there is no magic formula for a license. seedipalliance.com. ambiguity, as ambiguity in a license can lead to confu- Each situation around a license agreement is often sion and big problems at a later date.unique and thus each license often is unique. In the Some tips to think about in drafting a license: United States, parties have freedom to contract anMake sure you have clearly identified what is beingalmost endless amount of terms, unless of course, it islicensed and if you need to, what is not beingillegal, violates basic contract principles or violates case licensed; law.SW28/ SEEDWORLD.COMJANUARY 2020'