Issue link: https://htpgraphics.uberflip.com/i/116731
Post-Signing Actions Section 8 It is all too easy to think that just because a licence has been signed, it can be put in a drawer and forgotten about. Think again! Here are just a few of the issues you should bear in mind following completion of your licence: If you have licensed a UK patent, you should register the licence at the Intellectual Property Office as soon as possible, but in any event within 6 months, following execution of the document. Why should you do this? Well, if you do not, third parties will not be bound by the licence unless they knew of the transaction. Also, you will not be able to claim remedies for infringements of the patent occurring before the licence was registered. There are similar rules for other registered IP. Where different jurisdictions are involved, make sure that you find out what their requirements are regarding registration of licences – you should preferably do this before entering into the agreement. Check you are getting the money that is due to you. You need to ensure that royalty payments are being made on time and that all accounts and records provisions are being complied with. This can be done by writing to the licensee frequently, say, every 6 months to find out the level of sales activity. Check whether there are any obligations or restrictions contained within the licence agreement which you will need to make other colleagues or members of your department aware of to ensure they are complied with. Keep a clear record of the IP which has been licensed out, particularly if on either an exclusive or sole basis. Remember – you cannot offer the same licence of this IP to anyone else. 54