Licensing is critical for businesses, inventors, and organizations that seek to protect and capitalize on their intellectual property (IP). Licensing involves granting permission to use your intellectual assets while retaining ownership rights.
Whether you’re a New York City-based innovator, part of a global enterprise, or an entrepreneur breaking into new markets, our team at David L. Cohen, P.C. is here to help you optimize the potential of your intellectual property portfolio.
Located in New York, New York, we serve clients across the state and worldwide. With decades of focused experience in IP law, our firm helps clients achieve tangible results through practical legal solutions.
What Is Licensing?
Licensing is an agreement between two parties, where one grants the other permission to use specific intellectual property, such as patents, trademarks, copyrights, or trade secrets, under defined terms. This allows IP holders to maintain ownership while generating income or developing partnerships.
Licensing can be a powerful strategy when properly crafted and negotiated. These agreements can encompass exclusive or non-exclusive rights, geographic boundaries, usage restrictions, royalties, and other terms.
For example, a business holding a patent on breakthrough medical technology may license its use to medical device manufacturers across multiple countries, earning royalties for every unit sold. Alternatively, trademarks can be licensed to create partnerships for brand extensions, like apparel or merchandise collaborations.
The licensing process, while effective for scaling your innovation or protecting valuable assets, comes with inherent complications, and the key challenges you should be aware of often include intellectual property rights, the enforceability of agreements, royalty or fee structures, and addressing disputes or misuse.
Your Stop for Experienced & Quality Licensing Services
Types of Licensing Agreements
At David L. Cohen, P.C., we handle a wide variety of licensing agreements across multiple industries. Below are some specific types of licensing arrangements we frequently help our clients negotiate and draft.
Patent licensing: This grants exclusive or non-exclusive rights for others to manufacture, sell, or use your patented innovation.
Trademark licensing: This grants permission for third parties to use your brand identifiers (logo, name, slogan) while maintaining consistent quality standards.
Copyright licensing: Copyrights allow creative works like software, art, or music to be used by others to generate revenue while maintaining ownership.
Software licensing: This structures agreements for software as a product (commercial licenses), open-source projects, or SaaS models with subscriptions.
Trade secret licensing: This helps protect confidential business processes, formulas, or strategies while enabling partnerships that align with your goals.
Whether you’re drafting a licensing agreement for the first time or renegotiating an existing contract, our firm focuses on building agreements tailored to your business needs and market realities.
Licensing Laws in New York
For businesses, inventors, or organizations based in New York, there are key considerations when it comes to licensing intellectual property within the state. Although intellectual property laws, including copyrights and trademarks, are governed by federal law, New York state still play a significant role in shaping their impact.
Governing Laws and Trade Secrets
New York follows the Uniform Trade Secrets Act (UTSA) for matters involving trade secret protection. If you’re licensing trade secrets within New York, you must carefully structure your agreement with clear confidentiality and non-disclosure clauses. Failing to include these terms could result in a loss of essential protections.
Contract Law
Under New York law, licensing agreements are governed by general contract principles. That means clarity, enforceability, and mutual obligations must all be established for the agreement to stand legal scrutiny. A well-drafted contract not only protects you but also helps avoid costly disputes.
Non-Compete Restrictions
Non-compete clauses in licensing agreements are heavily scrutinized in New York, and they must be reasonable in geographic scope, duration, and impact. Crafting non-compete provisions that comply with New York laws requires careful precision. Some of the common non-compete restrictions we encounter include:
Royalties: Authorities in New York often assess licensing income for tax purposes. Licensing agreements specific to royalties, particularly those related to trademarks or patents, must account for these considerations to avoid unexpected tax liabilities.
Termination clauses: Licensing agreements in New York should include clear and enforceable termination clauses that specify the circumstances under which the license may be revoked or expire. This prevents ambiguity and potential disputes between the licensing parties.
Intellectual property ownership: It is critical to specify the ownership of intellectual property rights in licensing agreements. New York courts prioritize clarity in licensing contracts to avoid conflicts regarding the use or transfer of such rights so that both parties understand their obligations.
Licensing Attorney in New York City
At David L. Cohen, P.C., we help clients maximize the value of their intellectual property while safeguarding their innovations. With a comprehensive approach to managing patents, we collaborate to address market changes and adapt your IP strategy to protect your competitive advantage.
Our seasoned counsel strives to achieve favorable results and deliver practical solutions. To take the next step in managing or licensing your intellectual property, contact us at David L. Cohen, P.C. today. Located in New York, New York, we serve clients throughout the United States and internationally.