Smarter Licensing Simplified

AuthorCharles C. Valauskas
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Smarter Licensing
By Charles C. Valauskas
Charles C. Valauskas is a partner at Valauskas Corder LLC in Chicago,
specializing in all forms of IP, and contractual and dispute resolution
matters regarding the same. He can be reached at
license that accomplishes a
client’s business objectives
seems like it should be easy
to prepare. For many, it
means nding or accessing a
template license, adding or
deleting language as
needed, and then sending out
the draft to the client for
review and comment.
That was the smart way
to do licensing, I was
told by a senior
partner decades
ago. But since
receiving that rst licensing assignment as a rank associ-
ate, and after working on more licensing projects, I came to
appreciate that the task was far more involved, the endeavor
far more nuanced. Many challenges—some more obvious
than others—existed and had to be overcome just to prepare
the rst workable draft.
How can you make your licensing efforts smarter, so you
can prepare that rst workable draft despite the challenges,
and ultimately have the nal version ready, all within the bud-
get and time frame set by the client? This article proposes a
two-step approach, termed the “inside-out” approach, to pro-
vide the attorney with the information needed to determine
whether the business transaction to be captured in the pro-
posed license is legally viable, and to advance the preparation
of the rst workable draft and ultimately the nal version of a
license, even in the face of many challenges.
The Challenges
Attorneys, particularly those who are new to licensing, face
many challenges when trying to prepare a workable draft of
the license. Here are some of the less obvious ones.
The Template
The “template” refers to any generic, form, or model license,
plus any actual license drafted earlier for a client. As I was
told early in my career, templates offer a cost-effective
and efcient solution to drafting a license. Generic, form,
or model licenses are widely available in traditional ana-
log sources, such as in sections of or entire printed books,
and in a wide range of online sources. But many of these
sources also carry a cautionary note in their prefaces or asso-
ciated commentary that can be easily overlooked by a busy
attorney. The note warns that each of these generic license
forms contemplates a specic business transaction and con-
forms to the specic requirements of the laws applicable to
that transaction, the parties, and the agreement. As a result,
the form agreement is much like the nal version of the
license prepared for a client. It is just a snapshot of the goals,
assumptions, biases, experience, and inexperience that the
drafters and parties had when preparing the document.
Flavio Coelho via GettyImages

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