Research Handbook on Intellectual Property Licensing

‘Transactions involving intellectual property whether by way of out-and-out assignment or by one of the myriad variants of licensing which are possible, are really really important – they help the world of business go round. But such transactions can be complex with things like national rules preventing alienation getting in the way of bargains people wish to make. So it is quite astonishing how sparse the literature on the subject is – particularly literature taking a comparative view. This book is perhaps the very first of its kind, taking as it does perspectives from the major legal systems of the world. Moreover its distinguished authors have not written in a technical or abstruse way – as academics (and some judges) can all too easily do. Far from it. This book is readable – and anyone concerned with intellectual property licensing should read it and will find it a pleasure to do so. They will also learn a lot about some of the pitfalls and bear-traps to be found around the world. At UCL we have recognised the importance of this subject. This book will be on our students’ reading list.’
– The Rt. Hon. Sir Robin Jacob, UCL Faculty of Laws, UK

‘IP licensing underpins the information economy. This impressive book brings together leading academic lawyers and practitioners from a range of key jurisdictions to explore a number of major current issues. The book is both thoughtful and practical and it is not afraid to call for greater harmonization of IP licensing law. It is a must have for all those involved in the field.’
– Simon Stokes, Blake Lapthorn

‘This Research Handbook provides a valuable mix of practical and theoretical perspectives on IP licensing and will serve as a reference resource for scholars and practitioners in this field of study.’
– Francesco Parisi, University of Minnesota, US and University of Bologna, Italy

‘The Handbook brings together a unique collection of world renowned experts providing detailed discussion in every chapter. The brilliance of this collective work is found in its broad two dimensional focus – beyond patents to all key IP assets on the one hand, and country specific discussion for key regions around the world on the other. . . Whether read cover-to-cover as a compilation of current best practice or used as a true reference guide, the Research Handbook on Intellectual Property Licensing is a must have for anyone seeking to capture value from intangible assets.’
– From the foreword by James E. Malackowski

Contributors: M. Anderson, P. Beyer, L. Brennan, P. de Miguel Asensio, J. de Werra, F. Dessemontet, J. Dodd, J.C. Ginsburg, H. Goddar, R.W. Gomulkiewicz, R.A. Hillman, J. Hull, N. Krishnamurthy, R.T. Nimmer, M.A. O’Rourke, M. Reutter, A. Strowel, S. Teramoto, B. Vanbrabant, N. Wilkof, H. Xue

Contents:

Foreword
James E. Malackowski

Preface

PART I: SPECIFIC INTELLECTUAL PROPERTY LICENSING POLICIES
1. Authors’ Transfer and License Contracts under US Copyright Law
Jane C. Ginsburg

2. Copyright Licensing: A European View
Alain Strowel and Bernard Vanbrabant

3. ALI Principles of the Law of Software Contracts: Some Proposals for a Global Software Licensing Policy
Robert A. Hillman and Maureen A. O’Rourke

4. Clarifications and Complications in Enforcing Open Source Software Licenses
Robert W. Gomulkiewicz

5. Issues in Modern Licensing of Factual Information and Databases
Raymond T. Nimmer

6. International Patent Licensing
Mark Anderson

7. The Licensing of Trade Secrets and Know-How
John Hull

8. Technology Licensing between Academic Institutions and Private Companies
Heinz Goddar

9. Trademark Licensing: The Once and Future Narrative
Neil Wilkof

PART II: COMMON INTELLECTUAL PROPERTY LICENSING POLICIES
10. Developing Socially Responsible Intellectual Property Licensing Policies: Non-Exclusive Licensing Initiatives in the Pharmaceutical Sector
Peter Beyer

11. A Concept Proposal for a Model Intellectual Property Commercial Law
Lorin Brennan and Jeff Dodd

12. Intellectual Property Licensing Agreements and Bankruptcy
Mark Reutter

13. The Law Governing International Intellectual Property Licensing Agreements (A Conflict of Laws Analysis)
Pedro A. de Miguel Asensio

14. Licensing and Arbitration
François Dessemontet

15. Global Policies for Arbitrating Intellectual Property Disputes
Jacques de Werra

PART III: LOCAL INTELLECTUAL PROPERTY LICENSING POLICIES
16. Intellectual Property Licensing in China
Hong Xue

17. Intellectual Property Licensing in India
Nikhil Krishnamurthy

18. Intellectual Property Licensing in Japan
Shinto Teramoto

19. The Need to Harmonize Intellectual Property Licensing Law: A European Perspective
Jacques de Werra

Index