If you are licensed, you first want to ensure that compensation is not just a temporary provision until the end of the original agreement. You can use z.B software for a specified period of compensation without any problems, just so that the license agreement expires. If the compensation clause applies only to this initial clause of the licensing agreement and you were to be suddenly sued IP after the due date, you may not have recourse against the licensee. So make sure that the compensation goes beyond your original contract. 1) The licensee provides compensation only for the duration of the licence agreement. What happens if you are affected by an IP complaint after the end of your license agreement? Make sure your right to exemption does not stop at your contract. · replace the technology conceded with a licensed technology, which is not legally contrary and is essentially equivalent; and we audit commercial contracts, including framework agreements, intellectual property assignments, software contracts and SaaS agreements that contain compensation clauses. (a) The licensing partner`s obligation to compensate is in principle excluded if liability or claims are due to unauthorized modifications to the technology granted and if, without modification, the technology granted on a stand-alone basis could not have infringed the intellectual property rights of third parties. If the technology granted contains essential standard patents (for example. B chipset licenses) and that the licensee does not have the right to sublicensing for the use of the licensed technology, the licensee should acquire from its owners the rights to use the licensed technology.
In such cases, the licensee is not required to exempt the third party rights taker in the event of a violation of the intellectual property rights of the technology or the rights of third parties. In general, in licensing agreements, most of the potential pitfalls you will find with respect to compensation clauses are based on IP problems. For example, some clauses contain the provision that a tech licensee does not compensate you if the IP rights on which a infringing right is based are issued/registered after the original date of the contract. This may seem right on paper, but you must realize that even if the rights are registered after your contract is concluded, you can still be sued, and without that protection, you will be taken to defend the requirement out of your pocket. Any proposal by the licensee to limit his liability is usually faced with a total refusal for a number of reasons. In the event of a breach of certain provisions (confidentiality, intellectual property rights, licensing), the amounts set out in the software license agreement would not be sufficient to compensate for the losses suffered by the licensee.