Intellectual Property Transactions


ELO aims to collaborate with clients in negotiating complex transactions, covering varying subject matter, from cutting-edge technologies to highly creative artistic works. ELO provides essential technical, product and competitive insight, as well as strategies to secure optimal results for clients.




Patent licensing involves the negotiating and granting of permission by a licensor –i.e. the owner of a patent– to a licensee –i.e. an interested party– to make, use, sell or offer for sale the subject matter over which the licensor has ownership rights –i.e. their invention.


In addition to general licensing concepts, such as specifying the license grant and the consideration provided in exchange for the grant –i.e. payment–, a patent license usually includes its own particular set of issues. Besides a term for the agreement, a patent license must also address the future sharing and development of technology and technical expertise during such a term. It is critical that it specify: whether the license includes access to related know-how and show-how; the procedures for the handling of proprietary information exchanged during the relationship; and the future ownership and licensing interests in the event further technology is developed by one or both of the parties during the course of the agreement.


A proper licensing agreement must also involve the proper marking of any product that will be utilizing the licensed invention –as per patent law–, as well as specify the party responsible for ensuring the proper marking. This is necessary, because distinctive marking puts potential infringers on notice that the licensed invention is protected, and the lack thereof could impact possible remedies available from an infringement action. Naturally, mismarking –i.e. the fraudulent marking of an invention, which is not protected under the patent laws, as being protected– is unlawful.


ELO’s patent practice has experience with a wide array of patent prosecution services –contact the office directly for additional information or to schedule a consultation today!



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If you are seeking an intellectual property attorney, or if you are interested in trademark, copyright, or patent-related legal counsel, contact ELO to

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Legal Notice: Any information herein does not constitute legal advice or endorsement.  All posts are for informational purposes only, as there are many factors and complexities that come into any legal matter, including patenting an idea.  ELO always recommends you consult with a qualified attorney if you want legal advice for your particular situation.
No attorney-client or confidential relationship exists by simply reading and applying the information or steps stated in any article herein.




Escalante Law Offices