L09 The Licensor

In general the principle Licensors to be involved in a license agreement are IP owners1.

Others entitled to license out IP can include joint owners, and, where their licence agreement allows it, licensees who may be allowed by the IP owner to grant sub-licences to sub-licensees .

    The law relating to the rights of owners, joint owners and licensees will all depend on the law of the particular country concerned. For example under UK law the agreement of all joint owners of a patent is required in order to grant a licence or sell a patent2 3 .


Where a Patentee is abusing the monopoly granted, some countries allow for the grant of "compulsory licences" or "licences as of right" under certain circumstances4 . In such a case the court or patent office may decide the terms of the licence rather than the IP owner.


1 Owners of Know-How can only take legal action against those who disclose it when they have promised not to. Thus Licensors cannot "license" Know-How - they can only sue for breach of a non-disclosure agreement. In practice, the term "license agreement" is often used for agreements involving Know-How and other IP.
2 UK Patents Act 1977 S.36(3) . Joint-Ownership is problematic, one owner and a good licence is often better
 3 Under US Law in the absence of a co-ownership agreement co-owners can licence and sue without the other's consent.
4 e.g. the UK Patents Act 1977 S.48 subject to EC law which limits its effect in some cases.