Licensing, Licensing, Licensing

Not a day goes by, barely an hour, without one of our clients clamoring for junior, mid-level, or senior licensing lawyers. Everyone knows we are in a tight market--too many jobs chasing too few candidates. This tempts many candidates to try to convince us that they are qualified to fill these licensing positions, because, after all, "a license is just another contract." That is definitely not the way the clients see it, but it does raise a good question: "What is a licensing lawyer?"

Securities, real estate, bankruptcy, environmental, insurance, banking, patent--these are all recognizable practice areas that have fairly well defined borders. These are practice areas that require the mastery of either a regulatory framework and/or a large and well-defined body of case law. The same really can't be said of licensing; and, of course, there are many different types of licenses: patent licenses, unpatented software licenses, trademark licenses, and many others. Licensing is not subject to a discrete statutory framework, nor is it subject to case law that is significantly different from general contract principles. So, how do you tell when you're hooked into a licensing lawyer?

It is more than just a question of having drafted or negotiated licensing agreements. If that were the test then we would all be licensing lawyers now. Multitudes of transactions have licensing components to them. Many litigators, as part of negotiating settlement agreements, have drafted licenses ranging from technology to trademark. Are they appropriate candidates for these in-house licensing positions? Most clients don't think so.

Maybe it is just a question of licensing being a subset of intellectual property law. Perhaps a licensing lawyer is distinguished by his or her ability to achieve a technical understanding of the licensed product. Electrical Engineers with law degrees can license chip design. Software Engineers can license source code. They undoubtedly can, but the truth is that clients do not (indeed, cannot) insist that their licensing lawyers be capable of designing chips or writing source code. In fact, the vast majority of licensing lawyers do not have a technical background. Some of the best would faint at the sight of a motherboard.

We have found that when clients are asked to really think about what they mean by a licensing lawyer they move towards a two part definition. One, the candidate needs to have substantial experience drafting and negotiating licensing agreements of a type that bear some resemblance to the type of agreement the client is likely to need; and, two (this is where the real cut gets made) the candidate must have an understanding not necessarily of the technical aspects of the licensed product, but of the business context in which the license is granted. This means that the lawyer must add value in assessing the practical business applications of after acquired technology, of fields of use limitations, of employee mobility and non-disclosure boundaries. In short, while it is helpful for the lawyer to have experience in the client's particular industry sector, when that isn't possible, the licensing lawyer must demonstrate an understanding of the business dynamics of the client's licensing program. That's how clients screen one "licensing" lawyer from another.

Our advice to candidates in this practice area as in others: if you have the basic tools, that will get you most of the way there, but it may not be enough. You need to demonstrate an understanding of the business context within which these licensing agreements are created. If you can do that, the client won't care if you can't tell the difference between a motherboard and the motherload--and more to the point--you'll set yourself apart from the rest of the candidate pool. That's how the real licensing lawyers "stand up." Give us a call. Multitudes of opportunity await you.

 

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