Research Handbook on Intellectual Property Licensing: Second Edition

by Jacques de Werra (Editor), Irene Calboli (Editor)

Overview

This second edition of the Research Handbook on Intellectual Property (IP) Licensing explores the multiple facets of IP licensing law from a global and comparative perspective through the opinions of leading experts.

The Handbook combines an in-depth analysis of various specific types of IP licensing agreements (including FRAND licensing of Standard Essential Patents and data licensing) with a presentation of other topics of both dogmatic and practical relevance affecting all types of IP licensing transactions, including competition law and bankruptcy law. The Handbook goes beyond the analysis of classical substantive issues and discusses the treatment of IP licensing under international investment law and the use of commercial arbitration for solving international IP licensing disputes.

The Handbook ultimately aims to offer a scholarly contribution to the development of global or regional IP licensing laws and policies. By opening innovative transversal, comparative and policy perspectives, this Handbook will appeal to a wide audience including IP practitioners, lawyers and IP and contract law scholars globally.

Product Details

ISBN-13:	9781839108730
Publisher:	Edward Elgar Publishing
Publication date:	08/10/2025
Series:	Research Handbooks in Intellectual Property series
Pages:	554
Product dimensions:	6.62(w) x 9.62(h) x (d)

About the Author

Edited by Jacques de Werra, Professor and Director of the Digital Law Center, University of Geneva, Switzerland and Irene Calboli, Regents Professor of Law, Texas A&M University, School of Law, USA and Academic Fellow, University of Geneva, Switzerland

Table of Contents

Contents
Foreword by Sonja A. London xvii
Research Handbook on Intellectual Property Licensing: an introduction xviii
PART I TRANSVERSAL IP LICENSING ISSUES
1 Intellectual property licensing and competition law 2
Andreas Heinemann and Giulia Mara Meier
2 Intellectual property licensing agreements and bankruptcy 27
Mark Reutter
3 The law governing international intellectual property licensing agreements
(a conflict of laws analysis) 52
Pedro A. de Miguel Asensio
4 Intellectual property licensing under international investment law 72
Christopher S. Gibson and Henning Grosse Ruse-Khan
5 IP licensing issues arising in international commercial arbitration 96
François Dessemontet
6 Successfully arbitrating intellectual property disputes: practical and
procedural considerations 109
Jacques de Werra
PART II IP-SPECIFIC LICENSING ISSUES
Section A
Copyright and data licensing
7 Authors’ transfer and license contracts under US copyright law 131
Jane C. Ginsburg
8 Copyright licensing: a European view 156
Alain Strowel, Solène Festor de Suremain and Bernard Vanbrabant
9 Clarifications and complications in enforcing open source software
licenses 177
Robert W. Gomulkiewicz
10 Contractual freedom and fairness in EU data sharing agreements 195
Thomas Margoni and Alain Strowel
Section B
Patent, trade secrets and technology licensing
11 International patent licensing 218
Mark Anderson and Agnieszka Wozniak
12 Licensing of standards-essential patents on FRAND terms 244
Jorge L. Contreras
13 The licensing of trade secrets and know-how 265
John Hull
14 Technology licensing between academic institutions and private companies 287
Heinz Goddar
15 Socially responsible intellectual property licensing: the case of the
Medicines Patent Pool 299
Nataliya Omelchuk and Kelvin Nguyen
Section C
Trademark licensing and character merchandising
16 Trademark licensing between differences and convergence: a comparative
and critical overview 314
Irene Calboli
17 Character merchandising licensing agreements 335
Irene Calboli and Gabrielle Armstrong
PART III SELECTED REGIONAL AND NATIONAL PERSPECTIVES
18 Licensing intellectual property rights in Africa: focus on ARIPO selected
member states and South Africa 369
Martha Kabaira Chikowore
19 Intellectual property licensing in China 393
Hong Xue
20 Intellectual property licensing in India 407
Nikhil Krishnamurthy and Gautam K.M.
21 Intellectual property licensing in Japan 429
Shinto Teramoto
22 Intellectual property licensing in the Federative Republic of Brazil 446
Benny Spiewak
PART IV GLOBAL OR REGIONAL HARMONIZATION OF IP LICENSING LAW
23 A concept proposal for a model intellectual property commercial law 461
Lorin Brennan and Jeff Dodd
24 European IP license contract law: a model for data sharing transactions? 487
Mary-Rose McGuire

Editorial Reviews

‘This comprehensive volume examines from multiple angles the rapidly changing world of IP licensing. Especially valuable are the up-to-date treatments of competition law, FRAND licensing, and the Medicines Patent Pool. Essential reading for both practitioners and policymakers.’

William Fisher

‘Intellectual Property (IP) licensing agreements have been a standard transaction in the business world since the early development of IP law. The authors have done a fantastic job describing the intricacies of IP licensing law. They also provide insights into its link to competition law, Standard Essential Patents under FRAND, and data transactions. This book will be of great interest not only to lawyers and business professionals, but also to all of us in our daily lives as consumers.’

Marco M. Aleman

‘Whether used as a reference guide for best practices or read cover-to-cover, the Research Handbook on Intellectual Property Licensing is an excellent guide for anyone seeking to capture value from intangible assets.’

From the Foreword by Sonja London

‘IP lawyers and IP judges are apt to have a two-dimensional perspective view of IP law. There are just two big subjects: validity and scope of protection. Nearly all they do is about one or both of these. Yet out in the real world there is a third subject – licensing of IP rights. It is almost certainly in financial terms the biggest subject. Although of course there are sometimes disputes, licensing largely works in the background. It is akin to dark matter – there but you can’t see it. This book does what few others do – it casts light upon IP licensing.’

The Rt. Hon. Sir Robin Jacob