1) A co-exclusive license where the licensor retains rights to the IP is not considered by the PNO to be an exclusive license. 2) An exclusive license for a geographic area outside of the US is considered an asset located outside of the US for purposes of 802.51(a) (Note: Soon will be 802.50).
Subject: Intellectual property
Hi I have a transaction where pursuant to a License Development and Commercialization Agreement, Company A ( a US company) will transfer the following to Company B (a Japanese Company):
1. A co-exclusive license, without the right to sublicense to a third party. The license rights granted are limited to the research, development and commercialization of the licensed products(s) undertaken jointly by A and B.
2. An exclusive license limited to a limited geographic area (Asia).
1. Does the PNO view a co-exclusive license as an asset under these circumstances?
2. Because B is a foreign company and the exclusive license is limited to a foreign jurisdiction would that part of the transaction be exempt under 802.51?
I would be most grateful for your guidance. Thank you.