REACH-THROUGH...PASS-THROUGH...aka COPYLEFT
- Describe the extent to which the supplying party may “reach”’ into the research and new IP or material generated from work with the supplied materials.
- Seek to protect things not yet discovered but which might be by making use of the invention.
- When an invention is made in a widely applicable basic research technology (referred to herein as an "upstream" technology), it is often possible to envisage future technologies (referred to as "downstream" technology) which might be developed using the basic research technology. If the inventor of an upstream invention files a patent application for the upstream invention and attempts to claim downstream inventions which they have not as yet actually made, then the claims to those downstream inventions are referred to as "reach-through" claims.
- Provide access to patented research platform technologies in exchange for royalties on future products that would not otherwise infringe the upstream patent.
- Royalties based on a percentage of sales, where the licensed technology⁄intellectual property, such as basic research, is not incorporated into the end product.
- Value of basic research may not be known at the time of the licence and is usually not known until after production of the end product. Thus, reach-through licensing may be necessary to compensate for use of a basic research invention.
GRANT-BACK...CLAW BACK
- Promise of an exclusive or nonexclusive license under future patents on inventions to be made by the user.
- Requires a licensee to provide the licensor rights to any products or technology used in conjunction with the licensed technology.
- Ensures the licensor a share of the value created by incremental enhancements to innovation.
- More typical when the user is a non-profit institution, such as a university, that does not develop products but nonetheless generates further intellectual property.
- Often used where the parties expect that the licensee will improve on the licensed technology to create a superior product or method.
- Allow the licensor to compete in the marketplace on the same footing as the licensee.