Recently I expressed to a group of patent lawyers my reluctance to use sole and exclusive in granting language to indicate that the licensor retains or doesn’t retain, respectively, the right to use the intellectual property.
But on revisiting MSCD 13.606–10 and this 2012 post, I realized that I haven’t yet offered suitable alternatives. So here goes:
In contracts on EDGAR, the most popular alternative to sole is exclusive (except as to the Licensor). But given the inconsistency among commentators regarding the meaning of sole (see MSCD and the 2012 post), I suggest that it would be prudent to be clearer still and say exclusive (subject to the Licensor’s continued right to use X).
Instead of exclusive, you could say exclusive (even as to the Licensor). But even serves to emphasize something surprising or extreme. Contracts aren’t the place for emphasis, and this use of even involves nothing surprising or extreme. So I say the heck with even—use instead exclusive (including as to the Licensor).
Any thoughts?
It seems kind of redundant to add (including as to the Licensor). Just take the plain language meaning of “exclusive” and I would read that to mean that only the Licensee can use it unless there’s another clause somewhere else, in which case, such a clause should be prefaced with “Subject to …”
I see your point. But given that I’m attempting to wean lawyers off of the coded meanings of sole and exclusive, it might be best to err on the side of being overly explicit.
Agree with Ken. As I often have to negotiate with many non-native English speakers (and with certain jurisdictions – I believe at least PT – that have a different take on “exclusive”, or at least the by whatever dictionary/translation of their law is used!) and usually with trans-boarder licences, I would always use language like Ken’s for an “exclusive” licence: “exclusive (including with respect to the Licensor)”.
However, for Ken’s suggestion for what this post is typically understanding as “sole”, I would suggest a further clarification: “exclusive (including with respect to the Licensor, but without the right of Licensor to continue or to grant any other licence)”