So that s what I ll do. When a licensor licenses his intellectual property to a licensee, it is almost inevitable that the licensee will discover enhancements and improvements to that intellectual property. Products improve over time. Inevitably, the issue will arise as to who owns the enhancements and improvements, the licensor or the licensee. If you think that the licensor is over reaching by claiming the licensee s enhancements and improvements, consider this.
Chances are that the licensor made the major breakthrough.
The licensee s enhancements and improvements would not have been discovered but for the licensor s breakthrough. Therefore, by all rights, such enhancements and improvements should accrue to the licensor. Whether or not you agree with the arguments supporting a grant back clause, you will certainly see its relevance in a licence agreement. A grant back clause is usually not relevant in a non-disclosure agreement. The reason is because the likelihood of the recipient discovering an enhancement or improvement is so remote.