When granting a license for your valuable technology and know-how, it is essential to ensure that your intellectual property is adequately protected. One way to achieve this is by drafting a robust license agreement.
As a licensor, it is natural to want to maintain a prominent market position even after the license's termination.
To accomplish this goal, some licensors may include an "Assign Back Clause" in the license agreement. This clause requires the licensee to assign any improved technology back to the licensor without any additional charge. Although this clause appears to safeguard your critical know-how and technology and seems like a reasonable way to prevent competitors from emerging based on your technology, it may violate the Anti-Monopoly Act.
The Anti-Monopoly Act prohibits activities that impede others' research and development of new technology, and the Assign Back Clause could discourage the licensee from improving the technology.
Therefore, it is recommended that you consult with professional IP lawyers to review your license agreement before signing.
If you require assistance, please feel free to contact us at contactagree@castglobal-law.com, and we would be delighted to support you.