Patent Law Practice Center

Strategies For the New Patent Law Frontier

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important. Earlier this week, I had an opportunity to attend PLI’s Advanced Patent Licensing 2011 via webcast (available soon on demand) where an impressive group of experts offered an abundance of advice on patent licensing. I found Mark S. Holmes’, CEO at PatentBridge and Co-Chair of the program, segment where he offered practice tips for patent licensing particularly useful.  Here is an excerpt from his presentation materials:

What is a “Suitable” Confidentiality Agreement?

-Includes basic terms such as that anything said or written as part of the negotiations would not be disclosed to third parties

-Could a potential licensee file pleadings sufficient to establish a declaratory judgment without disclosing the confidential information? (more…)

Institute Live Blog: Hidden Risks of Patent License Agreements

Next up is Peter Brown of Baker Hostetler discussing critical pitfalls in Intellectual Property Licenses.

Sublicense v. Valid Exercise of Rights Under License Agreement

• – Licensees may be in violation of the license agreement if they enter into agreements with third parties that effectively equal a sublicense
• – Courts will look at the nature of the relationship between the parties to determine whether a sublicense exists (E.I. du Pont de Nemours and Co. v. Shell Oil Co.,498 A.2d 1108, Court held arrangement equals sublicense).
• – Implied Licenses – parties should explicitly state all of the rights that are included in a license or state those that are not included in the license or disclaim any implied licenses.  Certain rights may be implied by the circumstances, even though not explicitly stated where without the implied right, the license would not benefit the licensee. (Met-Coil Systems Corp v. Korners, Unltd.803 F.2d 684 , Court held that unrestricted sales of a machine useful only in performing the claimed process & producing the claimed product plainly indicates that the grant of a license should be inferred) (more…)