Patent Law Practice Center

PLI’s Advanced Patent Licensing 2011: Current Developments and Best Practices

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.  I recently received this outline from Joseph Yang, Partner at PatentEsque Law Group and Co-Chair of PLI’s Advanced Patent Licensing 2011 (scheduled for October 24, 2011 in San Francisco and via live webcast) that explores the law of patent licensing and the business of licensing.

Here is an excerpt from the outline:

In any “patent” or “technology” licensing effort, it is critical to understand the interplay between the business and legal aspects of the transaction.  The legal team must build a legal structure that is consistent with the requirements of the law, while the business team must have a deal structure that meets the grantee’s business needs.  Unfortunately, there is often a inadvertent chasm between the two sides — the lawyer has little experience in business, and vice versa. (more…)

Rocky Mountain IP Conference: Nimmer & Dodd on Licensing

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles on the highlights from the Institute.  The first two articles  focused on the Judges panel wherein they discussed best practices in intellectual property litigation.  In this article, David discusses current IP licensing issues.

IP licensing luminaries Nimmer and Dodd spoke at length on current IP licensing issues. It was an excellent and enlightening discussion. At first blush, it is not directly litigation related, however, I found the session very valuable for the settlement work that I do, as well as for the IP licesing portion of my practice. So, here are some of the highlights:

• Integration clauses — Be careful to understand what is integrated: Does “Agreement” mean just the legal contract? Does it includes schedules and exhibits? What about subsequent purchase orders or more broadly the non-written agreement that the parties came to which was memorialized by the written agreement? If you mean just the written document, you should say that and define what papers are included. Also, make sure that you integrate any prior agreements as well, if you want them integrated. Watch out because most do not pay much attention to integration clauses. (more…)