Patent Law Practice Center

Patent & Technology Licensing with Joseph Yang

Licensing transactions are becoming more complex than ever. At PLI’s Advanced Licensing Agreements 2012 seminar last week, Joseph Yang, Founding Partner of PatentEsque Law Group, LLP and Co-chair of the seminar, lead the panel entitled, “Patent & Technology Licensing”. He discussed the most common mistakes that occur when licensing patents, and shared personal tips on how to avoid making the mistakes that could gravely cost you later.

Technology vs. Intellectual Property

Patent licensing and technology licensing are very different. A patent is a legal right to stop someone from utilizing technology covered by the patent. Often, when someone takes a patent license, they don’t even need your technology.  So the motivation for taking a patent license is for the licensee to be able to utilize its own (infringing) technology without being sued. In contrast, when someone wants a technology license,  it usually doesn’t have its own technology, and needs access to yours. Typically, the technology licensee doesn’t even care if you have a patent. Understanding these differences is key to structuring a license to cover what you mean to gives (but not more). When patents and technology are co-mingled in a contract without the intention to give away both, it could cause big problems. Tips: Be careful to define “Technology” and “Patents” separately in a contract, rather than commingling them. 

(more…)