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Drafting Patent License Agreements, Seventh Edition

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Understand the legal issues that affect patent license agreements

Drafting Patent License Agreements, Seventh Edition tracks and discusses-clause by clause-all the critical components of a licensing agreement. This handbook illustrates the growing importance of intellectual property transactions to business and the resulting attention such transactions receive in legislative, regulatory, and judicial areas.

The new Seventh Edition has been completely revised and expanded to reflect legal developments since the Sixth Edition, offering a new chapter discussing bankruptcy as it applies to licensing, a new chapter on enforcement of licensed patents explaining the complex issues of standing to sue, an extensive discussion of indemnity provisions, and an examination of the new circuit courts' disagreement over the antitrust consequences of reverse payment settlements.

The Seventh Edition presents a current overview of all legal issues surrounding licensing and of every typical provision used in patent and know‑how licenses. Sample provisions are provided with references to applicable legal and practical consequences. The new edition discusses major new cases, including:

  • WiAV Solutions LLC v. Motorola, Inc., concluding that an exclusive licensee has standing to sue for infringement despite existence of others with right to grant sub-licenses
  • Stanford v. Roche and Preston v. Marathon Oil Co., finding that a contract presently assigning future inventions takes precedence over a contract promising to assign in the future
  • Stanford v. Roche, holding that the Bayh-Dole Act does not supersede the requirement to get assignment of invention from employee
  • Tessera, Inc. v. International Trade Commission, ruling that exhaustion of a patent occurs on sale by licensee, not on payment of royalties by licensee
  • Sunbeam Products, Inc. v. Chicago American Manufacturing LLC, determining the rejection of license in bankruptcy does not terminate the agreement, and a trademark licensee retains license rights despite being excluded from effect of 365(n)
  • Rates Tech., Inc. v. Speakeasy, Inc., concluding that a no challenge clause in a settlement agreement is unenforceable if settlement occurred before litigation
  • In re K-Dur Antitrust Litigation, holding that reverse payment settlements may violate antitrust laws despite policy in favor of settlement of litigation

This desk reference identifies problematic language and illustrates how to tailor contract wording to accomplish client goals. The authors provide valuable insights into the legal and business aspects of patent contracts, analysis of significant legal issues affecting agreements, and discussion of foreign agreements and their unique considerations. A companion CD-ROM offers 200 sample clauses and forms, including sample license agreements, confidential disclosure agreements, employment agreements, and more.

2012/746 pp. with forms on CD/ISBN 9781617461217 Order #2121

About the Authors
Brian G. Brunsvold, retired, was senior counsel with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, with over 30 years extensive hands-on licensing experience.

D. Patrick O'Reilley, senior counsel with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, has extensive experience in assisting clients with transactions involving transfer of IP rights. 

D. Brian Kacedon, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, has extensive experience in patent and technology licensing as well as patent litigation.