In this new comprehensive 675-page desk reference you’ll receive:
- Valuable insights into the legal and business aspects of patent contracts
- Analysis of significant legal issues affecting your agreement
- Discussion of agreements with international partners and their unique considerations
- 200 sample clauses and forms, including sample license agreements, confidential disclosure agreements, employment agreements, and more — all on a companion CD-ROM for your convenience
Drafting Patent License Agreements, Seventh Edition will help you understand all the legal issues affecting patent license agreements – and how to easily incorporate them into every transaction you handle. This desk reference identifies problematic language and illustrates how to tailor contract wording to accomplish your goals.
The new Seventh Edition has been completely revised and expanded to reflect vital legal developments. Also included is 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.
In concise chapters, Drafting Patent License Agreements, Seventh Edition tracks and discusses — clause by clause — all the critical components of a license agreement.
This newly updated reference provides you with a current overview of all legal issues surrounding licensing, addressing every typical provision used in patent and know‑how licenses. Sample provisions are provided with references to applicable legal and practical consequences. This new Seventh Edition of Drafting Patent License Agreements 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
Receive a CD Filled with Sample Forms
and Agreements With Your Purchase
Included with this comprehensive desk reference is a CD that provides access to a set of form paragraphs and clauses you can incorporate into your license agreements. Form paragraphs are indexed to the text, and each one includes the rationale and legal support so you can determine whether or not a particular form paragraph is appropriate for accomplishing your specific goals. This valuable CD companion also includes the form agreements contained in the appendices.
About the Publisher
Technology Transfer Tactics is proud to partner with BNA Bloomberg Books to bring our customers access to this comprehensive and authoritative resource. The high-end content in Drafting Patent License Agreements, Seventh Edition is designed to meet the specialized needs of today’s busy IP law and licensing professionals.
About the Authors
Brian G. Brunsvold, a senior counsel with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., has more than 30 years of extensive hands-on licensing experience. He has litigated as lead counsel in patent infringement cases before federal district courts and the United States International Trade Commission (ITC). Mr. Brunsvold has also served as an expert witness and expert consultant on licensing issues.
Dennis “Pat” O’Reilley, also a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, has extensive experience in assisting clients with transactions involving transfer of intellectual property rights. He represents clients as licensors and licensees, and negotiates and drafts agreements ranging from simple licenses to complex collaboration agreements. He has written many articles on licensing and related issues, taught licensing law at George Mason University Law School, and is active in education and leadership positions in the Licensing Executives Society.
D. Brian Kacedonhas gained extensive experience with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, in patent and technology licensing as well as patent litigation. He assists clients in all aspects of licensing, including establishing licensing programs, developing licensing strategies, and negotiating and drafting license agreements. He has considerable experience in developing and implementing programs for licensing pooled patents directed to standards. He frequently lectures at legal and industry workshops and conferences on licensing issues and serves as Adjunct Professor at George Mason University Law School.
