The Patent Law Institute live blog continues with the panel entitled, ?The Impact of Recent Court Decisions in Drafting License Agreements?. This panel is led by Peter Brown,?the national leader of Baker Hostetler?s Technology Law Practice. Peter discusses big issues facing patent owners trying to license their patents, the crucial patent reps and warranties, strategies to maximize license revenue, and how the America Invents Act affects patent licenses. Here are the highlights:
Recently there have been several important changes in licensing law that must be considered when preparing a license agreement. In order to fully protect a client, an attorney should prepare an individualized license agreement according to the particular situation the client finds themselves in.
The party that is most likely the most knowledgable about the weakness of the licensor?s patent is its own licensee. But licensors should consider adding contractual provisions that prevent a challenge to the patent by the licensee during the term of the license or after its termination. The case of MedImmune, Inc. v. Genentech, Inc. changes the legal backdrop against which licensors and and licensees must craft their agreements. Patentees should require and bargain for covenants by licensee?s not to challenge the validity of the licensed patent.
Licensors must be cautious in constructing their agreements?in?orde to avoid patent exhaustion ? a doctrine that requires that the first unrestricted sale by a patent owner of their patented product exhausts that patent owner?s control over the patented item ? which can eliminate their ability to restrain use by a purchaser,?including using the patented product to create a new product for sale. If you?re a licensor, you can exercise this?control by requiring your licensees to obligate subsequent purchasers or sub-licensees contractually with the desired restrictions.?
Licensors should require authorized foreign purchasers to agree not import their products back into the U.S. They should require similar agreements from their subsequent purchasers too. This is because isn?t any established?legal precedent as to?whether a foreign purchaser may turn around and sell the products in the U.S.?and not violate U.S. patent law.
Tags: Patent Law Institute 2012, Patent Licensing, Peter Brown, PLI
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