Drafting Patent License Agreements, Ninth Edition


New Edition!

Drafting Patent License Agreements is an essential desk reference which offers practitioners a critical overview of all legal issues surrounding patent licensing.


Understand the legal issues that affect patent license agreements.

This invaluable volume tracks and discusses—clause by clause—all the critical components of patent and technology license agreements, as well as nondisclosure agreements and collaboration agreements. Drafting Patent License Agreements illustrates the ever-increasing importance of intellectual property transactions to business and the resulting attention such transactions receive in legislative, regulatory, and judicial areas.

The Ninth Edition of Drafting Patent License Agreements presents a current overview of all legal issues surrounding licensing, including patent exhaustion, antitrust, bankruptcy, Bayh-Dole, export control, the UCC, ANDA settlements, and FRAND licensing. Sample provisions include references to applicable legal and practical consequences. Major cases covered include Impression Prods. v. Lexmark Int'l, Inc.; Kimble v. Marvel Entertainment LLC; FTC v. Actavis Inc. (and its progeny); Mission Products Holdings v. Tempnology, LLC; Dodocase VR, Inc. v. MerchSource; TCL v. Ericsson; Unwired Planet Int’l Ltd. v. Huawei Tech. Co. Ltd., and FTC v. Qualcomm. An appendix (in print and electronic format) offers 200 sample clauses and forms, including sample license agreements, confidential disclosure agreements, employment agreements, and more.

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Summary of Contents

Chapter 1. Some Premises and Commentary

Chapter 2. Legal Principles

Chapter 3. Enforcement of Licensed Patents

Chapter 4. Express Agreements: Nonexclusive Licenses, Nonassertion Agreements, and Exclusive Licenses

Chapter 5. Specific Types of Licenses

Chapter 6. IP Licenses and the Uniform Commercial Code

Chapter 7. Implied Licenses

Chapter 8. Patent Exhaustion

Chapter 9. Issues in License Agreement Negotiation

Chapter 10. The Opening Part of the Agreement

Chapter 11. Definitions

Chapter 12. The Granting Clause; Elements of the Grant; Definition of Licensed Subject Matter

Chapter 13. Reservations and Improvements

Chapter 14. Royalties, Reports, and Payments

Chapter 15. FRAND Principles

Chapter 16. United States Tax Issues Relating to Transfers of Patents and Know-How

Chapter 17. Protection for a Nonexclusive Licensee

Chapter 18. Transferability of Rights and Obligations of License Agreements

Chapter 19. Representations and Warranties and Negation of Implications

Chapter 20. Indemnification and Liability Insurance

Chapter 21. Licensing of Pending Patent Applications

Chapter 22. Alternative Dispute Resolution

Chapter 23. Common Provisions of Consequence

Chapter 24. Term and Termination of the Agreement

Chapter 25. Execution of Agreements: Problems of Authority and Proof

Chapter 26. Bankruptcy Law Considerations

Chapter 27. Validity and Construction of Patents

Chapter 28. Settlement of Patent Litigation

Chapter 29. Confidential Disclosure Agreements

Chapter 30. Agreements Concerning the Sale or Other Transfer of Unpatented Technological Values

Chapter 31. Collaboration Agreements

Chapter 32. Cross-Border Licensing Issues

Chapter 33. Export Laws and Regulations of the United States

Chapter 34. University and Government Licensing

Chapter 35. Selected Competition Law Issues

Appendices • Table of Cases • Index


D. Patrick O’Reilley (retired) was a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC. He also taught law at George Mason University Law School, Arlington, VA.

D. Brian Kacedon is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC and has broad experience in all aspects of patent litigation.

Book Information

2020/818 pp. Hardcover

ISBN 978-1-68267-627-1

Order #3627

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