Drafting Patent License Agreements, Ninth 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.
2020/818 pp. Hardcover