Licensing Termination Provisions for Under-performing License Agreements After securing a patent on an invention and you are making money, another company may want to use the patented technology in their product or service. To give a business the right to use the patented technology, the patent holder and the business enter into a contract for the right to use the intellectual … [Read more...]
Licensing
Patent licensing is the activity of engaging others to pay royalties for the use of a patent. Browse related articles below.
Patent royalties not due for activities after patent expiration
Bottom line: Patent royalties based on activities after a licensed patent has expired is per se unlawful. Kimble v. Marvel (S. Ct. 2015). This rule is effective even if the parties did not know about the rule when they entered into the license agreement. Clients will often ask during the last days of a successful patent term how one might go about extending the patent … [Read more...]
Patent license unenforceable because of nonpatent rights
Patents are viewed as a necessary evil in the United States. Monopolies are considered evil in the United States but patent laws which have monopoly like characteristics are designed to promote the Sciences in that it gives inventors an exclusionary right (i.e., monopoly like right) for a limited period of time in exchange for the inventor’s disclosure of the invention to the … [Read more...]
Patent marking shows whether product is covered under a patent
In the world of patents, the stakes can be very high where awards can reach into the hundreds of millions of dollars and sometimes billions of dollars. When a license is given, royalties are paid on products covered by the patents being licensed. It might seem to be easy to determine whether royalty should be paid or not on a given product. However, it is often not that … [Read more...]
After Acquired Companies Fall Under Existing License
A patent provides the right to exclude others from practicing the patented invention. In other words, a patentee can demand that competitors stop selling a device that infringes on the patent. This is the traditional offensive aspect of a patent. However, patents have other purposes. For example, when a company is accused of infringement, the company can look to its own patent … [Read more...]
Comparable Licenses Used to Establish Reasonable Royalty Rate
A patentee can seek money damages and/or an injunction against companies that infringe their patent. Damages are calculated as the dollar value that the patentee suffered due to the infringement. However, in certain situations, the patentee may not have suffered any damage or the damage suffered by the patentee was de minimus. For example, the patentee may be a university, a … [Read more...]