Go West, Young Lawyer: Patent Licensing Strategies For The New Frontier

The issues of the newsletter that have generated the most email over the years are those dealing with patent law — mostly because, since Toolbox is most neophyte-ish in this area, it often says something really dumb that a member of the secret society otherwise known as patent lawyers feels obliged to correct. And Toolbox is most appreciative for such corrections, having learned enough from them to consider sitting for the patent bar. (Of course, "to consider sitting for" doesn't meant "to commit to sitting for" or "thinks it can pass or even answer one question correctly.") That is to say, patent law is in constant flux, and often Toolbox is woefully behind the curve; so it assumes that transactional lawyers who don't necessarily specialize in patent law fall into similar traps. That's why it grabbed at the chance to offer a broad look into the crystal ball of the patent future that is this week's second download, which comes to us from the PLI treatise Patent Licensing: Strategy, Negotiations and Forms (3rd Ed.), by Mark S. Holmes (PatentBridge LLC).

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DMV Documents Should Be So Clear: Basic Patent License Contract Provisions

For years, Toolbox walked around with a driver's license that spelled its legally recognized name incorrectly. Changing it was such a pain (and the DMV wouldn't correct its typo for free) that Toolbox just waited until the license expired to fix it. The consequences of the inaccurate license were annoying—like Toolbox received twice the number of juror summons as everyone else on the planet. Airlines paused over the license when using it to let Toolbox check in for a flight since the name on the license didn't match the name on the ticket—still, nothing really injurious resulted. But imagine you have a new client who holds a patent on a widget that it had previously licensed (before he was your client), but the license agreement misnamed the invention that was patented, or misstated the term of the agreement, made it exclusive for 10 years when your client wanted non-exclusive for five years or made any of a number of other possible errors in terms. That would really screw up your new client's rights in ways much more onerous than a few extra turns in the jury box.

Continue reading "DMV Documents Should Be So Clear: Basic Patent License Contract Provisions"

Who Knows What Evil Lurks? Hidden Risks In Patent License Agreements

If only life (and law practice) were so easy as the following: client invents greatest thing since sliced bread, decides to license it. You get to handle the licensing work—goldmine for inventor; goldmine for you. But goldmines are famous for blowing up in investor's faces. So before you pop the champagne cork because your client's doohickey will be used by everyone in everything, take stock on the possibility that licensing deals can backfire and everyone ends up with soot on their faces as that goldmine evaporates into buckets of dust. That's the takeaway from Peter J. Kinsella's (Faegre & Benson LLP) outline Hidden Risks of Patent License Agreements: What You Don't Know Can Hurt You.

Continue reading "Who Knows What Evil Lurks? Hidden Risks In Patent License Agreements"

I'll Show You Mine Before I Show Anybody Else: Exclusive First Look Agreement Form

Toolbox had never heard of a "first look agreement" until it picked up a sample of today's second download, Exclusive First Look Agreement, submitted for your perusal by Kenneth M. Kaufman (Manatt, Phelps & Phillips, LLP) and Thomas A. Magnani (Howard Rice Nemerovski Canady Falk & Rabkin). If Toolbox understands correctly, these are licensing agreements that obligate one party to give another party first dibs (or look, or right of first refusal) at a creative project, usually film or television, with the creative party receiving some sort of consideration for its sacrifice. Hey, Toolbox got that right out of the first paragraph of the download. 

Continue reading "I'll Show You Mine Before I Show Anybody Else: Exclusive First Look Agreement Form "

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