A patent license involves the granting of permission from a patent owner – the licensor – to another party – the licensee – to make, use, sell or offer for sale the patented invention.
In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a patent license has its own special set of issues. For example, a patent license must address the sharing and development of technology and technical expertise during the term of the license agreement. It is critical for the parties to specify: whether the license grant includes access to related know-how and show-how; procedures for the handling of proprietary information exchanged during the relationship; and ownership and future licensing interests in the event further technology is developed by one or both of the parties during the relationship. A patent license must also address the proper marking of the licensed invention under the patent laws. Marking puts potential infringers – i.e., unlicensed practitioners of the invention – on notice that the licensed invention is protected. Conversely, mismarking, the marking of an invention that is not protected under the patent laws, is unlawful. A patent license must identify the party responsible for the proper marking of the licensed invention.
McHale | Slavin has extensive experience in the preparation and negotiation of patent licenses. Contact us for additional information or to schedule a consultation.
