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Licensing of Intellectual Property

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This book is the definitive treatise in the field. It provides in-depth coverage of not only standard contract provisions, but also the intellectual property, antitrust, misuse, and more.

Licensing of Intellectual Property is the definitive treatise in the field. It provides in-depth coverage of not only standard contract provisions, but also the intellectual property, antitrust, misuse, and common-law and unauthorized copying issues involved in licensing transactions that are not always directly reflected in contract language. These include: implied licenses; the difficult relationship between antitrust and intellectual property; antitrust and misuse limitations on licensing terms; the influence of trade secret protection and patent expiration and invalidation on licensing and royalty terms; licensees' standing to sue for infringement of licensed intellectual property; the use of declaratory judgments to challenge the validity, enforceability or infringement of licensed intellectual property; and the effect of the Supreme Court's eBay decision on licensing-related remedies. Appendices provide sample patent licensing and Web publishing agreements.

Coverage includes step-by-step guidance and in-depth analysis of: patent license agreements for use with developmental biotechnology; state vs. federal jurisdiction; the standing of co-owners and licensees of intellectual property to sue infringers separately; the federal agencies' Licensing Guidelines; the impact of anti-cybersquatting laws and the Digital Millennium Copyright Act; how infringement warranties and indemnities help shape business transactions; licensing of commercially valuable technology that may not be patentable; the legal status of the essential facilities doctrine; and the validity of field-of-use restraints, exclusivity, territorial restraints, tying, package licensing, grantbacks and other contractual restraints in the United States, Europe and Japan. The analysis of EU law includes the block exemption for technology transfer agreements and related guidelines.

Licensing of Intellectual Property also explores: when an involuntary license can be implied; whether, when and how a licensee may challenge the validity of intellectual property; what effect licensing and licensing negotiations may have on declaratory judgments of patent invalidity; when courts may decline to exercise their declaratory judgment jurisdiction; how inevitable confusion affects courts willingness to find equitable licenses in trade symbol cases; how most-favored-licensee clauses work in practice; and how the Robinson-Patman Act applies to royalties and licenses.

Book #00627; looseleaf, two volumes, 2,104 pages; published in 1994, updated as needed; no additional charge for updates during your subscription. Looseleaf print subscribers receive supplements. The online edition is updated automatically. ISBN: 978-1-58852-064-7.

Additional Information
Division Name Law Journal Press
Volumes 2
Product Types Books
Brand Law Journal Press
Jurisdiction National
ISBN 978-1-58852-064-7
Page Count 0
Edition 0
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Introduction to Licensing

§ 1.01 What Is Licensing?
[1] Types of Licensing Agreements
[2] Requirements for Effective Licensing Agreements
[3] Nature of Rights and Unlicensable Rights
§ 1.02 Innovation and Licensing in a Worldwide Marketplace
[1] Two Paradigms of Intellectual Property Law
[2] Innovation in the International Marketplace
§ 1.03 Business Advantages of Licensing
[1] “Leveraging” Resources
[2] Broadening Geographic Markets
[3] Broadening Product Markets
[4] Obtaining Early Market Entry
[5] Increasing Market Penetration Through Complementary Products
[6] Obtaining Additional Revenue
[7] Technology “Barter”
[8] Enhancing Reputation and Goodwill
[9] Controlling Exploitation
§ 1.04 Business Disadvantages of Licensing
[1] Loss of Control Over Exploitation
[2] Loss of Contact with Customers
[3] Loss of Incentive for Expansion
[4] Loss of Incentive for Vertical Integration
[5] Loss of New Business Opportunities
[6] Dependence on Others for Revenue
[7] Risk of Piracy
[8] Loss of Technological “Edge”
[9] Loss of Public Recognition
§ 1.05 The Subject Matter of Licensing: Bundles of Intangibles
[1] “Bundles” of Rights in Intellectual Property
[2] Combining Bundles of Rights
§ 1.06 Open Source Licensing
[1] The Legal Status of Open Source Software

Express Licenses as Contracts

§ 1A.01 The Scope of a License
[1] The Subject of the License
[2] The Licensed Intellectual Property
[3] The Rights Conveyed
[4] The Field(s) of Use
[5] Exclusivity Vel Non
[6] Territorial Limitations
[7] Temporal Limitations (Duration)
[8] Cross-Licensing
[9] The “Sense of the Deal” and Its Impact in the Courtroom
§ 1A.02 Supervening Federal Principles
[1] Federal Preemption Generally
[2] Supervening Principles of Federal Policy Applicable to Licensing Generally
[3] Sovereign Immunity
§ 1A.03 General Principles of Contract Interpretation for Licenses
[1] Licenses as Contracts under State Law
[2] Contract Formation
[3] General Rules of Interpretation
[4] Covenants and Conditions and their Different Effects
[5] Rescission and Restitution
[6] Agreements to Agree and the Risks Posed by Termsheets
[7] Implied Covenants of Good Faith and Fair Dealing
[8] Agreements to Arbitrate Disputes

Invalid Intellectual Property

§ 2.01 Introduction
§ 2.02 Licensee’s Right to Repudiate the License Agreement
[1] Licensee Estoppel and No-Contest Clauses
[2] Repudiation of Licenses for Reasons Unrelated to Intellectual Property
§ 2.03 Licensee’s Right to Recover Royalties Already Paid for Rights Under Invalid Patent
[1] Recovery of Royalties Already Paid for Licenses Under Invalid Patents: The General Rule
[2] Challenges to Patent Validity Brought by Third Parties
[3] Involuntary Escrow and the Right to Interim Royalties
§ 2.04 Refusing to Take a “License” Under Invalid Intellectual Property
[1] Threshold Requirements for a Successful Antitrust Claim: Objective Baselessness and Bad Faith
[2] Other Elements of the Antitrust Offense
[3] Legal Relief
[4] Procedure: A Compulsory Counterclaim?
§ 2.05 Third-Party Causes of Action
[1] Contributory Infringement
[2] Unjust Enrichment
[3] Interference with Contract
[4] Interference with Business Relations or Prospective Economic Advantage

Declaratory-Judgment Actions in Patent Law

§ 2A.01 Background
[1] The Importance of Declaratory Judgments in Patent Law
[2] The Constitutional and Statutory Conditions for Declaratory Judgments
§ 2A.02 The MedImmune Decision and Its Effect
[1] The Supreme Court’s Decision
[2] The Federal Circuit’s View
[3] Open Issues
§ 2A.03 Pre-MedImmune History
[1] Overview
[2] The Repudiated “Reasonable Apprehension of Suit (RAS)” Test
[3] Infringement or Preparation for It
§ 2A.04 Declaratory Judgments and the Licensee’s Dilemma

Involuntary Licensing

§ 3.01 Introduction
§ 3.02 The Strength of Exclusivity: Refusal to License and Patent Suppression
[1] Property
Jay Dratler
Stephen McJohn
Professor Stephen McJohn is a professor at Suffolk University Law School in Boston, Massachusetts where he teaches in the areas of intellectual property and commercial law. His scholarly interests lie in areas touching on law and technology, such as intellectual property, computer law, artificial intelligence and legal reasoning, and economic analysis. Professor McJohn received his B.A. in Computer Studies and his J.D., magna cum laude, from Northwestern University. After studying law in Germany and completing a federal appellate clerkship, he practiced law in the Chicago office of Latham and Watkins and taught at the IIT Chicago-Kent School of Law.

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