Patent License

[xapeila]

What is the name of your state?TX

Hi Everyone, I have a question..

If a company enters in a license agreement is it common the the Patent holder ask that the agreement be for the life of the last issued patent US and international?

Also if the patent is challenged by someone else and is invalidated, what happens to all the licenses the Patent owner has issued or will they become unenforceable?

Thank you, Xapeila

 

[divgradcurl]

If a company enters in a license agreement is it common the the Patent holder ask that the agreement be for the life of the last issued patent US and international?

I assume this license is for a group of patents. This would be typical when you have multiple continuations or divisionals from a base patetn -- although they would all expire at the same time now anyway (wasn't always this way, though).

As far as for differenty patents, well, you can only be forced to pay license fees in the U.S. for sales in the U.S. when there is a valid U.S. patent -- the international patents aren't enforceable in the U.S., so even if the international patents are still valid after the U.S. patents are expired, you can't be held to pay licensing fees for sales in the U.S.

If the international patents are still valid, and you are selling or manufacturing in countries where there exist valid patents, I guess you could still be liable for license fees in those countries -- but that would be a question under the laws of whatever country we are talking about, and under the jurisdiction of that country's courts.

Also if the patent is challenged by someone else and is invalidated, what happens to all the licenses the Patent owner has issued or will they become unenforceable?

If the patents are wholly invalidated, then the license cannot be enforced. If only part of the patent is declared invalid, then the license is still valid -- but you may want to see if the license can be renegotiated.

 

[xapeila]

I assume this license is for a group of patents. This would be typical when you have multiple continuations or divisionals from a base patetn -- although they would all expire at the same time now anyway (wasn't always this way, though).

As far as for differenty patents, well, you can only be forced to pay license fees in the U.S. for sales in the U.S. when there is a valid U.S. patent -- the international patents aren't enforceable in the U.S., so even if the international patents are still valid after the U.S. patents are expired, you can't be held to pay licensing fees for sales in the U.S.

If the international patents are still valid, and you are selling or manufacturing in countries where there exist valid patents, I guess you could still be liable for license fees in those countries -- but that would be a question under the laws of whatever country we are talking about, and under the jurisdiction of that country's courts.



If the patents are wholly invalidated, then the license cannot be enforced. If only part of the patent is declared invalid, then the license is still valid -- but you may want to see if the license can be renegotiated.

Thank you very much for your reply. Xapeila : )

 

[divgradcurl]

Thank you very much for your reply. Xapeila : )

You are welcome. This is actually kind of an interesting aspect of patent law -- a patent is essentially a government-granted temporary monopoly. Once the government "grant" expires, either through the passage of time or some other happening (failure ot pay maintenance fees, a finding of invalidity, a reexamination proceeding that knocks the patent out, etc.), then the "monopoly" goes from a government-sponsored monopoly to a plain-old monopoly, and it falls under antitrust law.

The open question now is what happens when a company gets slapped with a huge verdict (or settles) for infringement, and shortly thereafter the patent is declared invalid -- thisd is the Research in Motion (Blackberry) cazse, where RIM got hit with a huge verdict ($450 million, give or take -- or maybe it was a settlement, I don't remember) and before the ink was even dry on everything, the patents asserted against them were found to be invalid after a USPTO reexamination. Stay tuned for that one...

 

[xapeila]

You are welcome. This is actually kind of an interesting aspect of patent law -- a patent is essentially a government-granted temporary monopoly. Once the government "grant" expires, either through the passage of time or some other happening (failure ot pay maintenance fees, a finding of invalidity, a reexamination proceeding that knocks the patent out, etc.), then the "monopoly" goes from a government-sponsored monopoly to a plain-old monopoly, and it falls under antitrust law.

The open question now is what happens when a company gets slapped with a huge verdict (or settles) for infringement, and shortly thereafter the patent is declared invalid -- thisd is the Research in Motion (Blackberry) cazse, where RIM got hit with a huge verdict ($450 million, give or take -- or maybe it was a settlement, I don't remember) and before the ink was even dry on everything, the patents asserted against them were found to be invalid after a USPTO reexamination. Stay tuned for that one...

It is sad to know that there is no end until one dies. Our company is being forced to to take a license that we can clearly see as prior art which two international PO rejected as such, to buy time before the worlds biggest company continues it's quest to kills us by giving away for free the first of may applications to follow. I feel we were befriended, questioned, and lured into trusting and believing in the worlds largest company's written philosophy of wanting to help us small guys to supplement their platform.. So now they have started they pick what they like then they start knocking us off one by one with free stuff. For 3 years we believed we worked on the right thing, so did they. How do we die gracefully without disappointing the hundreds of customers that continue to support us. When we know in reality if the same product offered will be cheaper then what we could ever afford to offer. We welcome competition but when the originators of the platform go after their PARTNERS there is no hope...

Xapeila : (

 

[xapeila]

How does a company die gracefully

It is sad to know that there is no end until one dies. Our company is being forced to to take a license that we can clearly see as prior art which two international PO rejected as such, to buy time before the worlds biggest company continues it's quest to kills us by giving away for free the first of may applications to follow. I feel we were befriended, questioned, and lured into trusting and believing in the worlds largest company's written philosophy of wanting to help us small guys to supplement their platform.. So now they have started they pick what they like then they start knocking us off one by one with free stuff. For 3 years we believed we worked on the right thing, so did they. How do we die gracefully without disappointing the hundreds of customers that continue to support us. When we know in reality if the same product offered will be cheaper then what we could ever afford to offer. We welcome competition but when the originators of the platform go after their PARTNERS there is no hope...

Xapeila : (