JOHN W. SCHLICHER |
PATENTS, PATENT LITIGATION, PATENT DISPUTE RESOLUTION AND SETTLEMENT, LICENSING, ANTITRUST, LAW AND ECONOMICS |
John W. Schlicher, “Patent Licensing, What to Do After MedImmune v. Genentech,” 89 Journal of the Patent and Trademark Office Society 341 (2007) Table of Contents (partial) I. Introduction II. Summary III. The Decision In MedImmune v. Genentech IV. How to Decide Whether to License under Lear and MedImmune, and for What Royalty A. Summary of Licensing under Lear and MedImmune B. Licensing Unconstrained by Lear C. Licensing Constrained by Lear D. Licensing Constrained by MedImmune A. V. What Licensees Should Do After MedImmune B. A. Define Royalty Obligations Based on Validity C. B. Check Existing Licenses for Royalty Obligations Dependent on Validity D. C. Decide Whether It Makes Economic Sense to Pursue a MedImmune Claim and Try to Have the Patent Declared Invalid E. If It Does Make Economic Sense, Pay, Send a Protest Letter, Hope the Patent Owner Responds, and Sue or Negotiate a Royalty Reduction A. VI. What Patent Owners Should Do After MedImmune B. What to do if MedImmune Applies Only to Licenses that Create the Contract Issue 1. Do Not Respond or Respond Carefully to Protest Letters 2. Define the Payment Obligation without Reference to Validity 3. Define the Payment Obligation without Reference to the Patent 4. Deal with Eviction Separately 5. Define the Products on which Royalties are Payable B. What to do if MedImmune Applies to All Licenses 1. Agreement Not to Challenge Validity 2. Termination Rights a. Patent Owner Termination for Challenge b. Patent Owner Cancellation for c. Patent Owner Termination if the Challenges and Loses d. Patent Owner Termination at e. Licensee Termination before 3. Royalty Obligations a. License at a Rate Appropriate a Patent That Is Valid as Between the Parties b. License at the Rate for a Patent That Is Valid as Between the Parties, and Reimburse a Portion of those Payments so Long as there Is No Challenge c. Increase Royalties if the Challenges and Loses d. Increase if the Licensee Challenges Validity e. License at the Appropriate for a Patent That is Valid and Spread Payments over a Specified Period 4. Litigation Cost Provisions a. Require the Licensee to Validity Litigation Costs in All Situations b. Require the Licensee to the Patent Owner’s Litigation Costs, Including Attorneys Fees, If the Licensee Challenges and Loses 5. Other Approaches a. License only after Litigation Settlement b. License in Exchange for or Licenses rather than c. License Patents only with -how or Other Things of d. Sell the Licensee a Product Do Not Grant an License e. Validity Disputes by and After Other Dispute Resolution Procedures f. the Potential Licensee Disclose Prior Art before Licensing, and Limit Validity Challenges to Other and Closer Prior Art the Licensee Learns of Later g. Licenses only to that Do Not Play This Game Do Not License, Litigate Actions VII. Legislation |