The High-touch Legal Services® Blog…for Startups!

© 2009-2019 Dana H. Shultz, Attorney at Law

Third-party Patent Infringement: Let the Licensee Beware

After months of effort, you have successfully negotiated a nonexclusive license under an important patent. The license agreement allows you to make, use, sell, offer for sale, and import products that are covered by the patent. Much to your horror, your arch-competitor starts making and selling competing products that use the licensed technology, pricing its products substantially below your planned price. When you inquire, the licensor says that the competitor does not have a license. What can you do to stop this “third-party” infringement of the patent?

You examine the license agreement but see nothing about third-party infringement of the licensed technology. Can you stop your competitor from using the technology? Can you force your licensor to stop the competitor? The short answer is “no”.

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Patent Licensing for Licensors: Know Your Industry

Photo of a stack of 100 Euro notes, symbolizing revenue from patent licensingOver the past few years, several of my clients who had obtained patents wanted to license their rights to third parties. Only one client achieved patent licensing success.

The reason: The successful client was intimately familiar with the industry where his technology had its greatest value. He had worked in that industry for many years. He knew highly-placed executives in the most important companies. He was familiar with the companies’ product development plans.

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Licensing 101

I am pleased to make available as a Free Download on the Downloads page “Licensing 101,” an article that provides information about licensing in FAQ format. Here are some of the questions that are answered:

  • What is a license?
  • How much does a license cost?
  • Can license terms be negotiated?
  • Are some provisions unique to patent licenses?
  • Are there special rules where the U.S. government is the licensee?
  • What should I look out for in international license agreements?

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

Negotiation: When What You Hold Can Make the Other Guy Fold

A couple of years ago I had one of my greatest thrills as an attorney.

My client owns several patents covering ways to improve the efficiency of certain types of lasers. We had succeeded in licensing a large company for one field of use. We were trying to sign up another company for a second field of use.

All business and legal issues had been resolved when, at the last minute, the licensee’s General Counsel demanded that my client convey, in addition to the patent license, certain broadly-defined rights to my client’s know-how. We refused, explaining that know-how never was part of the discussion, and if my client ever was interested in conveying know-how, it would come at a price. The parties then reached final agreement without the know-how provision.

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Top Ten IP Mistakes of Small to Mid-Size Tech Companies

On June 18, I will make a presentation to the East Bay MashEx. The title: “The Top Ten Intellectual Property Mistakes of Small to Mid-Size Technology Companies”. (The handout is available as a Free Download on the Downloads page.)

Here are the mistakes that I will talk about:

  1. Failing to use employee invention agreements
  2. Assuming that the company owns contractors’ work product
  3. Using another company’s license agreement
  4. Thinking that patents are the only IP that matters
  5. Filing for a provisional patent before the scope of the invention is clear
  6. Treating the federal government like non-government infringers
  7. Neglecting to identify and protect trade secrets
  8. Believing that “open source” means “no restrictions”
  9. Giving the “family jewels” to an overseas supplier
  10. Registering the wrong entity as the owner of IP

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.

Intellectual Property Blogs

Here are some intellectual property blogs that I like and some of the reasons why they impress me:

  • Patent – Patently-O – Professor who says a lot without being too wordy or abstract.
  • Copyright – Exclusive Rights – In-house attorney with a sense of humor.
  • Trademark – The Trademark Blog – Private-practice attorney who provides case documents. Been blogging since 2002!
  • Trade secret – Trade Secrets Blog – Law firm that includes an eye-catching graphic with almost every post.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.