Welcome to the Licensing Lawyer Blog!

November 16th, 2017
Welcome to the Licensing Lawyer Blog!

I know we're all inundated with electronic information, whether from "push" emails from various sources, blogs, listservs and other sources.  So why another blog?  Because:

  • It's sharply focused on licensing and IP transactions.  We'll be exploring some of the nitty-gritty issues and challenges that licensing people have to resolve in order to get a deal done  -- things like rights to improvements, patent indemnification, licensor duty to enforce against unlicensed infringers, joint inventions and the like.
  •  It's  about what licensing lawyers do: contracts.  It's about contract and deal structuring, drafting clear and succinct agreements that people can understand, deal strategy and negotiation.  In case you haven't noticed, there are lots of really lousy contracts out there -- so one of our goals is exploring "best practices" for contract drafting and negotiation in licensing and IP transactions.
  •  It's a highly interactive site where everyone can share their thoughts, insights and experience.  There are no right or wrong answers and no "experts" in this space: we can all learn from everybody else's experience.

 So welcome, and please join in!

Larry Schroepfer

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Wretched Drafting 101: Please Ignore What I Just Said

April 8th, 2015
Wretched Drafting 101:  Please Ignore What I Just Said

Last time, we talked about some simple techniques to help make contracts easier to read without getting lost (use of decimal-based contract numbering and paragraph indentation), and this time we'll deal with another:  Use of captions.

Captions  should always be used, no matter how short and simple the agreement.  They sum up in very few words what the section is about -- ie, they define the section's scope.  So if a reader is trying to find a specific provision (say, the Limitation of Liability clause), he or she can easily find it without having to read or at least skim through the sections themselves.

It goes without saying that the major contract sections at the highest level (I usually call them "Articles", as in "Article 1: Definitions", but you can call then "Sections" if you prefer) should be captioned.  I think captions should always be used, at least down to the sub-section level -- by which I mean Sections 1.1, 1.2, 1.3 and the like.  If there is extensive use of substantive sub-sub sections (1.1.1, 1.1.2, 1.1.3), it might be appropriate to caption them as well, but I try to avoid using these third-level sections unless absolutely necessary, and to make them short if I do, so I usually don't use captions at that level.

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Comment from: saullieb [Member]  
Saul

It is there because of the fear that the caption has been ignored during the negotiation and editing process and no longer reflects the true intent. And it certainly happens. (Though it shouldn’t.)

08/25/15 @ 08:58

When your Licensed Product isn't (isn't licensed, that is)

March 17th, 2015
When your Licensed Product isn't (isn't licensed, that is)

You've been approached by a competitor, or a Non-Practicing Entity (a/k/a Patent Troll), asserting that your product infringes its patent.  You've got some pretty decent arguments that your product doesn't infringe, and/or that the patent is invalid.  However, after going back and forth for awhile, you decide to take a license rather than engage in patent litigation, and you pay either a lump-sum amount, or a fairly small royalty, mostly just to make the problem "go away".  You're granted a license to sell "Licensed Products", which the agreement defines as an products that infringe the patent that's been asserted against you (defined as the "Licensed Patent" in the agreement).

Some time goes by, and the same company knocks on your door again.  They tell you that they have another patent, unrelated to the first one, that your "Licensed Product" infringes that patent too, and they want you to pay more money to take a license under the second patent.  You tell them that you've already taken a license to make that product, so it's licensed.  They point out to you (correctly) that under your agreement, "Licensed Product" only means something that infringes Patent #1, and that this doesn't make it licensed under Patent #2.  So you're right back to square 1, and you go through the exercise all over again.  (OK, you probably have a decent argument that you're licensed to the second patent either by implied license or estoppel.  However, if you have to rely on implied license/estoppel, it means your attorney didn't do his or her job very well in drafting the license agreement).

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