Bloomberg BNA Releases New Edition of "Drafting Patent License Agreements"

"Drafting Patent License Agreements, Seventh Edition" Offers an Examination of the Legal Issues That Affect Patent License Agreements

ARLINGTON, Va., April 15, 2013 /PRNewswire-USNewswire/ -- Bloomberg BNA has published the Seventh Edition of Drafting Patent License Agreements, a handbook that tracks and discusses all the critical components of a patent licensing agreement.

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The new Seventh Edition has been completely revised and expanded to reflect legal developments since the Sixth Edition, offering a new chapter on bankruptcy as it applies to licensing, a new chapter on enforcement of licensed patents explaining the complex issues of standing to sue, an extensive discussion of indemnity provisions, and an examination of the new circuit courts' disagreement over the antitrust consequences of reverse payment settlements.

The Seventh Edition presents a current overview of all legal issues surrounding licensing and of every typical provision used in patent and know‑how licenses. Sample provisions are provided with references to applicable legal and practical consequences. The new edition discusses major new cases, including:

  • WiAV Solutions LLC v. Motorola, Inc., concluding that an exclusive licensee has standing to sue for infringement despite the existence of others with rights to grant sub-licenses
  • Stanford v. Roche and Preston v. Marathon Oil Co., finding that a contract presently assigning future inventions takes precedence over a contract promising to assign in the future
  • Stanford v. Roche, holding that the Bayh-Dole Act does not supersede the requirement to get an assignment of invention from an employee
  • Tessera, Inc. v. International Trade Commission, ruling that exhaustion of a patent occurs upon sale by the licensee, not on payment of royalties by the licensee
  • Sunbeam Products, Inc. v. Chicago American Manufacturing LLC, determining the rejection of license in bankruptcy does not terminate the agreement, and a trademark licensee retains license rights despite being excluded from effect of 365(n)
  • Rates Tech., Inc. v. Speakeasy, Inc., concluding that a no challenge clause in a settlement agreement is unenforceable if settlement occurred before litigation
  • In re K-Dur Antitrust Litigation, holding that reverse payment settlements may violate antitrust laws despite policy in favor of settlement of litigation

This desk reference identifies problematic language and illustrates how to tailor contract wording to accomplish client goals. The authors provide valuable insights into the legal and business aspects of patent contracts, analysis of significant legal issues affecting agreements, and discussion of foreign agreements and their unique considerations. A companion CD-ROM offers 200 sample clauses and forms, including sample license agreements, confidential disclosure agreements, employment agreements, and more.

Drafting Patent License Agreements, Seventh Edition is authored by Brian G. Brunsvold, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., who has over 30 years of extensive hands-on licensing experience; D. Patrick O'Reilley, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., who teaches licensing law at George Mason University Law School in Arlington, Va.; and D. Brian Kacedon, who practices at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., and has broad experience in all aspects of patent litigation. This treatise is available for sale directly from Bloomberg BNA and is also available on the Bloomberg Law legal research system.

Bloomberg BNA, a wholly owned subsidiary of Bloomberg, is a leading source of legal, regulatory, and business information for professionals. In addition to Drafting Patent License Agreements, Bloomberg BNA publishes Drafting Patents for Litigation and Licensing; Patent Prosecution: Law, Practice, and Procedure; Constructing and Deconstructing Patents; and other titles in intellectual property law. Visit us online for a free catalog, call 1.800.960.1220, or send an email request to

The Seventh Edition of Drafting Patent License Agreements may be purchased (700 pp. Hardcover with CD-ROM, Order #2121-PR12/$255.00 plus tax, shipping, and handling) from Bloomberg BNA, Book Division, PO Box 7814, Edison, NJ 08818-7814. Telephone orders: 1.800.960.1220. Fax orders: 1.732.346.1624. A 10% discount is available on print copies of books when ordering from the website at Please note that discounts cannot be combined.

SOURCE Bloomberg BNA


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