Lexis Nexis Bensen on Patent Licensing Transactions
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Product description
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This 3-volume treatise, first published in 1968, provides the most comprehensive coverage of the law and practice of patent licensing available today. It covers not only the underlying legal principles that necessarily guide the negotiation and enforcement of patent license agreements, it provides numerous practical insights to help the practitioner ensure that a final agreement is drafted to protect a client’s interests and avoid unnecessary disputes.
Covered topics include:
Invention Ownership
Patent Ownership and Assignment
Standing to Sue for Infringement
Forms of Patent Licenses (e.g., exclusive v. nonexclusive, written v. oral, express v. implied)
The Patent Exhaustion Doctrine
Recordation of Patent Interests
Licensing of Related Intellectual Property
Checklists for Drafting and Due Diligence
The Legal Environment for Licensing (e.g., licensee and assignment estoppel, antitrust considerations, bankruptcy considerations)
Specific Licensing Provisions (e.g., provisions respecting third-party infringement, sublicensing, assignability, patent notice, improvements, indemnity, governing law and jurisdiction and venue)
Conflicts between Federal and State Law that Impact Patent Licensing
FRAND Licensing
Royalty
Termination
Foreign Licensing
Government Licensing
Arbitration
Settlement Agreements
Joint Defense Agreements
Bensen on Patent Licensing Transactions also includes numerous form agreements covering a wide range of scenarios and many other resources to assist the practitioner.
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Featured Authors
Eric E. Bensen
Eric Bensen is an internationally recognized intellectual property law author, consultant and expert witness. In addition to U.S. Patent Opinions and Evaluations, his works as author or coauthor include six leading intellectual property treatises from LexisNexis/Matthew Bender:
Patent Law Perspectives (9 vols.)
Bensen on Patent Licensing Transactions(3 vols.)
Milgrim on Trade Secrets (5 vols.)
Milgrim on Licensing (3 vols.)
New York Intellectual Property Law
He is also the author of LexisNexis’ Patent Statements of Law, a singular tool for quickly identifying quotations that precisely state principles of patent law in a manner that is helpful to the drafter. It is comprised of more than 7500 intuitively organized patent law quotations from more than 1840 decisions including more than 200 Supreme Court decisions each followed by a short parenthetical briefly identifying the technology involved, the procedural posture of the decision and the pertinent facts. His other works from LexisNexis/Matthew Bender include:
Attorney’s Dictionary of Patent Claims (3 vols.)
Gray Markets: Prevention, Detection and Litigation
Intellectual Property in Bankruptcy
Mr. Bensen is the United States Reporter for LexisNexis Australia’s Intellectual Property Reports.
Mr. Bensen has advised clients throughout the United States as well as in Japan and Europe on intellectual property issues arising in litigation, licensing and transactional matters and has served as an expert witness in the United States, the United Kingdom and Germany on matters of U.S. intellectual property law and has worked as a consulting expert on matters of U.S. intellectual property law in connection with proceedings in the United States, France and the European Patent Office. He is admitted to the State Bar of Texas, the United States Supreme Court and the United States Court of Appeals for the Federal Circuit.
Mr. Bensen can be reached at ericbensen@me.com.
For more information, please visit www.ericbensen.com.
Table of contents
CHAPTER 1 General Considerations
CHAPTER 2 Principal Rights and Obligations
CHAPTER 3 Royalty
CHAPTER 4 Duration and Termination
CHAPTER 5 Foreign Licensing
CHAPTER 6 Government and University Licensing
CHAPTER 6A Biotechnology Licensing
CHAPTER 6B Clinical Trial Agreements
CHAPTER 7 Misuse and Antitrust Considerations
CHAPTER 8 Tax Planning for Patents, Know-How and Trademarks
CHAPTER 9 Tax Planning for Foreign Licensing
CHAPTER 10 Patent Settlement Agreements
CHAPTER 11 Joint Defense Agreements
CHAPTER 12 Patent Licenses in Bankruptcy
Appendix 1: Index to Forms
Appendix 2: Bibliography
Appendix 3: Justice Department Antitrust Guide Concerning Research Joint Ventures
Appendix 4: Selected Portions Of Export Administration Regulations
Appendix 5: Antitrust and Quantitative Restriction Provisions of Common Market Treaty (Articles 28, 29, 30, 81-86, 234, Treaty of Rome, 1957)
Appendix 5A: Technology Transfer Bloc Exemption
Appendix 5B: Joint Research Bloc Exemption
Appendix 6: Report of the Attorney General's National Committee to Study the Antitrust Law (1955)
Appendix 6a1: FTC Antitrust Actions Involving Pharmaceutical Services and Products
Appendix 6a2: Agreements Filed with the Federal Trade Commission under the Medicare Prescription Drug, Improvement, and Modernization Act of 2003 Summary of Agreements Filed in FY 2004 A Report by The Bureau of Competition
Appendix 7: 37 C.F.R. Part 401--Rights to Inventions made by Nonprofit Organizations and Small Business Firms Under Government Grants, Contracts, and Cooperative Agreements
Appendix 7A United States Code Title 35, Chapter 18, Patent Rights in Inventions Made with Federal Assistance
Appendix 8: Antitrust Guidelines for the Licensing of Intellectual Property
Appendix 8A: Relevant Provisions of the Internal Revenue Code
Appendix 8B: Tax Checklist
Appendix 9: Present Value Table
Appendix 9A: Relevant Provisions of the Internal Revenue Code
Appendix 10: Antitrust Enforcement Guidelines for International Operations Issued by the U.S. Department of Justice and the Federal Trade Commission
Appendix 11: Patents, Pools and Progress (or Why Patent Pools Can Often Be Illegal)
Appendix 12: Guidelines for the Regulation of Unfair Trade Practices with Respect to Licensing Agreements in Japan
Appendix 13: Guidelines for the Regulation of Joint Research and Development Agreements in Japan
Appendix 14: Acts Concerning Prohibition of Private Monopolization and Maintenance of Fair Trade (Japan)
Appendix 15: World Intellectual Property Organization ("WIPO") As of 2005
Appendix 16: World Trade Organization ("WTO") As of June 25, 2004
Appendix 17: The Federal Arbitration Act
Appendix 18: Alternative Dispute Resolution Act of 1998
Appendix 19: United Nations Foreign Arbitral Awards Convention Act (R.S. 1985, c. 16 (2nd Supp.)) Updated to August 31, 2004
Appendix 20: World Intellectual Property Organization Mediation Rules
Appendix 21: WIPO Expedited Arbitration Rules
Appendix 22: Treaty Establishing the European Community, As Amended by Subsequent Treaties, Rome 25 March 1957
Appendix 23: European Patent Organisation Member States
Appendix 24: Act Concerning Prohibition of Private Monopolization And Maintenance of Fair Trade (Act No. 54 of 14 April 1947) (Tentative Translation)
Appendix 25: Canada's Competition Act (R.S.C. 1970) C. C-23 (Renamed by 1986 C. 26 S. 19)
Appendix 26: Monopoly Regulation and Fair Trade Act
Appendix 27 Simple Form I : Joint Defense Agreement
Appendix 27 A Brief of Amicus Curiae Licensing Executives Society (U.S.A. & Canada), Inc. In Support of Neither Party
Appendix 27 B Brief of the Boston Patent Law Association as Amicus Curiae in Support of Genentech, Inc., on the Merits
Appendix 27 C Brief for the United States as Amicus Curiae Supporting Petitioner
Appendix 27 D Amicus Brief for Pharmaceutical Research and Manufactures of America Supporting Respondents
Appendix 27 E Brief Amicus Curiae of 3M, General Electric, Procter & Gamble, and E.I. Dupont De Nemours and Company in Support of Respondents
Appendix 27 F Brief Amicus Curiae of The Generic Pharmaceutical Association in Support of Petitioner
