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Bensen on Patent Licensing Transactions

Author(s): Eric E. Bensen (Author), Harold Einhorn (Author)

Comprehensive coverage of the law and practice of patent licensing

Publisher: Matthew Bender Elite Products

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Bensen on Patent Licensing Transactions, a 3-volume treatise, provides the most comprehensive coverage of the law and practice of patent licensing available today. Written by a recognized expert with experience in all aspects of intellectual property licensing, this work begins with the definitional aspects of a patent license agreement and the legal principles that necessarily guide practitioners in drafting an agreement that will protect a client’s interests and avoid unnecessary disputes:

Invention Ownership, equitable title and patent ownership
Patent assignment and assignment recordation
Express & implied licenses
Exclusive, nonexclusive, FRAND, single user and cross licenses
Federal patent law’s impact on patent licensing agreements
Exhaustion
No challenge clauses
Patent misuse and antitrust considerations
Patent license agreements in bankruptcy proceedings
Jurisdiction and standing in patent license disputes
Core patent law principles

This work then provides extensive analysis of the significance of each provision of a patent license agreement, typically with sample language and identification of potential pitfalls. In particular, it provides in depth coverage of provisions respecting:

The scope of the license grant
Royalty, royalty structure and most favored licensee status
Duties concerning third-party infringement
Improvements and grant backs
Assignability, change of control, sublicensing and have made rights
Confidentiality concerns
Notice and opportunity to cure
Term and Termination
Indemnification
Representations & warranties
Governing law, jurisdiction and venue

Also included are numerous form agreements covering a wide range of scenarios.

Because license agreements often cover multiple forms of intellectual property, Patent Licensing Transactions also includes coverage of trade secret, know-how, copyright and trademark licensing.

eBooks, CDs, downloadable content, and software purchases are noncancelable, nonrefundable and nonreturnable. Click here for more information about LexisNexis eBooks. The eBook versions of this title may feature links to Lexis+® for further legal research options. A valid subscription to Lexis+® is required to access this content.

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

Featured Authors

Harold Einhorn Eric E. Bensen

Eric E. Bensen

Eric Bensen is an internationally recognized intellectual property law author, consultant and expert witness. In addition to Intellectual Property in Bankruptcy: A Collier Monograph his works as author or coauthor include six leading intellectual property treatises from LexisNexis/Matthew Bender:
Milgrim on Trade Secrets (5 vols.)
Patent Law Perspectives (9 vols.)
Milgrim on Licensing (4 vols.)
Bensen on Patent Licensing Transactions (3 vols.)
U.S. Patent Opinions and Evaluations
New York Intellectual Property Law
Additionally, he is the author of Collier Bankruptcy Practice Guide, ch. 26 Intellectual Property in Bankruptcy (Matthew Bender).

Mr. Bensen is 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 practitioners and courts. It is comprised of more than 8200 intuitively organized patent law quotations from more than 200 Supreme Court and 1700 Federal Circuit decisions each followed by a short parenthetical briefly identifying, where helpful, 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
Mr. Bensen is also the United States Reporter for LexisNexis Australia’s Intellectual Property Reports, the author of Collier Bankruptcy Practice Guide, ch. 26,“Intellectual Property in Bankruptcy” (Matthew Bender), and the author of copyright, bankruptcy and trade secret chapters in Intellectual Property Counseling & Litigation (Matthew Bender).

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 on matters of intellectual property law and practice in the United States, Germany and the United Kingdom.

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. He 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.

View All Books by Eric E. Bensen (11)

Bensen on Patent Licensing Transactions

Featured Authors

Harold Einhorn

Eric E. Bensen

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