Bensen on Patent Licensing Transactions

Comprehensive coverage of the law and practice of patent licensing

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ISBN: 9780820515311
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ISBN: 9781422480106
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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
Foreign Licensing
Government Licensing
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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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