Patent Exhaustion and Licensing Strategies

Leveraging Recent Decisions for Structuring Patent Licenses and Resolving Litigation

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, December 12, 2013

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel on the patent exhaustion doctrine and its impact on licensing and selling patented products. The panel will offer their experiences and outline best practices for addressing patent exhaustion issues for licensing.

Description

When advising a patent holder in licensing or selling patented goods, counsel must consider the impact of the doctrine of patent exhaustion. Unless carefully addressed, the doctrine could limit enforcement against third parties and the value of the patent rights.

Recent suits involving licenses to mobile device makers keenly demonstrate the potential impact. One federal court ruling suggests patent owners cannot divide the claims of a patent. Licensors may need to revisit their licensing strategies, if they rely on licenses restricted to a specific claims.

The Supreme Court's 2013 ruling on patent exhaustion concluded the doctrine does not preclude liability for infringement if the licensee makes copies of a patented item. Many questions remain unanswered, leaving patent counsel with limited guidance.

Listen as our authoritative panel examines recent court developments related to patent exhaustion and their impact on licensing. The panel will offer strategies for dealing with patent exhaustion issues in the licensing context.

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Outline

  1. Recent developments in patent exhaustion
  2. Impact of recent decisions on patent licensing
  3. Best practices for addressing changes in patent licensing

Benefits

The panel will review these and other key questions:

  • Is a patent exhausted by the use of an unpatented component in a sold or licensed patented product?
  • What are the implications of the doctrine of patent exhaustion for patent licenses?
  • Under what circumstances could licensees be making royalty payments that aren't necessary?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Iona Kaiser
Iona Kaiser
Partner
McDermott Will & Emery

Ms. Kaiser focuses her practice on patent litigation and transactional patent matters, including prosecution,...  |  Read More

Kevin E. Noonan, Ph.D.
Kevin E. Noonan, Ph.D.
Partner
McDonnell Boehnen Hulbert & Berghoff

Mr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents...  |  Read More

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