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Terminating Patent Licenses: Key Considerations and Best Practices

Timing, License Terms, Partial Termination, Notice, Wrongful Termination Consequences, Post-Termination Considerations

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Thursday, April 13, 2023

Recorded event now available

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This CLE webinar will guide patent counsel on the termination of a patent license. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.


Termination of a patent license may seem straightforward if the license agreement clearly laid out the circumstances under which termination is permitted. However, things are not always as they seem at first blush. For example, what if the license is assigned to the licensor's competitor?

Also, what is the effect on the license if the licensee challenges the licensed patent's validity? And what role do forum selection clauses and “no challenge” clauses play in terminating such licenses? Furthermore, what are the options for the licensee if a licensor declares bankruptcy? Similarly, what are the options for the licensor if the licensee declares bankruptcy?

There are post-termination considerations that should be kept in mind. Some provisions may survive the agreement's termination. Many licenses prohibit the licensee from using the licensed IP after termination, giving the licensor a breach of contract claim in addition to an infringement claim. Further, if the license agreement involves the disclosure of know-how or other confidential information, termination of the agreement may require the return or destruction of the confidential information. The parties should also consider the effect of termination on the licensed products the licensee holds as well as sublicenses. In addition, the license agreement may require obligations with respect to patent prosecution and/or litigation and the effect of termination must be addressed.

Listen as our authoritative panel of patent attorneys examines terminating licenses of patent rights. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.



  1. Considerations before terminating
  2. Termination under the license terms
    1. Mutual termination or amendment
    2. Breach
    3. Invalidity challenge
    4. Bankruptcy
    5. Change of Control
  3. Expiration and renewal issues
  4. Notice
  5. Post-termination considerations
  6. Best practices


The panel will discuss these and other important issues:

  • What are the key considerations for terminating a patent license?
  • What considerations should licensors and licensees keep in mind regarding post-termination of a patent license?
  • What are best practices for navigating the practical and legal issues for licensors and licensees when terminating a patent license?


Augustyn, John
John M. Augustyn

Leydig Voit & Mayer

John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client...  |  Read More

Krieger, Justin
Justin Krieger

Kilpatrick Townsend & Stockton

Mr. Krieger is a first chair inter partes review and post-grant review litigator with a tremendously successful track...  |  Read More

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