Transferring Patent Ownership: Preexisting Licenses, Rights That Run With Patents, Encumbrances, Enforcement
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide counsel on transferring patent ownership. The panel will address the impact of encumbrances such as preexisting licenses on patent transfers as well as how the retention of certain rights by the former owner can affect the new patent owners' rights. The panel will also discuss how these issues impact enforcement of the patent. The panel will discuss how the courts are treating these issues and offer guidance for transferring patent ownership.
- Transfer of patent ownership generally
- Impact of preexisting rights and encumbrances
- Rights that run with the patent
- Encumbrances that run with the patent
- Impact of preexisting licenses
- Effect of assignment of the license agreement to new owner
- Effect of retention of the license agreement by prior owner
- The assignment agreement and enforcement of the patent
- Effect of preexisting licenses
- Lone Star Silicon Innovations L.L.C. v. United Microelectronics Corp.
- Best practices for transferring patent ownership
The panel will review these and other key issues:
- How do preexisting encumbrances such as prior licenses impact the transfer of a patent?
- How can preexisting licenses or restrictions in an assignment agreement affect a new owner's ability to enforce the patent?
- What hurdles must counsel watch for when transferring patent ownership?
D. Brian Kacedon
Finnegan Henderson Farabow Garrett & Dunner
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across... | Read More
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.Close
Violetta A. Kokolus
Ropes & Gray
Ms. Kokolus advises on complex technology and intellectual property transactions, as well as on critical IP and... | Read More
Ms. Kokolus advises on complex technology and intellectual property transactions, as well as on critical IP and privacy/cybersecurity aspects of M&A transactions across various industries. She has been involved in countless M&A transactions in her career, leading negotiations and resolving complex IP issues that arise during diligence. Additionally, Ms. Kokolus has extensive experience with strategic IP licensing and commercial transactions, such as IP acquisitions, licensing matters, joint ventures, and research and development collaborations. She has also guided clients on legal issues related to data strategies and monetization, along with the integration of artificial intelligence.Close
Joseph R. (Joe) Robinson
Mr. Robinson has more than 30 years of experience in all aspects of intellectual property law. He focuses his practice... | Read More
Mr. Robinson has more than 30 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology and medical device fields. His practice encompasses litigation, including Hatch-Waxman and biosimilar litigation; inter partes proceedings; licensing; counseling; due diligence; patent and trademark prosecution and strategy; and mergers and acquisitions. Mr. Robinson represents clients in a variety of patent and trademark disputes in jurisdictions throughout the U.S., and as appellate counsel before the Federal Circuit. He is particularly known for his experience handling complex Hatch-Waxman litigation, biosimilar matters and Bayh–Dole Act issues. Mr. Robinson is an advisor on life sciences to the White House Office of American Innovation and is a reviewer for the peer-reviewed Nature Biotechnology.Close