Transferring Patent Ownership: Preexisting Licenses, Rights That Run With Patents, Encumbrances, Enforcement

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


Conducted on Tuesday, April 6, 2021

Recorded event now available

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Program Materials

This CLE webinar 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.

Description

Transferring ownership of a patent is not always a simple matter. Existing encumbrances on the patent can impact the rights and obligations of both the assignor and the assignee. In particular, preexisting licenses can present difficult questions for both the former and new owner of the patents. For example, will the license transfer with transfer of ownership of the patent? If not, will any of the rights and obligations under that license run with the patent regardless?

In addition, it is often the case that the prior owner will want to retain certain rights under the patent even after assignment. The former owner may want the right to continue practicing the patent or grant licenses to affiliates or customers. The former owner may also want to retain some say in future litigation or assignment of the patent. The transfer must consider, however, the impact of those restrictions on the new owner's ability to enforce the patent. The Federal Circuit recently addressed an assignee's ability to enforce patents without joinder of the former owner where certain restrictions were placed on the new owner. The court concluded it was necessary to join the original patent owner for the new owner to have standing to sue. Lone Star Silicon Innovations L.L.C. v. United Microelectronics Corp. (Fed. Cir. 2019). Therefore, when transferring patent ownership, patent counsel must understand these issues to ensure the new owner has the ability to enforce the patent and the restrictions on the patent rights are clear.

Listen as our authoritative panel of patent attorneys examines transfers of patent ownership. The panel will address the impact of existing encumbrances such as preexisting licenses on patent transfers as well as the rights and encumbrances that run with the patent generally. The panel will also address how the terms of the assignment agreement may impact the new owner’s right to enforce the patent. The panel will discuss how the courts are treating these issues and offer guidance for transferring patent ownership.

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Outline

  1. Transfer of patent ownership generally
  2. Impact of preexisting rights and encumbrances
    1. Rights that run with the patent
    2. Encumbrances that run with the patent
  3. Impact of preexisting licenses
    1. Effect of assignment of the license agreement to new owner
    2. Effect of retention of the license agreement by prior owner
  4. The assignment agreement and enforcement of the patent
    1. Effect of preexisting licenses
  5. Lone Star Silicon Innovations L.L.C. v. United Microelectronics Corp.
  6. Best practices for transferring patent ownership

Benefits

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?

Faculty

Kacedon, D. Brian
D. Brian Kacedon

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across...  |  Read More

Kokolus, Violetta
Violetta A. Kokolus

Partner
Ropes & Gray

Ms. Kokolus advises on complex technology and intellectual property transactions, as well as on critical IP and...  |  Read More

Robinson, Joseph
Joseph R. (Joe) Robinson

Partner
Troutman Pepper

Mr. Robinson has more than 30 years of experience in all aspects of intellectual property law. He focuses his practice...  |  Read More

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