Eric E. Bensen

Bensen of Patent Licensing Transactions

Eric E. Bensen

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Bensen on Patent Licensing Transactions, a 3-volume treatise, provides the most comprehensive coverage of the law and practice of patent licensing available today. This work begins with the definitional aspects of a patent license agreement and the legal principles that necessarily guide practitioners in drafting an agreement that will protect a client’s interests and avoid unnecessary disputes:

 

• Invention Ownership, equitable title and patent ownership

• Patent assignment and assignment recordation

• Express & implied licenses

• Exclusive, nonexclusive, FRAND, single user and cross licenses

• Federal patent law’s impact on patent licensing agreements

• Exhaustion

• No challenge clauses

• Patent misuse and antitrust considerations

• Patent license agreements in bankruptcy proceedings

• Jurisdiction and standing in patent license disputes

• Core patent law principles

 

This work then provides extensive analysis of the significance of each provision of a patent license agreement, typically with sample language and identification of potential pitfalls. In particular, it provides in depth coverage of provisions respecting:

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• The scope of the license grant

• Royalty, royalty structure and most favored licensee status

• Duties concerning third-party infringement

• Improvements and grant backs

• Assignability, change of control, sublicensing and have made rights

• Confidentiality concerns

• Notice and opportunity to cure

• Term and Termination

• Indemnification

• Representations & warranties

• Governing law, jurisdiction and venue

 

Also included are numerous form agreements covering a wide range of scenarios. 

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Because license agreements often cover multiple forms of intellectual property, Patent Licensing Transactions also includes coverage of trade secret, know-how, copyright and trademark licensing.