Services // Patent Licensing

Companies grant patent licenses to others in exchange for licensing fees and royalty payments (assertive licensing). They also pay for patent licenses allowing them to practice inventions claimed in patents of others (defensive licensing). PLP represents clients situated on either side of negotiations establishing the terms and conditions of patent licenses.

Assertive Licensing

Patent portfolios often contain patents that are valuable sources of licensing revenue. However, patent holders typically lack the time, resources, legal expertise, and business know-how necessary to license the patents to others.

To bridge this gap, PLP assists its clients with developing and implementing assertive patent licensing plans. The process of developing and implementing an assertive patent licensing plan is unique to each client but generally involves:

  • evaluating the client's patent portfolio to assess its strengths and weaknesses
  • mining patents from the patent portfolio determined to have particularly high value
  • identifying and developing a list and ranking of target licensees
  • comparing possibly infringing products to claims of high-value patents
  • developing licensing terms and presentation materials for target licensees
  • presenting license opportunities to target licensees
  • negotiating terms of final patent license agreements with interested target licensees

Defensive Licensing

Most companies operate with an honest effort to avoid infringing the patents of others. Nevertheless, there are times, unfortunately, when a company must respond to charges of patent infringement. For example, the company may have been operating unaware that it was infringing a patent now being asserted against it, or the company may be being pursued by an unrelenting and aggressive patent holder perhaps having nothing more than a dubious infringement position.

When a PLP client is charged or threatened with patent infringement, we advise and provide guidance on how to respond to the charge or threat. We also investigate the legitimacy of the infringement claim, including searching for prior art that will put the validity of the asserted patent into question and looking for limitations in the claims of the asserted patent that are absent in the client's accused product to demonstrate non-infringement. When appropriate, we also:

  • file a request for reexamination of the asserted patent in the U.S. Patent & Trademark Office (see our Reexamination practice), with the goal of invalidating the patent or at least reducing the scope of the patent's claims
  • identify patents in the client's patent portfolio or seek to acquire third party patents that may form the basis of a cross-license agreement
  • if there is no reasonable alternative but to license the asserted patent, negotiate the best license terms possible for the client

In the unfortunate event that the charge of patent infringement escalates into a full-blown patent infringement lawsuit, we work alongside litigation counsel to defend the client against the charge of infringement and resolve the dispute as quickly as possible.

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