License Agreements and Litigation: Protecting Your Assets and Revenue Streams in the High-Tech and Life Science Industries

The licensing of patents and technology generates valuable revenue for companies and universities. A well-managed licensing program can maximize the value of intellectual property by creating royalty revenue or by leveraging assets to achieve freedom to operate or gain access to the developments of others in creating new products or services. However, pitfalls in the enforcement and defense of licensed patents can be particularly severe and are often overlooked or misunderstood when drafting license agreements.

During Foley’s San Diego Breakfast Briefing we discussed the following topics and key patent licensing considerations:

• The Scope of the License Grant: Who has the right to enforce or defend a licensed patent? What are the potential ramifications for the other party to the license agreement?
  
• Financial and Business Considerations of Litigating Licensed Patents: Is it best to have one party control the litigation on behalf of the patent holders? What are the financial implications of allocating litigation costs and damages?
  
• Pursuit of Patent Infringers: How can you avoid declaratory judgment actions brought by a potential infringer and avoid the doctrine of patent exhaustion?
  
• Licensing Large Patent Portfolios or a Broad Range of Technologies: What are the potential issues in balancing interests between the licensing parties?

Guest Speaker: Carey Fox, Senior VP and General Counsel of Santarus, Inc.

The discussion was led by Foley attorneys:

• Debra D. Nye, Partner, Intellectual Property Litigation, Biotechnology & Pharmaceutical, and Privacy, Security & Information Management Practices.
  
• David A. Charapp, Special Counsel, Private Equity & Venture Capital and Transactional & Securities Practices.
  
• Adrian R. Cyhan, Senior Counsel, Intellectual Property Department and Electronics and China Practices.