Section: Additional module: Licensing II and enforcement | IP management: value extraction and commercialisation | e-learning centre
Main course pageAdditional module: Licensing II and enforcement
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Additional module: Licensing II and enforcement
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Main purpose of this module:
Continuing from the Licensing I module, the discussion moves on to the effect of externalities (anti-competition law) and counterparty characteristics to be considered (covenants not to sue) in drawing up licences. A review is then made of enforcing IP and agreements starting with a brief statistical overview followed by the distinction between civil and criminal actions, and how to keep infringing products from physically entering your market from abroad. The possible litigation proceedings and proof mechanisms available should this be unsuccessful are then discussed. The course also considers some common approaches for defending against litigation proceedings, leading into a discussion of how cases are resolved.
Topics to be covered:
i. Anti-competitive constraints for licence agreements
ii. Convenant not to sue agreements
iii. Statistics, civil vs. criminal, border seizure
iv. Infringement proceedings
v. Proving infringement
vi. Defense mechanisms
vii. How patent cases are resolvedRead more about this module:
Generally licences are conditional. The licensee may not challenge the validity of the patents it has licensed. Since patent law technically provides a patent holder simply with the right to sue someone else who is infringing their patent, a patent licence can be considered a type of covenant not to sue.
Infringement may be regarded in various degrees of seriousness, e.g. wilful infringement (treble damages in the US) or even as a criminal offence (e.g. in Japan).
Alternatively, judicial actions may focus on keeping the alleged infringing product outside the jurisdictional borders – ITC in the US, EU equivalent.
Some basic aspects of infringement proceedings in various jurisdictions are reviewed. Furthermore, some well-known defence mechanisms, efficient strategies and means of resolving disputes are summarised.
