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Patent-Licensing Best Practices
Immense changes in patent licensing strategies occurred during the past decade, as investors, boards and shareholders sought to derive increasing values from their patent portfolios. Supreme Court decisions such as Medimmune v. Genentech, 549 US 118, 2007 and the America Invents Act (AIA) Inter Partes Reviews (IPR) were the driving forces behind these changes. Advances in patent analytics and easy access to data now enable the creation of defensible patent valuations. And, emerging patent pooling licensing models offer licensing executives more efficient, transparent, and predictable royalty streams vis-'-vis traditional licensing. Several best practices that can enhance success as well as implementing these models are discussed.
Prepare to Sue
The 2007 Medimmune decision has arguably had the most impact on licensing of all Supreme Court decisions in the last 10 years. Prior to 2007, licensors approached licensees without much worry about a declaratory judgment (DJ) action. Licensors sent a letter stating that licenses to patents were available and “business discussions” should be initiated. However, after Medimmune , even such innocuous communication was held to confer standing to file a DJ action.
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