I’m going to spend a fair amount of time in upcoming posts talking about various competition issues raised by patent licensing.
To kick off this series, here is a list of nine “no-nos” developed by Bruce Wilson, a former deputy assistant attorney general, in the 1970s. The law has changed between then and now, and I’ll cover some of the changes in upcoming posts. But the list remains a pretty good starting point — at least as to issues that may raise a yellow, if not a red flag. So here it is:
- Tying the purchase of unpatented materials as a condition of a patent license.
- Requiring the licensee to assign back subsequent patents.
- Restricting the right of the purchaser of the patented product in the resale of the product.
- Restricting the licensee’s ability to deal in products outside the scope of the patent.
- A licensor’s agreement not to grant further licenses.
- Mandatory package licenses.
- Royalty provisions not reasonably related to the licensee’s sales.
- Restrictions on a licensee’s use of a product made by a patented process.
- Minimum resale price provisions for the licensed products.
Are you committing one of these potential patent licensing no-nos? If so, you may need to think through the issues in more detail.