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Assuring All Substantial Rights In Exclusive Patent Licenses, Jeff Newton

Jeff Newton

Despite their best of intentions, parties draft license agreements which purport to have the patentee grant sufficient rights for a licensee to assert a patent against third parties, but fail to grant all substantial rights to sue. The surprising number of cases decided against the intended transfer of all substantial rights to empower a licensee to sue on a patentee is a testimony to the complexity of the jurisprudence in this area. This article clarifies the jurisprudence as to all substantial rights in patent licenses by reviewing the primary categories in a licensing transactions, analyzing thirteen key cases on point …