CHAPTER 1 General Considerations
§ 1.01 Definitional Aspects
§ 1.02 Express Licenses
§ 1.03 Implied Licenses
§ 1.04 Covenants Not to Sue for Infringement
§ 1.05 Licenses and the Patent Office
§ 1.06 Licensing of Know-How
§ 1.07 Compulsory Licensing
§ 1.08 Licensing Other Intellectual Property
§ 1.09 Uniform Commercial Code
§ 1.10 Checklist for Drafting a Patent License
§ 1.11 Research Checklist
§ 1.12 Due Diligence
CHAPTER 2 Principal Rights and Obligations
§ 2.01 Limitations on the License Grant
§ 2.02 Acknowledgment of Validity (Licensee Estoppel)
§ 2.03 Warranties by Licensor
§ 2.04 Assignability of License
§ 2.05 Sublicense
§ 2.06 Enforcement of Licensed Patent
§ 2.07 Shop Right
§ 2.08 Invalidity of Licensed Patent
§ 2.09 Exploitation of Licensed Invention
§ 2.10 Patent Marking
§ 2.11 Improvement Patents
§ 2.12 Indemnity and Defense of Infringement Suits
§ 2.13 Cross Licenses
§ 2.14 "Most Favored Licensee" Provisions
§ 2.15 Eviction from License
§ 2.16 Unlicensed Competition
§ 2.17 Governing Law
§ 2.17A Jurisdiction
§ 2.18 Choice of Forum
§ 2.19 Patent Insurance
§ 2.20 The "On-Sale" Bar Under 35 U.S.C. § 102(b) Does Not Generally Apply to Licenses and Assignments
CHAPTER 3 Royalty
§ 3.01 General Considerations
§ 3.02 General Statement of Royalty Obligation
§ 3.03 Royalty Base
§ 3.04 Royalty Rate
§ 3.05 Monetary Consideration
§ 3.06 Minimum and Maximum Payments
§ 3.07 Royalties Under Expired Patents
§ 3.08 Discriminatory and "Exorbitant" Royalties
§ 3.09 Royalties Under Package Licenses
§ 3.10 Reporting and Accounting
§ 3.11 Royalty Payments Involving Pending Applications
§ 3.12 Minimum Royalty Requirements
CHAPTER 4 Duration and Termination
§ 4.01 Duration of Agreement
§ 4.02 Termination of Agreement
§ 4.03 Severability and Waiver
§ 4.04 Modification
§ 4.05 Impossibility of Performance
§ 4.06 Arbitration
CHAPTER 5 Foreign Licensing
§ 5.01 Introduction
§ 5.02 Licensing of Know-How and Patents Abroad
§ 5.03 Arbitration and Related Proceedings
§ 5.04 United States Antitrust Problems in Foreign Licensing
§ 5.05 Customs Considerations
§ 5.06 Additional Considerations
CHAPTER 6 Government and University Licensing
§ 6.01 General Government Patent Provisions
§ 6.02 Patent Rights Under Research and Development Contracts
§ 6.03 Decisions of the Comptroller General
§ 6.04 Federal Laboratories
§ 6.05 University Licensing
§ 6.06 Negotiating with Universities
§ 6.07 Consulting Agreements Between Industry and University Employees
§ 6.08 Cooperative Research and Development Agreements ("CRADA")
CHAPTER 6A Biotechnology Licensing
§ 6A.01 Introduction
§ 6A.02 Objectives of a Biotechnology License Agreement
§ 6A.03 Key Sections in a Biotechnology License Agreement
§ 6A.04 Reach-Through Licensing
§ 6A.05 Due Diligence As It Applies to a Biotechnology License Agreement
§ 6A.06 Special Problems in Enforcing Research Tool Patents
CHAPTER 6B Clinical Trial Agreements
§ 6B.01 Introduction
§ 6B.02 The Opening Part of the CTA
§ 6B.03 Confidentiality
§ 6B.04 Generic Drug Enforcement Act
§ 6B.05 Intellectual Property Developed During Clinical Research
§ 6B.06 Use of Name
§ 6B.07 Indemnification and Insurance
§ 6B.08 Publication
§ 6B.09 Records and Data
§ 6B.10 Terms and Termination
CHAPTER 7 Misuse and Antitrust Considerations
§ 7.01 Antitrust Aspects of Patent or License Purchases
§ 7.02 Domestic Antitrust Law
§ 7.03 Grant-Back Clauses
§ 7.04 Tying Arrangements
§ 7.05 Expansion of the Misuse Doctrine
§ 7.06 Post-Expiration Royalties
§ 7.07 "Excessive" Royalties as Patent Misuse
§ 7.08 Package Licenses
§ 7.09 Patent or Research Pools
§ 7.10 Fraudulent Procurement
CHAPTER 8 Tax Planning for Patents, Know-How and Trademarks
§ 8.01 Introduction and Definitions
§ 8.02 Research and Experimental Expenses--I.R.C. Section 174
§ 8.03 Research Credit--I.R.C. Section 41
§ 8.04 Development of Trademarks and Trade Names--Former I.R.C. Section 177
§ 8.05 Transfers of Patents and Know-How
§ 8.06 Transfers of Trademarks and Trade Names--I.R.C. Section 1253
§ 8.07 Tax Aspects of Holding Patents, Know-How, and Trademarks
CHAPTER 9 Tax Planning for Foreign Licensing
§ 9.01 Introduction--The "Source of Income" Concept
§ 9.02 Reallocation of Income--I.R.C. Section 482
§ 9.03 Foreign Taxes on Licensing
§ 9.04 The Foreign Tax Credit
§ 9.05 Taxpayers Doing Business in United States Possessions
§ 9.06 Transfers to Controlled Foreign Business Entities
CHAPTER 10 Patent Settlement Agreements
§ 10.01 Introduction
§ 10.02 General Considerations
§ 10.03 Specific Provisions of Patent Settlement Agreements
§ 10.04 Court Decisions Affecting the Rights of Parties Involved in Patent Settlement Agreements
§ 10.05 Patent Settlement Agreements Involving Prescription Drugs
Appendix 10A Brief for the United States Amicus Curiae
Appendix 10B Supplemental Brief for the Petitioner
CHAPTER 11 Joint Defense Agreements
§ 11.01 Introduction
§ 11.02 General Considerations
§ 11.03 The "Common Interest" Privilege
§ 11.04 Specific Considerations Involving Joint Defense Agreements
§ 11.05 Joint Defense Agreement Check List
Appendix 1: Index to Forms
Appendix 2: Bibliography
Appendix 3: Justice Department Antitrust Guide Concerning Research Joint Ventures
Appendix 4: Selected Portions Of Export Administration Regulations
Appendix 5: Antitrust and Quantitative Restriction Provisions of Common Market Treaty (Articles 28, 29, 30, 81-86, 234, Treaty of Rome, 1957)
Appendix 5A: Technology Transfer Bloc Exemption
Appendix 5B: Joint Research Bloc Exemption
Appendix 6: Report of the Attorney General's National Committee to Study the Antitrust Law (1955)
Appendix 6a1: FTC Antitrust Actions Involving Pharmaceutical Services and Products
Appendix 6a2: Agreements Filed with the Federal Trade Commission under the Medicare Prescription Drug, Improvement, and Modernization Act of 2003 Summary of Agreements Filed in FY 2004 A Report by The Bureau of Competition
Appendix 7: 37 C.F.R. Part 401--Rights to Inventions made by Nonprofit Organizations and Small Business Firms Under Government Grants, Contracts, and Cooperative Agreements
Appendix 7A United States Code Title 35, Chapter 18, Patent Rights in Inventions Made with Federal Assistance
Appendix 8: Antitrust Guidelines for the Licensing of Intellectual Property
Appendix 8A: Relevant Provisions of the Internal Revenue Code
Appendix 8B: Tax Checklist
Appendix 9: Present Value Table
Appendix 9A: Relevant Provisions of the Internal Revenue Code
Appendix 10: Antitrust Enforcement Guidelines for International Operations Issued by the U.S. Department of Justice and the Federal Trade Commission
Appendix 11: Patents, Pools and Progress (or Why Patent Pools Can Often Be Illegal)
Appendix 12: Guidelines for the Regulation of Unfair Trade Practices with Respect to Licensing Agreements in Japan
Appendix 13: Guidelines for the Regulation of Joint Research and Development Agreements in Japan
Appendix 14: Acts Concerning Prohibition of Private Monopolization and Maintenance of Fair Trade (Japan)
Appendix 15: World Intellectual Property Organization ("WIPO") As of 2005
Appendix 16: World Trade Organization ("WTO") As of June 25, 2004
Appendix 17: The Federal Arbitration Act
Appendix 18: Alternative Dispute Resolution Act of 1998
Appendix 19: United Nations Foreign Arbitral Awards Convention Act (R.S. 1985, c. 16 (2nd Supp.)) Updated to August 31, 2004
Appendix 20: World Intellectual Property Organization Mediation Rules
Appendix 21: WIPO Expedited Arbitration Rules
Appendix 22: Treaty Establishing the European Community, As Amended by Subsequent Treaties, Rome 25 March 1957
Appendix 23: European Patent Organisation Member States
Appendix 24: Act Concerning Prohibition of Private Monopolization And Maintenance of Fair Trade (Act No. 54 of 14 April 1947) (Tentative Translation)
Appendix 25: Canada's Competition Act (R.S.C. 1970) C. C-23 (Renamed by 1986 C. 26 S. 19)
Appendix 26: Monopoly Regulation and Fair Trade Act
Appendix 27 Simple Form I : Joint Defense Agreement
Appendix 27 A Brief of Amicus Curiae Licensing Executives Society (U.S.A. & Canada), Inc. In Support of Neither Party
Appendix 27 B Brief of the Boston Patent Law Association as Amicus Curiae in Support of Genentech, Inc., on the Merits
Appendix 27 C Brief for the United States as Amicus Curiae Supporting Petitioner
Appendix 27 D Amicus Brief for Pharmaceutical Research and Manufactures of America Supporting Respondents
Appendix 27 E Brief Amicus Curiae of 3M, General Electric, Procter & Gamble, and E.I. Dupont De Nemours and Company in Support of Respondents
Appendix 27 F Brief Amicus Curiae of The Generic Pharmaceutical Association in Support of Petitioner
