The document discusses various types of patent licensing including exclusive, non-exclusive, and royalty-free licenses. It describes key components of a patent license agreement such as background, definitions, license grants, royalties, technical assistance, warranties, terms, termination, recording, and obligations of parties. The document also discusses licensing strategies, antitrust considerations, compulsory licensing, and tips for negotiating patent license agreements.

1. Patent Licensing Hasit Seth Pune, India hasits a-t gmail.com

2. Outline Patent License Kinds of Patent Licenses License Contents Licensing Strategies Anti-trust and Licenses Compulsory Licensees License Negotiations

3. Patent License A permission to exercise patent rights – a permission to make, use, offer for sale, sell or import a patented invention

4. Patent Rights Mechanism Assignment – Total transfer of rights. Assignor retains no interest or right after the assignment is complete. PTO keeps track of assignments, not necessary to register it, but recording has benefits License – partial transfer of right

5. Kinds of Patent License Exclusive patent license Non-exclusive patent license Royalty-free license RAND license (Reasonable and Non-discriminatory license)

6. Law Regulating Licenses Contract Act Anti-Trust Laws (US); MRTP/Competition commission

7. License Contents Background and Recitals – parties, intentions Definitions License Grants – exclusive/non-exclusive, limits Best efforts, Issue fees, Milestone Payments, and Royalties Technical Assistance and Know-How

8. License Contents Warranties and Representations – unencumbered title and right to grant license Term and Termination Most Favored Nations Clause – non-exclusive licensees, not good for licensors Third-Party Infringements Indemnification Arbitration and Bankruptcy Clauses

9. License Contents Transferability – on M&As, succession, etc. Right to sub-license Recording and Reporting Rights and Obligations of parties Scoping

10. Non-Exclusive License Grant Clause Subject to terms and conditions of this Agreement, LICENSOR hereby grants to LICENSEE a nonexclusive, nontransferable, (except under this agreement) license under LICENSOR’s Patent Rights to make, use and sell Licensed Products in the territory of India and its possessions.

11. Non-Exclusive License Non-refundable License Fees

12. Licensing Strategy Why license to competition? License terms too controlling? Opportunity Cost, Can we re-enter the market? In-licensing and out-licensing (Big Pharma, Semiconductors and Automotive) Patent Pools Non-exclusive licencees interse

13. Anti-Trust and Licensing Licensing can reduce anti-trust risk, particularly non-exclusive licensing

14. Royalties Damages are never less than reasonable royalties What is a reasonable royalty? Industry estimates of royalties – data very hard to trust and very less availability

15. Compulsory Licenses Not in US! Indian Law

16. License Negotiations Negotiation strategies Focus on interests, not personalities Start with easy to agree issues first, then the tough ones Negotiation styles