Licensing Standard Essential Patents and Protecting IP Rights
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance to patent counsel for licensing standards-related patents. The panel will offer best practices for overcoming the challenges of standard essential patents (SEP) licensing and SSO disclosure requirements and protecting patent rights.
Outline
- Impact of Unwired Planet on licensing and enforcing SEPs
- UK High Court decision vs. US Law
- Impact on choice of where and how SEP patents are enforced and licensed
- Reasonable royalty and license scope under UK/EU law v. US law
- How to deal with SEPs on worldwide basis
- Injunctions and SEPs
- Injunctions against SEP owners who do not negotiate in good faith
- Injunctions against SEP users who do not negotiate in good faith
- What is good faith negotiation
- What are required/reasonable/impermissible terms
- Disclosure and licensing requirements
- Understanding individual policies of particular SSO
- Evaluating if/when to meet disclosure and licensing requirements
- Remedies
- Antitrust/Unfair competition liability
Benefits
The panel will review these and other key issues:
- What constraints are placed on a licensor that participates in an SSO?
- What factors should patent holders consider when determining if and when to meet an SSO’s disclosure requirements?
- Is an SEP holder required to license its IP on a FRAND basis, and if so, how are its enforcement rights limited?
Faculty
DJ Healey
Senior Principal
Fish & Richardson
Ms. Healey focuses on patent litigation and related antitrust and tort claims. She is also actively involved in... | Read More
Ms. Healey focuses on patent litigation and related antitrust and tort claims. She is also actively involved in planning and executing multi-jurisdictional strategies involving courts in the U.S. and Europe, and administrative agencies. She also is involved in negotiating patent licenses in the semiconductor and software industries, she represents clients in dealing with obligations and licensing in standard-setting organizations, she has been general counsel to a standard setting group, and she has litigated the substantive and anticompetitive effects of licenses.
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Jayme Partridge
Principal
Fish & Richardson
Ms. Partridge’s national practice focuses on complex intellectual property litigation, including patent... | Read More
Ms. Partridge’s national practice focuses on complex intellectual property litigation, including patent infringement and trade secret misappropriation. With an engineering background and outstanding advocacy skills, Ms. Partridge has years of stand-up experience before both judges and juries trying cases for global companies in high profile competitor-to-competitor disputes. She has experience in a wide range of technologies, including computer hardware and software, high speed internet services, fiber optics, and chemical processes.
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