IP Essentials: Q&A Series

Q What is the difference between non-exclusive and exclusive licenses? A A non-exclusive license may not allow the patent owner to sub-license the patent to others, whereas, an exclusive license may require a single licensee to take on the obligation of policing the patent rights and, potentially, managing sub-licensees. But be careful! Although titled “exclusive license,” a license that fails to convey “all substantial rights” in a patent may require the participation of the licensor in any infringement disputes. All patent owners must agree to an exclusive license whereas only one patent owner needs to agree to grant a non-exclusive license. Q Which parties are liable to litigation under a license agreement? A License agreements should always clarify who has the right to sue for infringement of the rights being licensed. The right to sue for damages is typically granted under an exclusive license agreement. When the licensee is given the right to sue for infringement, it is also important to make sure that the licensor is obligated to assist in such lawsuits, which usually require the participation of inventors and original owners of the patent(s).

A patent license is an agreement between a first party who has rights in a patent (licensor) and another party (licensee), e.g. a person or a company that wants to use or benefit from the patent rights. A license provides some interest in the patent(s) from the licensor to the licensee. LICENSING AGREEMENTS



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