Patent Licensing and Assignment with an Eye Toward Enforcement: Tips for University Patent Owners

As is well-known to any university licensing professional, the value of an institution’s intellectual property is directly tied to successful out-licensing campaigns. But even the most harmonious licensing relationships may go south, leaving litigation as the only viable option for enforcing patent rights. Indeed, nearly a quarter of all universities significantly involved in patenting and technology transfer efforts have filed patent infringement lawsuits in the last several years, either alone or in conjunction with one of their exclusive licensees. And, in some instances at least, litigating university technology has resulted in substantial rewards.

What might be under appreciated is the degree to which various aspects of litigation may—at the time a suit is filed—already be beyond a university’s control. For example, the question of whether or not to litigate at all may be in the hands of one of its licensees. Similarly, whether a university may, or must, be a party to a suit—in which its patents are asserted—is an issue that might already have been determined at the time the patent was first out-licensed. And whether or not a university even owns all rights in the patent might also have been determined years earlier.

Carefully structuring ownership and licensing agreements helps to ensure that there are no unwelcome surprises down the road. This article offers some guidance to universities on how to structure assignment and license agreements in a way that reflects their preferences regarding enforcement efforts. Some universities may wish to retain control over enforcement efforts. Others, in contrast, may desire that all enforcement efforts be handled by a licensee.

 Copyright 2013 by the Licensing Executives Society International. Licensing Executives Society International has granted permission for this article to be posted and downloaded.