The Changing Landscape of Patent Licensing after the Leahy-Smith America Invents Act

William C. Coppola, Eleanor M. Yost, and Krupa K. Parikh

©2016. Published in Landslide, Vol. 8, No. 3, January/February 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In the past few years, significant changes in the patent law have affected how practitioners and parties negotiate patent license agreements. The Leahy-Smith America Invents Act (AIA), for example, introduced various new proceedings at the United States Patent and Trademark Office (USPTO) that raise new considerations for licensors and licensees. These proceedings include inter partes review (IPR), post-grant review (PGR), covered business method review (CBM), derivation proceedings, and supplemental examination. In each of these proceedings, the role of the patent owner is critical. Exclusive licensees, though, are also invested in the results of these proceedings with respect to the patents and applications they have in-licensed, so they need new tactics to protect their interests. The following article details practice tips for licensors and licensees to consider in this changing landscape.

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