
Contents
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Patent Conflict Licences Patent Conflict Licences
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Technology Transfer Licences Technology Transfer Licences
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Potential Licensees Potential Licensees
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Potential Licensors Potential Licensors
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The In-Licensing Process The In-Licensing Process
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Confidential Disclosure Agreements Confidential Disclosure Agreements
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Due Diligence Due Diligence
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Responsibility for the Licensor’s Patents Responsibility for the Licensor’s Patents
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Enforcement of the Licensed Patent Rights Enforcement of the Licensed Patent Rights
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Out-Licensing: Patent Strategy for the Licensor Out-Licensing: Patent Strategy for the Licensor
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Large Companies Large Companies
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Small Companies Small Companies
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Universities and Academic Institutions Universities and Academic Institutions
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The Individual Inventor The Individual Inventor
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Option Agreements Option Agreements
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Research Collaboration Agreements Research Collaboration Agreements
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Cross-Licensing Cross-Licensing
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Co-Ownership Co-Ownership
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Single-Party Ownership Single-Party Ownership
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Contract Research Agreements Contract Research Agreements
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Funding Agreements Funding Agreements
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Compound Purchase Agreements Compound Purchase Agreements
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Licence Contracts Licence Contracts
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Drafting a Licence Agreement Drafting a Licence Agreement
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23 Patent Aspects of Licensing
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Published:December 2016
Cite
Abstract
This chapter considers the licensing of patents. When a product that a manufacturer wishes to sell or a project that it wishes to develop appears to be covered by someone else’s patent rights, it may have to approach the patentee for a licence. The licence is a non-exclusive licence under the specified patent rights, or preferably a covenant not to sue in respect of the project in question under any patent rights held by the other party. Another type of licence is one that is entered into to take over a project or a product that originated elsewhere, which may be broadly described as transfer of technology, and normally involves rights to confidential know-how, as well as under patents, trademarks and other intellectual property, such rights often being exclusive The remainder of the chapter discusses in-licensing and out-licensing, research collaboration agreements, contract research agreements, funding agreements, and compound purchase agreements.
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