DRAFTING PATENT LICENSE AGREEMENTS

NEW EDITION!
DRAFTING PATENT
LICENSE AGREEMENTS,
SEVENTH EDITION
By Brian G. Brunsvold, D. Patrick O’Reilley, and D. Brian Kacedon
> > > > > > > > > > >
ALSO INSIDE:
• Constructing and
Deconstructing Patents
• Drafting Patents for Litigation
and Licensing, with 2012
Cumulative Supplement
• Electronic and Software
Patents, Third Edition, with
2012 Supplement
• Patent Prosecution: Law,
Practice, and Procedure,
Seventh Edition, with 2012
Supplement
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2012/Approx. 675 pp.
Hardcover with CD-ROM
ISBN 978-1-61746-121-7
Order #2121/$255.00
NEW EDITION!
DRAFTING PATENT LICENSE
AGREEMENTS, SEVENTH
EDITION
By Brian G. Brunsvold, D. Patrick O’Reilley,
and D. Brian Kacedon
UNDERSTAND THE LEGAL ISSUES that affect
patent license agreements
:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
Drafting Patent License Agreements, Seventh Edition
tracks and discusses—clause by clause—all the critical
components of a licensing agreement. This handbook illustrates the growing
importance of intellectual property transactions to business and the resulting
attention such transactions receive in legislative, regulatory, and judicial areas.
The new Seventh Edition has been completely revised and expanded to reflect
legal developments since the Sixth Edition, offering a new chapter discussing
bankruptcy as it applies to licensing, a new chapter on enforcement of licensed
patents explaining the complex issues of standing to sue, an extensive discussion of
indemnity provisions, and an examination of the new circuit disagreement over the
antitrust consequences of reverse payment settlements.
The Seventh Edition presents a current overview of all legal issues surrounding
licensing and of every typical provision used in patent and know‐how licenses.
Example provisions are provided with reference to applicable legal and practical
consequences. The reference discusses major new cases, including:
> > WiAV Solutions LLC v. Motorola, Inc., concluding that an exclusive licensee has
standing to sue for infringement despite existence of others with right to grant
sub-licenses
> > Stanford v. Roche and Preston v. Marathon Oil Co., finding that a contract
presently assigning future inventions takes precedence over a contract
promising to assign in the future
> > Stanford v. Roche, holding that the Bayh-Dole Act does not supersede
requirement to get assignment of invention from employee
> > Tessera, Inc. v. International Trade Commission, ruling that exhaustion of
patent occurs on sale by licensee, not on payment of royalties by licensee
> > Sunbeam Products, Inc. v. Chicago American Manufacturing LLC, determining
the rejection of license in bankruptcy does not terminate agreement, and trademark
licensee retains license rights despite being excluded from effect of 365(n)
> > Rates Tech., Inc. v. Speakeasy, Inc., concluding that no challenge clause in
settlement agreement is unenforceable if settlement occurred before litigation
> > In re K-Dur Antitrust Litigation, holding that reverse payment settlements may
violate antitrust laws despite policy in favor of settlement of litigation
This desk reference identifies problematic language and illustrates how to tailor contract
wording to accomplish client goals. The authors provide valuable insights into the legal
and business aspects of patent contracts, analysis of significant legal issues affecting
agreements, and discussion of foreign agreements and their unique considerations. A
companion CD-ROM offers 200 sample clauses and forms, including sample license
agreements, confidential disclosure agreements, employment agreements, and more.
About the Authors
Brian G. Brunsvold, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, Washington, DC, has over 30 years extensive hands-on licensing experience.
D. Patrick O’Reilley, a partner with Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, Washington, DC, teaches licensing law at George Mason University Law School in
Arlington, VA.
D. Brian Kacedon practices at Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, Washington, DC, and has broad experience in all aspects of patent litigation.

2011/1,232 pp. Hardcover
with 2012 Supplement
Order #9051P/$495.00
2012 Supplement alone:
ISBN 978-1-61746-051-7
Order #2051/$210.00
NEW SUPPLEMENT!
ELECTRONIC AND
SOFTWARE PATENTS:
LAW AND PRACTICE, THIRD
EDITION, WITH 2012 SUPPLEMENT
Steven W. Lundberg, Stephen C. Durant,
and Ann M. McCrackin, Editors-in-Chief
American Intellectual Property Law Association
A FOCUSED, PRACTICAL REFERENCE
designed to help draft, prosecute, and
manage a strong portfolio of patents
:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
Electronic and Software Patents: Law and Practice, Third Edition is a step-by-step
strategy guide that helps practitioners deal with today’s lightning-paced technological
developments, changes in USPTO policy, and pivotal court rulings.
Practitioners handpicked for their experience provide perspectives and tactics,
including guidance on tough decisions such as whether to seek patent protection at
all, how to search for and evaluate prior art, how to use trade secret and copyright
law in conjunction with patent strategy, and how to draft claims for broad yet distinct
interpretation; lessons on preparing computer-related patent applications under
Alappat, its progeny, and the USPTO’s examination guidelines; insights on drafting with
the appropriate scope—and the unique, software-related aspects of the best-mode,
enablement, and written-description requirements of Section 112; and candid practice
“tips and traps” for each step of the patent prosecution process. The Third Edition
also offers an international survey of the statutes, regulations, and case law of more
than 40 nations—plus basic global principles of patentability; representative sample
patents; a timesaving practice checklist; a case table; and an exhaustive topic index.
The Third Edition of Electronic and Software Patents: Law and Practice, co-published
with the American Intellectual Property Law Association, also includes guidance for
writing specifications in view of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.; analysis of
the Federal Circuit’s application of the Supreme Court’s decision in Bilski to Research
Corporation Technologies, Inc. v. Microsoft Corporation; insights for drafting claims in view
of Cybersource Corp. v. Retail Decisions, Inc.; tips for writing preambles that do not limit
when the claim is interpreted; and pointers for creating the best possible patent application.
The new 2012 Supplement offers important updates and also provides discussion on:
> > Inspection of the America Invents Act and its effect on the prior user defense
> > Strategies for writing the specification in view of Mayo v. Prometheus
> > Tips for targeting an application to a desired Technology Center or Art Unit at the
USPTO
> > Guidance as to which factors may be considered in determining whether a
process claim falls into the “abstract idea” exception
> > Interpretations of Bilski and post-Bilski Federal Circuit cases
> > Review of the decision in Ultramercial LLC v. Hulu, LLC for method claims
requiring complex programming to implement an invention
> > Analysis of the outcome in Dealertrack v. Huber for computer-aided method
claims that fail to specify any level of computer involvement
> > Examination of the result in Cybersource Corp. v. Retail Decisions for process
claims that recite a computer readable medium
> > Interpretation of the Federal Circuit’s attempt to preserve subject matter scope in
CLS Bank Int’l v. Alice Corp.
About the Editors-in-Chief
Steven W. Lundberg is a shareholder in Schwegman, Lundberg & Woessner, P.A.,
Minneapolis, MN.
Stephen C. Durant is a shareholder in Schwegman, Lundberg & Woessner, P.A.,
San Jose, CA.
Ann M. McCrackin is Of Counsel for Schwegman, Lundberg & Woessner, P.A., and
President, Black Hills IP, Minneapolis, MN.

2008/776 pp. Hardcover
with 2012 Cumulative
Supplement
Order #9049P/$445.00
2012 Cumulative
Supplement alone:
ISBN 978-1-61746-049-4
Order #2049/$205.00
NEW CUMULATIVE SUPPLEMENT!
DRAFTING PATENTS
FOR LITIGATION AND
LICENSING, WITH 2012
CUMULATIVE SUPPLEMENT
Bradley C. Wright, Editor-in-Chief
ABA Section of Intellectual Property Law
A GUIDE THROUGH THE MINEFIELD of
court decisions that have systematically
eroded the scope and validity of patents
::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
Drafting Patents for Litigation and Licensing is the first book
to help practitioners draft the broadest possible patent by synthesizing and applying
lessons from the case law to sustain a validity challenge. This treatise contains
in-depth discussions of pitfalls in claim drafting, dangers of means-plus-function
clauses in claims, strategies to target direct infringers, recent trends regarding the
scope of enablement, pitfalls with provisional patent applications, and strategies for
continued prosecution of patents.
The 2012 Cumulative Supplement provides significant updates and analysis of the
latest cases, including:
> > The Leahy-Smith America Invents Act, impacting almost all areas of patent
drafting, including earlier and more frequent patent filings due to the transition
to a “first-inventor-to-file“ regime
> > Mayo Collaborative Services v. Prometheus Laboratories, involving the
patentability of medical diagnostic tests
> > Bilski v. Kappos, holding out the possibility that so-called “business method“
inventions can be patented as long as they are not an abstract idea
> > Stanford v. Roche, showing that an improperly drafted agreement between a
university and one of its researchers divested the university of its patent rights
> > Blackboard, Inc. v. Desire2Learn Inc., where the Federal Circuit held that
patent applicants may not support a means-plus-function clause with the mere
disclosure of “a black box that performs a recited function”
> > The Federal Circuit’s decisions in Muniauction Inc. v. Thomson Corp., Golden
Hour Data Systems v. emsCharts Inc., and Akamai Technologies, Inc. v.
Limelight Networks, focusing attention on drafting method claims in such a way
that the method steps are performed solely by a single entity
> > The en banc decision in Egyptian Goddess v. Swisa, completely overhauling
the test for infringement of design patents
> > Quanta Computer v. LG Electronics, which substantially expanded the patent
exhaustion doctrine, and also raised questions about the rights of patent
owners to control downstream uses of patented components
> > The en banc decision in Ariad Pharmaceutical v. Eli Lilly, leading to the
possibility that broad genus claims may be enabled, but not supported, by the
written description of the patent
About the Editor-in-Chief
Bradley C. Wright is a senior partner at Banner & Witcoff, Ltd., Washington, DC. He
concentrates his practice in patent prosecution, litigation, and counseling, especially in
the electrical and computer-related areas, including internet and e-commerce.
Contributing chapter authors are seasoned patent practitioners and members of the
ABA Section of Intellectual Property Law.
Since 1984, the American Bar Association (ABA) Section of Intellectual Property
Law has advanced the development of intellectual property laws and their fair and just
administration. As the forum for rich perspectives and balanced insight on the full spectrum
of intellectual property law, the Section serves as the ABA voice—within the profession,
before policymakers, and with the public. With nearly 25,000 members, the Section is the
largest intellectual property law organization in the world. For more information on Section
participation, visit www.americanbar.org/groups/intellectual_property_law.html.

DRAFTING PATENT LICENSE AGREEMENTS,
SEVENTH EDITION
Summary of Contents
Chapter 1. Some Premises and Commentary
Chapter 2. Legal Principles
Chapter 3. Enforcement of Licensed Patents
Chapter 4. Express Agreements: Nonexclusive
Licenses, Nonassertion Agreements, and Exclusive
Licenses
Chapter 5. Specific Types of Licenses
Chapter 6. Implied Licenses and Patent Exhaustion
Chapter 7. Issues in License Agreement Negotiation
Chapter 8. The Opening Part of the Agreement
Chapter 9. Definitions
Chapter 10. The Granting Clause, Elements of the
Grant, Definition of Licensed Subject Matter
Chapter 11. Reservations and Improvements
Chapter 12. Royalties, Reports, and Payments
Chapter 13. United States Tax Issues Relating to
Transfers of Patents and Know-How
Chapter 14. Protection for a Nonexclusive Licensee
Chapter 15. Transferability of Rights and Obligations
Pertaining to Licenses
Chapter 16. Representations and Warranties and
Negation of Implications
Chapter 17. Indemnification and Liability Insurance
Chapter 18. Licensing of Pending Patent Applications
Chapter 19. Alternate Dispute Resolution
Chapter 20. Common Provisions of Consequence
Chapter 21. Term and Termination of the Agreement
Chapter 22. Execution of Agreements: Problems of
Authority and Proof
Chapter 23. Bankruptcy Law Considerations
Chapter 24. Validity and Construction Patents
Chapter 25. Settlement of Patent Litigation
Chapter 26. Confidential Disclosure Agreements
Chapter 27. Agreements Concerning the Sale or Other
Transfer of Unpatented Technological Values
Chapter 28. Collaboration Agreements
Chapter 29. Cross Border Licensing Issues
Chapter 30. Export Laws and Regulations of the United
States
Chapter 31. University and Government Licensing
Chapter 32. Selected Competition Law Issues
Visit www.bna.com/bnabooks/dpl for more detailed information.
> > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > >
ELECTRONIC AND SOFTWARE PATENTS,
THIRD EDITION, WITH 2012 SUPPLEMENT
Summary of Contents
Chapter 1. Trends in Software and Business Method
Patents From 1996 Through 2010
Chapter 2. Relationship to Other Intellectual Property
Areas
Chapter 3. Searching Software Inventions
Chapter 4. Guidelines to Software-Related Inventions
Chapter 5. Drafting the Specification
Chapter 6. Crafting the Claims
Chapter 7. Functional Claim Drafting in the Electronics,
Computer, and Software Arts
Chapter 8. Claim Interpretation for Patent Drafters
Chapter 9. Maximizing Your Success in Patent
Prosecution
Chapter 10. Drafting and Filing International Patent
Applications
Visit www.bna.com/bnabooks/esp for more information.
Chapter 11. Practical Considerations for Working With
Business Method Patents
Chapter 12. Design Patents for the Information Age
Chapter 13. Patent Portfolio Development:
An In-House Counsel Perspective
Chapter 14. Noninfringement and Invalidity Opinions
Chapter 15. Design-Around Techniques
Chapter 16. Litigation of Patents Involving Software
Technology
Appendixes
Table of Cases
Index
> > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > >
DRAFTING PATENTS FOR LITIGATION AND
LICENSING, WITH 2012 CUMULATIVE SUPPLEMENT
Summary of Contents
Chapter 1. The State of the Law of Claim
Construction and Infringement
Chapter 2. Pitfalls in Patent Drafting
Chapter 3. Drafting the Winning Patent
Chapter 4. Continued Prosecution of the Patent
Chapter 5. Mechanical Patents
Chapter 6. Electrical Patents
Chapter 7. Software, E-Commerce, Internet, and
Business Method Patents
Chapter 8. Chemical and Pharmaceutical Patents
Chapter 9. Biotechnology Patents
Chapter 10. Design Patents
Chapter 11. Combining Prosecution with Other
Forms of Representation
Chapter 12. Drafting U.S. Patents with a View
Toward Europe
Visit www.bna.com/bnabooks/dpll for more detailed information.

2011/3 Volumes
5,248 pp. Hardcover
with 2012 Supplement
Order #9080P/$595.00
2012 Supplement alone:
ISBN 978-1-61746-080-7
Order #2080/$255.00
NEW SUPPLEMENT!
PATENT PROSECUTION:
LAW, PRACTICE, AND
PROCEDURE, SEVENTH
EDITION, WITH 2012 SUPPLEMENT
By Irah H. Donner
EFFECTIVELY PREPARE AND PROCESS
a patent application, protect a client’s patent,
or invalidate an infringing one
:::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
Patent Prosecution: Law, Practice, and Procedure, Seventh
Edition expertly addresses the most recent substantive changes in patent law
by the district courts, the Court of Appeals for the Federal Circuit, and the U.S.
Supreme Court. This treatise also explains new prosecution rules from the Patent and
Trademark Office (PTO), making it a resource that is equally strong in its analysis of
patent case law as it is in its analysis of patent prosecution.
It covers important cases, including the Supreme Court’s ruling in Bilski v. Kappos,
which held that business methods are not specifically excluded under the patent laws,
rejected the Federal Circuit’s machine-transformation test as the exclusive test, and
declined to establish a specific test for patent eligibility. It also examines the PTO’s
examination guidelines, “Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in view of Bilski v. Kappos.” Other recent decisions discussed include
In re Tanaka; Association for Molecular Pathology and ACLU v. USPTO and Myriad;
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.; Wyeth and Elan Pharma International,
Ltd. v. Under Sec. of Commerce for Intellectual Property; Hyatt v. Acting Director,
Patent and Trademark Office; and others.
The 2012 Supplement updates the main volume by addressing various significant
changes in U.S. patent law resulting from recent decisions and statutory amendments.
The supplement discusses changes to the patent law resulting from the Leahy-Smith
America Invents Act, including prioritized Track I examination, the first-to-invent system,
elimination of the best mode defense, revised standards for inter partes reexamination,
and others. In addition, it covers more than 40 decisions of the Supreme Court, the
Federal Circuit, and the Board of Patent Appeals and Interferences, including i4i
Limited Partnership v. Microsoft Corp.; Tewari De-Ox Systems V. Mountain States; In
re Jung; Duramed Pharmaceuticals, Inc. v. Paddock Laboratories, Inc.; and others. The
Supplement also includes a CD-ROM with a comprehensive Cumulative Case Digest
that covers cases through December 31, 2011, and provides access to an extensive
compilation of precedential language, organized by specific issue, in favor of patentability.
> > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > > >
Summary of Contents
Chapter 1. Patent Protection
Chapter 2. Prosecution and
Appeals
Chapter 3. Prosecution History
Estoppel and Disclaimer
Considerations
Chapter 4. Inventorship
Chapter 5. Antedating Prior Art
References Under Rule 131
Chapter 6. Exceptions to
Patentable Subject Matter
About the Author
Chapter 7. Anticipation Standard
Under 35 U.S.C. Section 102
Chapter 8. Combating
Obviousness Rejections Under 35
U.S.C. Section 103
Chapter 9. Disclosure Under
35 U.S.C. Section 112, First
Paragraph
Chapter 10. Definite Claims Under
35 U.S.C. Section 112, Second
Paragraph
Chapter 11. Means-Plus-Function
or Step-Plus-Function Claims
Under 35 U.S.C. Section 112,
Sixth Paragraph
Chapter 12. Related Application
and Priority Issues
Chapter 13. Design Patent
Requirements
Chapter 14. Post-Issuance
Actions: Reissue, Reexamination,
Certificates of Correction, and
Maintenance Fees
Chapter 15. Practical Guidelines
for Drafting Patent Opinions
Irah H. Donner is a partner in the Intellectual Property department of Stroock & Stroock
& Lavan LLP, New York, NY. He concentrates in the counseling, due diligence, claim
analysis, and preparation/prosecution of patents, as well as enforcement of intellectual
property, with particular emphasis on financial, business method, internet, and computer
software/hardware applications.
Visit www.bna.com/bnabooks/ppp for more detailed information.

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CONSTRUCTING AND
DECONSTRUCTING PATENTS
By Irah H. Donner
Driven by the difficulties he faced in mentoring attorneys and
agents on the mechanics of patent application drafting, Irah
H. Donner, author of the classic treatise Patent Prosecution:
Law, Practice, and Procedure, wrote this seminal guide on the
subject: Constructing and Deconstructing Patents.
Walking the reader step-by-step through the complexities of
drafting a patent application, this treatise provides a standard
methodology that patent attorneys and agents can rely on to simplify the patent
application process. Regardless of the particular type of patent, or the level of its
technical subject matter, this treatise will help ensure each section of the patent
application is carefully considered and fully developed before its submission to the
U.S. Patent and Trademark Office (PTO). This book also discusses the major areas of
patent law that can affect the strength and vitality of a patent years later.
Patent attorneys and agents engaged in patent application drafting practice before the
PTO will find this book extremely valuable, as will litigators seeking both to understand the
construction of patent applications and to deconstruct them during litigation. The book’s
detailed organization makes it accessible as a guide for the new attorney or agent, while
its time-tested methodology provides valuable insights for the experienced practitioner,
serving as a checklist for each phase of the constructing and deconstructing process.
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