Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements

Program agenda:

• Legal concepts governing transfer of rights to third parties
• Impact of agreement language used on enforcement rights
• University involvement in enforcing patent rights in the U.S.
• Varying levels of rights a university can grant a third party
• Sovereign immunity as a shield to joinder
• Assessing “implied obligation” and agreement to cooperate
• Federal Rule of Civil Procedure 19 (Rule 19) in patent litigation and its correlation to the level of rights granted
• The Federal Circuit’s Gensetix ruling and what it illustrates about significant agreement language
• A practical approach to navigating the tension between rights granted and Rule 19

As the recent Gensetix case shows, enforcement terms are not to be overlooked or undervalued in your IP license agreements…

Universities and their tech transfer offices must be prudent when negotiating terms for agreements granting rights to third parties in university-developed inventions. Among many considerations a TTO must address during negotiations are the scope of rights granted to the third party (e.g., scope of geographic and field of use grants) and the university’s desire to be involved in, or to avoid, future U.S. litigation. These concepts are interrelated and should be considered together.

Case in point: A recent Federal Circuit ruling in Gensetix v. Board of Regents of the University of Texas System is yielding important lessons about the proper way to construct license agreements — particularly with regard to rights to enforcement among licencees — as well as the role of sovereign immunity when a litigant seeks to force a state university to join an infringement suit.

We’ve teamed up with legal experts from Intellectual Property law firm Oblon, McClelland, Maier & Neustadt to guide TTOs and legal counsel in drafting agreement terms to maximize their ability to achieve desired goals – and avoid involuntary joinder — when granting rights in university inventions to third parties. The case also has critical implications for those bringing infringement suits without participation from “necessary parties.”

Program Leaders