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Patent Licensing and Selling: Strategy, Negotiation, Forms (Second Edition)

Author(s): Mark S. Holmes
Practice Area: Intellectual property, Intellectual property licensing, Patents
Published: Oct 2013
Supplement Date: Oct 2021 i Other versions can be found in the Related Items tab.
ISBN: 9781402420641
PLI Item #: 47893

Featuring hundreds of sample licensing clauses and provisions, Patent Licensing and Selling, Second Edition, shows you how to draft patent license and patent purchase agreements that serve your clients’ interests, satisfy other parties, and shield clients from legal exposure.

Specifically, the book can help users:

  • Avoid terms that trigger delays and disputes
  • Grant exclusive patent licenses and successfully buy or sell a patent portfolio
  • Retain the right to choose which markets to enter first
  • Swiftly bring licensed or purchased products to market
  • Protect against infringement of licensed or purchased patents
  • Set license duration and termination guidelines
  • Maintain the confidentiality of agreements

It also provides direction on such other mandatory topics in a patent purchase agreement as:

  • Representations and warranties of both the buyer and the seller, including authority to sell, title to the patents, the validity and enforceability of the patents, any pre-existing licenses or other obligations affecting the patents, and notice of any other legal proceeding that might affect rights to the patents
  • Purchase price and payment requirements
  • Taxes
  • Closing requirements

Updated at least once a year, Patent Licensing and Selling: Strategy, Negotiation, Forms is a vital handbook for patent practitioners and other intellectual property attorneys, corporate counsel, corporate executives, patent officials, and inventors.    

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With over a billion dollars in patent deals under his belt, Mark Holmes is the founder and CEO of PatentBridge LLC, a privately held technology development firm in Silicon Valley that specializes in bringing to market select patented technologies covering extraordinary software and Internet-related breakthroughs. 

Mr. Holmes is the CEO and Co-Founder of RavenWhite Cybersecurity, Inc. which was selected as one of the top 10 security startups worldwide at the RSA Conference. He is also the Executive of Business Development for the DeCaf Co. which is creating the world’s first consumer instant decaffeination product.

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups and has been named every year to the IAM Strategy 300 – The World’s Leading IP Strategists.  He served as co-chair of the Silicon Valley Chapter of the Licensing Executives Society (LES) from 2006 to 2011.

He was the co-founder of a successful telecommunications startup which was sold in the late 1990s to a portfolio company of the Alabama state retirement fund (Retirement Systems of Alabama).

He lectures nationally on the pressing issues facing tech startups. In the past few years, he has spoken nationally over 50 times for such bodies as Renaissance Weekend, International Society for Optical Engineering (SPIE), PLI and other organizations.

He holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), IEEE Software Society and wrote the book PATENT LICENSING AND SELLING: STRATEGY, NEGOTIATION & FORMS.