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

 
Author(s): Mark S. Holmes
Practice Area: Intellectual Property
Published: Oct 2013
Supplement Date: Nov 2017 i Previous editions(s) 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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The founder and CEO of PatentBridge is Mark Holmes. Mr. Holmes is a registered patent attorney experienced in all aspects of patent brokering and patent licensing. He has negotiated numerous patent deals, both inbound and outbound, as well as represented patent owners in the brokering of their patents. For half a decade from 2006 to 2011, Mr. Holmes served as co-chair Silicon Valley Chapter of LES (Licensing Executives Society).

Mr. Holmes has advised some of the largest companies and academic institutions in the world such as Visa, Sony, Applied Materials, Intergraph (in its settlement of Intergraph vs. Intel), University of California at Berkeley (Berkeley Lab), Biosite, Fairchild Semiconductor, Rigel Pharma and Yamanouchi Pharma, as well as sole inventors. He has been on both sides of the table -- as buyer and seller -- which has given him a unique understanding of both perspectives and the negotiating tactics employed by each party to the deal.

Mr. Holmes earned his engineering degree from Brown University. He is a member of the Institute of Electrical and Electronics Engineers (IEEE) and the IEEE Computer Society. Before founding PatentBridge, he served as counsel to Townsend & Townsend & Crew, formerly the largest intellectual property law firm west of the Mississippi.1

Mr. Holmes is the author of the book Patent Licensing and Selling: Strategy, Negotiation & Forms, Practising Law Institute, New York (2000 supplemented annually). Please click the button entitled "Book" at the top of the screen for more information.

Mr. Holmes lectures nationally on the pressing issues facing patent owners in the commercialization of their intellectual property. In the past few years, he has spoken nationally over 50 times on the commercialization of intellectual property for such bodies as Renaissance Weekend, Practising Law Institute, International Society for Optical Engineering (SPIE), Patent Law Institute, Washington State Patent Law Association, Oregon Patent Law Association, Hawaii State Bar Association and other organizations.

He also serves as co-chair of the Practising Law Institute’s Advanced Patent Licensing annual program in New York, Chicago and San Francisco, where he speaks on software and patent deals.

He was a speaker on patents at the 2003, 2004 and 2008 Annual Meetings of the Licensing Executive Society (LES) and served on the meeting committee for the 2004 LES Winter Meeting in San Francisco. Since 2002, Mr. Holmes has been a member of the faculty of the Practising Law Institute’s “Advanced Licensing Agreements” annual two-day programs in San Francisco, Chicago and New York where he speaks on software licensing and the analysis of a complex technology deal.

He is the author of numerous articles and sits on the Board of Editorial Advisers for the Intellectual Property Counselor, published by West Publishing.