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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: Jan 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. PatentBridge has sold a single patent for more than $4,000,000.

Mr. Holmes is also the CEO and Co-Founder of RavenWhite Security, Inc. which was selected at the RSA Conference as one of the top 10 security startups worldwide.

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).

Mr. Holmes has advised such technology savvy entities as Visa, Sony, Applied Materials, University of California at Berkeley as well as many startups and was named 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 is a registered patent attorney, holds an engineering degree from Brown, is a member of the Institute of Electrical and Electronics Engineers (IEEE), and wrote the book PATENT LICENSING: STRATEGY, NEGOTIATION & FORMS. 

He co-chairs the Advanced Patent Licensing program of the Practising Law Institute (PLI) and speaks on software and technology licensing in the PLI Advanced Licensing program in New York, Chicago and San Francisco, Patent Licensing Today 2014: Marketing Money Without Getting Sued, Intellectual Property Law Institute, and Patent Law Institute. 

He 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, International Society for Optical Engineering (SPIE), Patent Law Institute, Washington State Patent Law Association, Oregon Patent Law Association, Hawaii State Bar Association, Practising Law Institute and other organizations.