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Patent Licensing: Strategy, Negotiation, and Forms (1st Edition)

Author(s): Mark S. Holmes
Practice Area: Intellectual Property
Published: Dec 2000
Supplement Date: Nov 2012 i Other versions can be found in the Related Items tab.
ISBN: 0872241378
PLI Item #: 629

Even simple patent licenses involve numerous clauses and provisions. So it’s easy for the wrong words to find their way into the most basic agreements, triggering court clashes and quashing business opportunities for licensors and licensees.

PLI’s Patent Licensing: Strategy • Negotiation • Forms makes certain that you avoid this needless trouble, by giving you the comprehensive, hands-on guidance you need to negotiate and draft fair and problem-free patent licenses.

With the help of hundreds of adaptable sample licensing clauses and provisions, this practical, plain-English resource ensures that every term, every phrase in the final, hammered-out agreement serves your client’s business interests, satisfies the other party, and minimizes the threat of disputes. Throughout, Patent Licensing warns you about and helps you ward off the legal and commercial risks associated with this intricate process, whether you’re the licensor or licensee. Included is key guidance on how to keep vital company information confidential to preserve competitive advantage.

Updated at least once a year, Patent Licensing: 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.