Life sciences patent licensing - territory and scope of licence

When negotiating a patent licence, there are a number of general issues that must be considered and agreed. Here we consider the territory and scope of the licence:

To avoid a potential dispute, it is vitally important that all parties to a licence are clear about what their commercial objectives are and that the rights being granted meet with those objectives, as well as, to the extent possible, changes in circumstance that may occur in the future.  Essential questions to ask include: what patents will be licensed? Are they applications or granted patents? If applications, what effect might an amendment to the claims have? Which patents to be licensed are subject to royalties? What territory does the licence cover? What activities are licensed to take place in a particular territory – is manufacture permitted, or only sale? Are there limitations on the purposes that the technology can be exploited for?

Patent Transactions in the Life Sciences coverThis toolkit article is an extract from Patent Transactions in the Life Sciences (Globe Law and Business Publishing, September 2014).

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