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Retroactive Licenses and Claim Settlements: The Law of Unintended Consequences

It is fairly typical for an owner of intellectual property who has convinced an infringer to cease and desist the infringing activity to offer a retroactive license covering the period of past infringement as part of the settlement agreement. Granting a retroactive license to the direct infringer can be dangerous, however. Not only will the license forgive the direct infringement; it also will erase any possible inducement or contribution claim the patentee has against a third party. Because the retroactive license is unnecessary in most cases, before granting it a patentee should be very certain it has no inducement or contribution claims against third parties.

13 minute read June 29, 2006 at 09:10 AM
By
Ann G. Fort and Darcy L. Jones
Retroactive Licenses and Claim Settlements: The Law of Unintended Consequences

It is fairly typical for an owner of intellectual property who has convinced an infringer to cease and desist the infringing activity to offer a retroactive license covering the period of past infringement as part of the settlement agreement.

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