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.
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.
By
Ann G. Fort And Darcy L. JonesThis premium content is locked for LawJournalNewsletters subscribers only
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