Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Can a Licensor Receive Royalty Payments Beyond the Life of Patent Protection?
An axiom of patent licensing is that a patent owner cannot receive royalty payments for post-expiration use of its patented technology. However, in exercising their rights to freedom of contract, parties to an IP license may desire flexibility in how they structure payments for the underlying licensed IP. For example, the parties may be willing to trade upfront payments and higher royalty rates for an extended life of royalty payments at a lower royalty rate. How do you determine if the ongoing royalty obligations that extend beyond the life of underlying patent protection, even if agreed to by the contracting parties, are enforceable? A recent decision by the U.S. Court of Appeals for the Third Circuit shows what types of license arrangements pass the test.
The Ares Case
The dispute in Ares Trading SA v. Dyax Corp., 2023 U.S. Dist. LEXIS 40484, revolves around multiple players involved in a process of drug development, each of whom is trying to get a piece of the ultimate pie: revenue based on sales of the resulting drug product. In this case, the drug product was an antibody-based cancer therapeutic that was discovered using patented antibody-screening technology owned by Cambridge Antibody Technology (CAT). CAT licensed its patents to companies including Dyax to perform antibody screening in exchange for royalty payments based on the subsequent sale of the developed drug product.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers
There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Transfer Tax Implications on Real Property Leases
The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.