Posts Tagged: "covenant"

Covenant Not to Challenge in a Patent License Does Not Bar a PTAB Review

Covenant Not to Challenge clauses are common in patent licenses, including licenses that are part of post-litigation settlements. clause is seen as a benefit bargained for under a license agreement and constitutes part of the consideration obtained by the licensor for the license. The intended effect of such a clause is to allow the licensor to make an estoppel argument in the event that licensee does challenge the patent, in spite of its agreement not to do so. However, the PTAB thus concluded that without an express grant from Congress, it did not have the authority to recognize contractual estoppel as a bar to an inter partes review.

Lillian Safran Shaked & Asaf Naymark

October 18, 2015

Don’t Complicate Things: Existence of a License Comes Down to the Terms of a Contract

In a case located at the intersection of bankruptcy and IP law, the Third Circuit ruled that, under the terms of a contract, Walt Disney Studios Motion Picture Production and its affiliates did not acquire a perpetual worldwide license to use patents to convert conventional films into 3D.

Paige H. Forster

February 27, 2015

Contracts 101: Covenants, Representations and Warranties in IP License Agreements

Recently, it has struck me that many business folks who “negotiate tons of IP license agreements,” fail to understand the difference between covenants, representations and warranties that are “standard” in many such agreements. Well, that is not too surprising. What is very surprising, however, is that many of their lawyers also fail to appreciate the differences as well! Many think the terms are synonymous and thus use them interchangeably. They are not. So, for those of you tired of faking the funk, here is some (either fresh or refresher) “Contracts 101!”

Raymond Millien

April 5, 2013