Thread:
it's very common to license a portfolio of patents, but you can't "tie" the licensing of one patent to another; that's an antitrust violation. older folks will recall ibm getting nailed for "tying" the sale of punch cards to its machines - a definite no-no.
what a licensor can do is say to the licensee: "here's my portfolio, which consists of know-how and patents with various lifespans remaining. i also expect to develop improvements, which may or may not be patented. i will license the know-how for x% and the patents for y% of net sales, i.e., for every product that's sold that uses k-h and patents, you owe me the higher of x or y - and it's almost always y. if you only use one, the you owe the applicable rate. however, if you (licenesee) make/sell a product a product that, absent the license, doesn't infringe any of my (licensor's) k-h or patents, then you don't owe me a thing.
the trick, of course, is to have patents/k-h that must be used in the making/selling of a product. and as long as at least one claim - and a patent could have 50 claims - is used by the licensee, i.e., but for the license, the licensee would be infringing the intellectual property of the licensor, then the license owes a royalty for as long as that patent lasts. and this is usually done on a country-by-country basis b/c the life of patents is not the same in all countries, so you could owe royalties for sales in the u.s., but not in venezuela. generally the know-how royalties expire after, say, 10 years, altho that's not always the case.
best, red jinn |
