D.J. Dykeman and D.W. Kopko (USA)
Licensing, Patents, International Intellectual Property Law
This paper reviews the principles applicable to recordation of patent licenses in the United States Patent Office (“USPTO”) and in various foreign countries. Under current United States patent law, recordation of patent licenses is permissible, but not required. In many foreign countries, however, recordation of patent licenses is required to preserve priority or give legal effect. In countries where recordation of patent licenses is permissible or required, recordation of patent licenses may offer the licensee advantages including constructive notice to the public and priority over conflicting patent licenses. This paper will focus on the following issues related to recordation of patent licenses: (1) the differences between a patent license and a patent assignment; (2) the inapplicability of the U.S. Patent Act recording statute to patent licenses; (3) the benefits of recording patent licenses in the USPTO; (4) the subsequent purchaser of a patent takes subject to outstanding licenses; (5) the effects of recording patent licenses in the USPTO; and (6) the recordation requirements for patent licenses in foreign countries.
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