Patent Owners Should Mind Assignee Rights Restrictions

Law360 (June 1, 2020, 6:19 PM EDT) -- Parties seeking to transfer ownership of a patent subject to preexisting licenses often face a difficult task.

On the one hand, the patent owner may desire to obtain the benefits of those prior licenses even after the patent is assigned to a new owner.

On the other, any rights retained by the patent owner, and any restrictions placed on the future assignee, may jeopardize the standing of the assignee to enforce the patent without joining the former owner.

To further complicate this delicate balance, the U.S. Court of Appeals for the Federal Circuit's decision in Lone Star Silicon Innovations LLC v....

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