Licensing Law & Regulations Flashcards

Under U.S. patent law, what is the standard 'field of use' restriction in a patent license?

Answer: A clause limiting the licensee to exploit the patent only within a defined industry or application area

Field-of-use restrictions confine a licensee's right to exploit a patent to a specified category of products or markets, and are generally enforceable under U.S. patent law.

Which federal statute governs the licensing of trademarks in the United States at the federal level?

Answer: The Lanham Act (15 U.S.C. § 1051 et seq.)

The Lanham Act is the primary federal statute governing trademarks, including trademark licensing requirements such as quality control obligations.

A licensor fails to maintain adequate quality control over a trademark licensee's goods. What is the likely legal consequence?

Answer: The trademark may be deemed 'naked' and abandoned

Without adequate quality control, a trademark license is considered 'naked,' which can result in the mark being deemed abandoned and unenforceable.

What does the doctrine of 'exhaustion' (first sale doctrine) mean in the context of patent licensing?

Answer: Once a patented product is sold by or with the patent owner's authorization, patent rights in that item are exhausted

Patent exhaustion means that an authorized sale of a patented product terminates the patent owner's ability to control that specific item downstream.

Under the Defend Trade Secrets Act (DTSA) of 2016, what is required for information to qualify as a trade secret?

Answer: It must derive independent economic value from not being generally known and be subject to reasonable secrecy measures

The DTSA defines a trade secret as information that derives economic value from secrecy and is subject to reasonable measures to maintain that secrecy.

In a copyright license, what distinguishes an 'exclusive' license from a 'non-exclusive' license legally?

Answer: An exclusive license must be in writing to be enforceable; a non-exclusive license may be oral

Under 17 U.S.C. § 204, an exclusive copyright license must be in a signed writing to be valid, whereas a non-exclusive license may be granted orally or by conduct.

What is a 'grant-back' clause in a patent license agreement, and what is its primary antitrust concern?

Answer: A provision requiring the licensee to license back improvements to the licensor, potentially limiting the licensee's incentive to innovate

Grant-back clauses require licensees to grant rights in improvements to the licensor, and they can raise antitrust concerns if they dampen the licensee's incentive to innovate.