Patent Licensing & Assignments Flashcards
7 cards from real PPC practice questions. Tap to flip, then mark Knew It or Still Learning — missed cards come back until you master them.
Read the first 7 Patent Licensing & Assignments flashcards as text
What is a 'march-in right' under the Bayh-Dole Act?
Answer: The federal government's right to require licensing of a federally funded patent if the contractor fails to adequately commercialize it
March-in rights under the Bayh-Dole Act allow the funding federal agency to require the patent owner to grant licenses—or grant them directly—if the owner fails to take effective steps to commercialize the federally funded invention.
What is a covenant not to sue in patent licensing?
Answer: A contractual promise by the patent owner to refrain from asserting patent rights against a specific party
A covenant not to sue is a contractual promise by the patent owner not to enforce its patent against a designated party, functioning in practice similarly to a non-exclusive license without technically granting one.
What must a patent paralegal confirm when preparing a patent assignment for recordation with the USPTO?
Answer: That the assignment identifies the patent by number or application number and is signed by the assignor
For USPTO recordation, an assignment must clearly identify the patent or application being assigned and bear the assignor's signature; the USPTO records the document as submitted without substantively reviewing its legal sufficiency.
What is a lump-sum royalty payment in a patent license?
Answer: A single one-time payment made upfront by the licensee in exchange for the right to practice the patent
A lump-sum royalty is a single upfront payment that fully satisfies the licensee's royalty obligation, providing the licensor with immediate compensation and relieving the licensee of ongoing royalty tracking.
What is the primary purpose of a due diligence review in patent licensing?
Answer: To verify the patent's validity, confirm clear chain of title, and assess freedom to operate before executing the license
Due diligence in patent licensing investigates the patent's validity, ownership history (chain of title), and any third-party rights that could affect the licensee's freedom to operate, identifying risks before the parties commit to an agreement.
What is an implied license in U.S. patent law?
Answer: A non-written license inferred from the patent owner's conduct or from an authorized sale of a product incorporating the patented technology
An implied license arises by operation of law from the patent owner's conduct—such as selling a product that necessarily embodies a patented method—even without a formal written license agreement.
What is a technology transfer agreement?
Answer: An agreement by which intellectual property rights and know-how are transferred from an owner (such as a university) to a commercializing entity (such as a company)
A technology transfer agreement enables a research institution or patent owner to transfer its intellectual property rights, technical know-how, and sometimes confidential information to a commercial entity for development and commercialization.