PPC Patent Licensing & Assignments 3

Question 1

What is a 'march-in right' under the Bayh-Dole Act?

Accepted Answer

The federal government's right to require licensing of a federally funded patent if the contractor fails to adequately commercialize it

Answer

The patent owner's right to prevent the government from using their patent without compensation

Answer

A competitor's right to obtain a compulsory license after a patent has been on the market for five years

Answer

An automatic compulsory license granted to all parties during a declared national emergency

Question 2

What is a covenant not to sue in patent licensing?

Accepted Answer

A contractual promise by the patent owner to refrain from asserting patent rights against a specific party

Answer

A court-issued injunction prohibiting the patent owner from filing new infringement actions

Answer

A government mandate requiring the patent owner to license patents without litigation

Answer

An agreement between two competitors not to challenge each other's patents in inter partes review

Question 3

What must a patent paralegal confirm when preparing a patent assignment for recordation with the USPTO?

Accepted Answer

That the assignment identifies the patent by number or application number and is signed by the assignor

Answer

That the assignment is notarized and carries an apostille for international recognition

Answer

That the assignment includes the full text of all patent claims being transferred

Answer

That the USPTO has pre-approved the form and content of the assignment document

Question 4

What is a lump-sum royalty payment in a patent license?

Accepted Answer

A single one-time payment made upfront by the licensee in exchange for the right to practice the patent

Answer

A monthly royalty payment made regardless of actual sales volume during the period

Answer

A royalty calculated as a fixed percentage of the licensee's gross annual revenues

Answer

A staged payment schedule tied to the achievement of specific commercialization milestones

Question 5

What is the primary purpose of a due diligence review in patent licensing?

Accepted Answer

To verify the patent's validity, confirm clear chain of title, and assess freedom to operate before executing the license

Answer

To determine the retail market value of the products embodying the licensed technology

Answer

To confirm that the licensee has adequate manufacturing capacity to exploit the patent

Answer

To audit the licensor's financial statements to ensure royalty payments will be collectible

Question 6

What is an implied license in U.S. patent law?

Accepted Answer

A non-written license inferred from the patent owner's conduct or from an authorized sale of a product incorporating the patented technology

Answer

A verbal agreement between the patent owner and a licensee that supersedes written license terms

Answer

A license that becomes legally effective only upon formal approval by a federal court

Answer

A license automatically granted to the public when a patent expires

Question 7

What is a technology transfer agreement?

Accepted 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)

Answer

An agreement covering the physical transfer of manufacturing equipment and production lines between two companies

Answer

A government contract governing the transfer of classified defense technology to a private contractor

Answer

An arrangement between two competitors to share proprietary trade secrets under a mutual NDA