When acquiring patents from outside the company, the buyer should consider a number of important factors. First, all record owners of the IP must be parties to the patent acquisition agreement. Often patents are assigned, and the buyer wants to ensure that the assignee is obligated to transfer ownership of the patent. If the buyer is granting back a licensee to the seller, the parties should consider including that in the agreement.
Several important provisions should be in the agreement, including transfer provisions, reps and warranties, indemnification, and dispute resolution provisions. For example, the parties may want to include that the use of the patent does not violate any third-party rights, and there have been no third-party infringement claims. Further, the parties may want to include the term and termination of any patent and know-how licenses among the transfer provisions.
Patent buyers should also consider the Supreme Court's ruling in Hologic (2021), which may warrant some additional contractual protections. Those acquiring a patent should also include representations and warranties to ensure that all information relevant to validity is disclosed.
Listen as our authoritative panel of patent attorneys examines patent acquisition agreements and what factors counsel should consider when negotiating and drafting these agreements. The panel will offer best practices for negotiating and structuring these agreements.
