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Patents, licences and random musings

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Now let me think ...

After posting sundry musings about patents and licensing, loosely pinned to his reflections on LexisNexis's forthcoming "Licensing Patents & Know-How" conference ( Millennium Mayfair Hotel, Londonn 17 February), the IPKat has received various patent-licence-related items from kind persons who obviously, and probably correctly, feel that his education on the subject would not be harmed by a little extra current reading.

The Kat has also rceived some interesting thoughts from readers relating to patent licensing.  One addresses the issue of "pay-to-delay" patent settlements, which are currently the subject of both controversy and litigation in the United States. The idea is simple and ingenious: patent owners pay generic pharma manufacturers not to challenge the validity of their patents, thus enabling them to continue exploiting their monopolies but effectively sharing the proceeds with what would otherwise be a competitor. Some people think this is a great way to sort out a problem in a way which makes everyone happy except purchasers of cheap generic drugs and enthusiasts of competition law who say that this is all wrong: since patents are presumed valid until proven to the contrary, it doesn't look very brave for big companies to hide behind their presumed weakness as a justification for buying off a prospective challenger -- and isn't there a Sherman Act somewhere about?  So perhaps the solution is not to buy off a challenger but to sell the challenger the patent and buy back an exclusive licence to manufacture, on much the same terms?  The IPKat thinks there may be problems here too, but at least they're couched in different terms.  The Kat now sees that licensing has already been thought of in the context of pay-to-delay, is is apparent from the application for certiorari in Louisiana Wholesale v Bayer (here).

Another reader has, just for the sake of curiosity, raised the issue of non-disclosure agreements.  She was reading the Wikipedia entry on NDAs and observed that they are not characterised there as being licences. But, she insisted, they really should be regarded as such, at least where they permit the use of the licensed confidential information for the purposes attached to the disclosure -- evaluating its technical efficacy, costing out potential use in manufacture, and so on.  The IPKat's keeping an open mind on this one, though he's somewhat doubtful about the proposition -- and he's not sure whether, in the case of NDAs, their characterisation as a licence or not is a distinction without a difference.

You can check out the agenda of Patents and Know-How here, inspect the speakers' credentials here and download the brochure here.

Full post as published by IPKat on January 26, 2011 (boomark / email).