Terminating Patent Licenses: Key Considerations and Best Practices
Timing, License Terms, Partial Termination, Notice, Wrongful Termination Consequences, Post-Termination Considerations

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, April 13, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on the termination of a patent license. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.
Faculty

John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution.  Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel.  His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries.  In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.
Due Diligence
John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.
IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.

Mr. Krieger is a first chair inter partes review and post-grant review litigator with an over 90% win rate in both challenging third-party patents and defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on district court and ITC litigation, client counseling, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. Mr. Krieger lectures and publishes frequently on various IP topics.
Description
Termination of a patent license may seem straightforward if the license agreement clearly laid out the circumstances under which termination is permitted. However, things are not always as they seem at first blush. For example, what if the license is assigned to the licensor's competitor?
Also, what is the effect on the license if the licensee challenges the licensed patent's validity? And what role do forum selection clauses and “no challenge” clauses play in terminating such licenses? Furthermore, what are the options for the licensee if a licensor declares bankruptcy? Similarly, what are the options for the licensor if the licensee declares bankruptcy?
There are post-termination considerations that should be kept in mind. Some provisions may survive the agreement's termination. Many licenses prohibit the licensee from using the licensed IP after termination, giving the licensor a breach of contract claim in addition to an infringement claim. Further, if the license agreement involves the disclosure of know-how or other confidential information, termination of the agreement may require the return or destruction of the confidential information. The parties should also consider the effect of termination on the licensed products the licensee holds as well as sublicenses. In addition, the license agreement may require obligations with respect to patent prosecution and/or litigation and the effect of termination must be addressed.
Listen as our authoritative panel of patent attorneys examines terminating licenses of patent rights. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.
Outline
- Considerations before terminating
- Termination under the license terms
- Mutual termination or amendment
- Breach
- Invalidity challenge
- Bankruptcy
- Change of Control
- Expiration and renewal issues
- Notice
- Post-termination considerations
- Best practices
Benefits
The panel will discuss these and other important issues:
- What are the key considerations for terminating a patent license?
- What considerations should licensors and licensees keep in mind regarding post-termination of a patent license?
- What are best practices for navigating the practical and legal issues for licensors and licensees when terminating a patent license?
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