Description
Transferring ownership of a patent is not always a simple matter. Existing encumbrances on the patent can impact the rights and obligations of both the assignor and the assignee. In particular, preexisting licenses can present difficult questions for both the former and new owner of the patents. For example, will the license transfer with the transfer of ownership of the patent? If not, will any of the rights and obligations under that license run with the patent regardless?
In addition, it is often the case that the prior owner will want to retain certain rights under the patent even after assignment. The former owner may want the right to continue practicing the patent or grant licenses to affiliates or customers. The former owner may also want to retain some say in future litigation or assignment of the patent. The transfer must consider, however, the impact of those restrictions on the new owner's ability to enforce the patent. The Federal Circuit recently addressed an assignor's ability to retain a right to enforce a patent for infringement occurring before the assignment. The court concluded that the assignor had transferred the “entire right, title and interest” in the patent and therefore no longer had standing to sue. Lowe v. ShieldMark, Inc. (Fed. Cir. 2025). Therefore, when transferring patent ownership, patent counsel must understand these issues to ensure who can enforce the patent and the restrictions on the patent rights are clear.
Listen as our authoritative panel of patent attorneys examines transfers of patent ownership. The panel will address the impact of existing encumbrances such as preexisting licenses on patent transfers as well as the rights and encumbrances that run with the patent generally. The panel will also address how the terms of the assignment agreement may impact the new owner's right to enforce the patent. The panel will discuss how the courts are treating these issues and offer guidance for transferring patent ownership.
Presented By
Ms. Halkias is a patent attorney and a member of the IP corporate group. She has extensive experience in patent prosecution and has supported large patent litigation teams in different technology sectors. With a PhD in Electrical Engineering, Ms. Halkias has represented and assisted clients in different fields including RF receivers, computer software, network systems, telecommunications, storage systems, and medical devices among others. During her doctoral and postdoctoral studies, she conducted research on the use of machine learning and deep Artificial Intelligence (AI) architectures in image and audio applications.
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.
Ms. Kokolus is a technology and intellectual property transactions attorney. She has extensive experience working with emerging and established companies and technology-focused investors. Ms. Kokolus also bring a unique perspective on her practice with prior in-house roles at Apple Inc. in Cupertino, California and Panasonic Corporation in Osaka, Japan. She has guided the assessment of technology and intellectual property considerations for public transactions and private investments across various industries, including software, consumer-branded goods, media and entertainment, banking, payments and healthcare. Ms. Kokolus's experience also includes joint venture and collaboration work, along with providing product counselling advice. Her counselling advice focuses on artificial intelligence, including the establishment of governance programs and the management of compliance and related risks.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Thursday, July 31, 2025
- schedule
1:00 p.m. ET./10:00 a.m. PT
I. Transfer of patent ownership generally
II. Impact of preexisting rights and encumbrances
A. Rights that run with the patent
B. Encumbrances that run with the patent
III. Impact of preexisting licenses
A. Effect of assignment of the license agreement to new owner
B. Effect of retention of the license agreement by prior owner
IV. The assignment agreement and enforcement of the patent
A. Effect of preexisting licenses
V. Recent decisions
VI. Best practices for transferring patent ownership
The panel will review these and other key issues:
- How do preexisting encumbrances such as prior licenses impact the transfer of a patent?
- How can preexisting licenses or restrictions in an assignment agreement affect a new owner's ability to enforce the patent?
- What hurdles must counsel watch for when transferring patent ownership?
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