December 15, 2003 | The case of Medimmune vs. Genentech, Celltech et al., described in the main article, illustrates how the patent landscape can change dramatically. Later-issued patents can trump what appear to be key industry patents. The term over which patents will protect important technology, and thereby present barriers to entry for competitors, can change as new patents issue.
Companies seeking licenses from patent holders may take away four lessons from the Medimmune case:
1. Licensees should negotiate to include in their licenses as expansive a definition as possible of the licensed patent rights.
2. Licensees should negotiate for the right to deduct from their royalty payments royalties they might later owe on other patents they might need to license.
3. Licensees should negotiate to set a date beyond which they will no longer owe royalties, even as additional patents with later-expiring terms issue.
4. Companies should monitor changes in the patent landscape on a regular basis in an effort to avoid surprises and to reduce the likelihood that a particular patent becomes a major hurdle to their business success.
Back to When Patents Persist