Licensees Can Sue in Federal Court to Resolve Issues Regarding the Scope of a Licensing Agreement Under State Law

more+
less-

It is not uncommon for parties to a license agreement to find themselves in a dispute regarding the meaning of the terms of that agreement. Questions often arise, however, as to when a party can go to court to resolve such a dispute and what court can properly hear the dispute. For example, if a licensor accuses a licensee of acting outside the scope of the license, must the licensee wait for the licensor to take some action or can the licensee take the initiative and ask a court to decide? Similarly, since license agreements are typically creatures of state law, must those disputes be heard in state court or can they be brought in federal court because the agreements involve federal patent rights?

The United States Court of Appeal for the Federal Circuit recently had the opportunity to address these issues in ABB Inc., v. Cooper Indus., LLC, No. 2010-1227 (February 17, 2011).1 In that case, the Federal Circuit determined that a licensee accused of acting outside the scope of a patent license, and thus infringing the patent, could take the initiative and seek relief in federal court by filing a declaratory judgment action and requesting that the court declare that the licensee's activities did not infringe the patent.

Please see full article below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

more+
less-

Finnegan on:

JD Supra Readers' Choice 2016 Awards
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×
Loading...
×
×