FRAND and Other Licensing Disputes

Patents, copyrights, and trade secrets can be some of a company’s greatest assets. Through a strong strategic licensing program, those IP investments can be leveraged to support company growth and strengthen a competitive edge. Cross licensing, patent pools, joint ventures, collaborative development agreements, and other licensing arrangements can potentially be very valuable for businesses, both strategically and financially.

When disputes over licensing come to fruition, our licensing lawyers know how to protect technology rights through a unique combination of technical competence and experience with a range of legal principles, including intellectual property law, contracts, and competition law. It’s our goal to resolve disputes effectively and efficiently while maintaining a deep understanding of a company’s unique concerns.

IP Licensing Dispute Resolution

Successfully resolving licensing disputes can be a very complex matter. You need someone on your side who not only has a strong understanding of how the law applies to your case and has experience handling IP licensing disputes, you need someone who has a technical understanding of the technology involved and what it means to your business. Brooks Kushman has a track record of success in representing businesses as both licensors and licensees in a wide range of industries in cases involving many different types of technologies. Types of disputes we handle include:

• – Royalty audits and deficiencies
• – Fair, reasonable and non-discriminatory (FRAND) licensing
• – Breach of contract and termination
• – Representation, warranty, and indemnification
• – Invalidity and non-infringement challenges

Whether a dispute is being handled through arbitration or mediation or in state or federal court, we are ready to help protect your business.

FRAND and Standard Essential Patents (SEP)

Licensing of standard-essential patent (SEP) portfolios under fair, reasonable and non-discriminatory (FRAND) terms increasingly is a critical issue in several technological areas, including telecommunications and network-enabled products. But as crucial as these agreements are, the legal framework behind them is very complex.

We are conversant in the unique issues surrounding SEP claims and are prepared to help clients every step of the way, from negotiating FRAND licensing terms to building a strategy to resolve FRAND disputes. When necessary, we’re able to provide aggressive litigation services. While developing a strategy for dispute resolution, we evaluate factors such as:

• – The role the SEP technology played in the development and approval of the relevant standard by the standard setting organization (SSO)
• – The scope and validity of patents in the SEP portfolio
• – The contribution of the relevant standard to product functionality
• – An economic analysis of the overall SEP patent landscape

Throughout the process, protecting the business concerns of our clients is always a top priority. Our unique combination of skills and experience that comes from advising clients facing SEP portfolio issues in a variety of industries makes Brooks Kushman a go-to firm for FRAND disputes and license negotiations.