FRAND and Other Licensing Disputes

Patents, copyrights, trademarks, and trade secrets are a major investment in your company’s future competitiveness and business success. Many IP owners opt to leverage their IP investment through a strategic licensing program. Carefully planned licenses permit technology owners to “discover” untapped sources of revenue, such as by licensing technologies for use in noncompetitive fields. In addition, a well-constructed licensing venture may yield tremendous strategic value to a technology company through cross-licenses, patent pools, joint ventures, and collaborative development agreements. IP licenses also benefit companies seeking to access the latest technology. In many cases, “licensing-in” critical technology may be a cost-effective alternative to a costly in-house research and development project.

In addition to guiding clients through the licensing process, Brooks Kushman has experience representing clients in licensing disputes involving a broad range of industries and technologies. We have assisted companies to resolve license matters including:

  • 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

Success in resolving licensing disputes requires a unique set of practice skills and experience. To be effective, a firm must possess both technical competence in the underlying technology and a mastery of the controlling legal principles, often a combination of intellectual property, contract, and competition law. In addition, counsel must be “tuned in” to each company’s specific concerns, and have the experience to resolve the dispute efficiently and effectively.

We have a long track record of success representing both licensors and licensees in IP license disputes, including mandatory arbitration and mediation proceedings and litigation in state and federal courts. We understand technology and why it is important to each client’s business. We know how to protect technology rights when disagreements jeopardize a license relationship. Our trial attorneys also have the trial skills and experience to win, whether the dispute will be decided in an arbitration tribunal or court. Our litigation practice is focused on technology issues, and that focus allows us to provide exceptional advice and representation in licensing disputes.

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. FRAND issues require a comprehensive package of knowledge, skills, and experience, including technical competence, a detailed knowledge of the complex legal framework of FRAND licensing, experience negotiating FRAND license terms and -- when necessary -- an aggressive litigation capability. Our experienced licensing, patent, and litigation attorneys have extensive experience in navigating and resolving FRAND licensing disputes on behalf of our clients.

Recently, SEP portfolio owners and their licensing agents have demanded that manufacturers of products outside the telecommunications space agree to expensive license terms. Our team of attorneys are conversant in the unique issues surrounding SEP claims, and assist clients in evaluating the best strategy for resolving FRAND disputes on favorable terms.  The best approach may depend on factors including: 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, and an economic analysis of the overall SEP patent landscape. Above all, we focus on the client’s individual business concerns and objectives. Our goal is to provide high-quality, timely, and cost-effective representation, leading to a successful conclusion through negotiation or, if necessary, litigation.

At Brooks Kushman, our goal is to protect clients and their work in intellectual property and technology. Our experienced attorneys are ready to provide practical advice and dedicated representation in patent licensing disputes, including FRAND and SEP licensing issues. Our unique complement of skills and the 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.

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