Patent Licensing
1/28/2008 4:48:30 PM EST
Mary LaFrance on Enforcement of Contractual Royalty Obligations After Patent Expiration: Zila v. Tinnell, 502 F.3d 1014 (9th Cir. 2007)
Professor of Law, William S. Boyd School of Law, University of Nevada Las Vegas
In spite of two Supreme Court precedents, uncertainty continues to surround the enforceability of patent licensing agreements requiring the licensee to pay royalties after the licensed patents expire. Law Professor Mary LaFrance examines the Ninth Circuit's 2007 decision in Zila v. Tinnell, which addressed the question of whether, and to what extent, a licensee can be required to pay post-expiration royalties. Professor LaFrance writes:
Despite the criticism of Brulotte and its conventional interpretation, the circuit courts will refuse to enforce royalty provisions that require continued payment of unreduced royalties on patents after expiration. What remains unsettled, however, is whether courts will uphold a royalty provision that calls for a reduced royalty after patent expiration. Because Aronson upheld a reduced royalty where no patent actually issued, it does not guarantee enforceability of a reduced royalty after patent expiration.
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