In-house Reveal Tips and Tricks for Tackling Licensing Valuation

Determining the value of a patent or a patent portfolio is critical in negotiating patent licensing deals. However, getting both parties to agree on the value can make the process difficult. Managing Intellectual Property interviewed Finnegan partner Brian Kacedon for insight into how businesses can work to negotiate licensing terms that are beneficial for both sides.

Brian says if a company has access to what their competitors are paying for the same or similar technology, they can draft or request most-favored licensee clauses to ensure they do not pay significantly more than what others are paying for that technology.

Brian also commented on how indemnification plays a role in licensing agreements. He notes it is important for a party that indemnifies another to set out a reasonable limitation or a cap on how much it can be responsible for. An indemnifier should also make sure that if it is responsible for litigation, it gets to control the litigation. Lastly, Brian says companies should think twice about asking smaller businesses to indemnify them because the small entities may not have the resources to stand behind the litigation.

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