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   Selling ownership interest in a licensed patent?
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   Author  Topic: Selling ownership interest in a licensed patent?  (Read 553 times)
Ted Nolan
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Selling ownership interest in a licensed patent?
« on: Sep 10th, 2005, 11:36am »
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Would appreciate any help with this:
 
My company has a 1/2 ownership interest in a patent and is considering selling its interest to the other owner ('company B'). However, my company already has an outstanding license to 'company X' for the term of the patent. It is titled as a 'nonexclusive' license- except, there is a clause within the license where the LICENSOR (my company) has waived its right to grant other non-exclusive licenses (so, essentially, it's an exclusive license).
 
I was hoping someone could answer some questions I have on the implications of a deal with company B:
 
1. Would the license with company X in any way prevent a deal with company B? I couldn't find anything in the license itself that would prevent the LICENSOR (my company) from selling its ownership interest while the license is in effect, but was wondering if there were fed/state laws that might come into play.  
 
2. What happens to the license with company X if there is a deal with company B? Is it rendered essentially unenforceable (requiring company X to seek a new license with company B or risk being sued for infringement)? Or, does it automatically transfer over to company B with the transfer of my company's ownership interest (nothing in the license itself addressed this contingency)?
 
3. If the license doesn't automatically transfer to company B, could it be sold to company B in a separate transaction?    
 
Again, would appreciate any help.
 
Thanks,
 
Ted
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