Hello from France (-:
I am doing a research about "Improvements in patent licenses". In order to understand the American point of view on the issue, I have read and analyzed a great article of Professor Hal Milton entitled “Improvements in patent licenses” (AIPLA Quarterly Journal, 2006).
However, I did not quite understand when he explains:
“The ambiguity or indefiniteness does not reside in the word "improvement" per se, but rather in the antecedent to the words "it," "thereof," "thereto," "thereunder," "said invention”,"its improvements," or "improvements to it." Each of these words refers back to that antecedent that must be improved and, as such, the mere use of one of these clauses leaves open for interpretation the definition of the "it" to which the "improvement" is made” (p 337).
So, my question is to know why “it” should be interpreted whereas we know that it refers to “the licensed patent” in the contract.
In French law, according to the “Technical criteria”, improvement clauses cover “only the improvements defined by the claims of the first licensed patent”, whereas according to the “Commercial criteria”, these clauses cover “all improvements competing commercially with the licensed patent”. So, in order to determine the scope of improvement clauses, the question is to know what criteria should be adopted.
I would be very grateful if someone could help me understand why in American law, the ambiguity does not reside in the word "improvement".
Thank you !
A summary of the article :
The word "improvements" and clauses of like connotation are usually added to patent license agreements as boilerplate, without an analysis of the true meaning of such clauses and without the parties being aware of the various meanings of "improvements" in case law. The parties include these words to convey rights in future inventions and patents that define those inventions.
Common "improvement" clauses and clauses of like connotation generally read:
"and improvements to it";
the invention or patent and any improvements thereof';
any improvements or modifications of said invention";
any patents issued pursuant thereto, any other patents issued in respect of such invention or its improvements, and any exploitation thereof or developments related thereto"; or
as well as all improvements that may be made thereto or thereunder."