Licensing Procedures & Policies Flashcards
7 cards from real CLP practice questions. Tap to flip, then mark Knew It or Still Learning — missed cards come back until you master them.
Read the first 7 Licensing Procedures & Policies flashcards as text
What is the Bayh-Dole Act's primary impact on university licensing?
Answer: It allows universities to retain ownership of inventions made with federal funding and license them commercially
The Bayh-Dole Act of 1980 gave universities and small businesses the right to own and commercialize inventions developed with federal research funding.
When a licensee challenges the validity of a licensed patent, the licensor's first legal tool is often to:
Answer: Assert a 'no-challenge' clause if one exists in the agreement
Many license agreements include no-challenge clauses that prohibit licensees from contesting patent validity, though their enforceability varies by jurisdiction.
Which valuation method determines a royalty rate by analyzing what a willing licensor and licensee would agree to in an arm's length transaction?
Answer: Market approach / comparable transactions
The market approach, or comparable transactions method, benchmarks royalty rates against actual deals for similar IP in similar industries.
In a standard technology licensing agreement, 'milestone payments' are typically triggered by:
Answer: Achievement of specific development, regulatory, or commercial events
Milestone payments are contingent lump-sum payments made when the licensee achieves defined development stages such as clinical trial completion or regulatory approval.
What is the key legal distinction between an 'exclusive license' and an 'assignment' of patent rights?
Answer: An exclusive licensee holds a contract right, while an assignee holds title to the patent itself
Assignment transfers ownership of the patent, while even an exclusive license is merely a contractual right to use — the licensor retains title.
Which royalty base is typically preferred by licensees to minimize payment disputes?
Answer: Net sales of products incorporating the licensed technology
Net sales is preferred as a royalty base because it excludes taxes, returns, and allowances, providing a clear and auditable figure tied directly to the licensed product.
In a government license context, the term 'march-in rights' under Bayh-Dole allows the federal government to:
Answer: License or compel licensing of a federally funded patent if the commercialization is inadequate
March-in rights allow federal agencies to require the patent holder to license a Bayh-Dole invention to third parties if it is not being adequately commercialized.