My New Article on Granting Language in Patent License Agreements

Jan Feb 2016 LandslideThe January/February 2016 issue of Landslide, the magazine of the ABA Section of Intellectual Property Law, contains my article Granting Language in Patent License Agreements: An Analysis of Usages. I recommend the PDF version, here, but there’s also the online version, here. (The PDF provided by Landslide was unsatisfactory, so the PDF is based on my manuscript. The only difference is that the headings contain italics, where appropriate, and the endnotes contain some hyperlinks.)

As the title suggests, the article discusses an array of words and phrases that you find in patent license agreements. And as usual, I take the opportunity to slay some sacred cows.

I think I’ve established some IP cred in recent months, what with this article and the one on use of the phrase inures to the benefit in trademark license agreements (here). I’m essentially a stranger to intellectual-property law, but in writing these articles I applied the approach I bring to bear in all my writing: I check what’s used in contracts, review all relevant subject-matter literature, bring to bear some semantic acuity, and hey presto. I can do the same for any contract language, no matter how specialized.

Writing these articles reminded me of how, in the waning days of my law-firm existence, I attended a lunchtime presentation on drafting IP contracts. The speaker was an IP partner, and he ended up offering an idiosyncratic take on some mainstream drafting notions. IP guys, you are not an island: it’s best to base your contract usages on general guidelines for clear and modern contract prose.

[Updated 4 February 2016: Go here to read Mark Anderson’s thoughts on my article.

By the way, I’m under no illusion that I, an IP interloper, have somehow set the IP world straight. An article like this might seem a definitive statement, but it’s more a starting point. The more input from the likes of Mark, the better.]

About the author

Ken Adams is the leading authority on how to say clearly whatever you want to say in a contract. He’s author of A Manual of Style for Contract Drafting, and he offers online and in-person training around the world. He’s also chief content officer of LegalSifter, Inc., a company that combines artificial intelligence and expertise to assist with review of contracts.