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Checklist For Patent Owners re Helferich

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December 3, 2020

The Federal Circuit case of Helferich Patent Licensing v. New York Times (2015) should spur patent owners to prepare and license patents for products and complementary products to maximize potential revenue streams from their IP portfolio, writes Michael Woodward, in ipwatchdog. In Helferich, the Court concluded that even though patents are complementary, the licensing of one does not exhaust the claims of the other. Woodward provides a checklist of suggestions, such as: When preparing the patent applications, ensure that the claims covering the product and the claims covering the complementary product/use case are separate and distinct; consider the market and revenue streams of the product early on and file patent applications directed to each type of market participant or revenue stream identified; draft licenses narrowly in a way that makes it clear that only certain patents are licensed for certain participants and activities. He advises patent owners to take care when preparing and licensing patents to make sure that licensing of one or more patents does not exhaust the rights of complementary patents.

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