61 Pages Posted: 14 Dec 2016 Last revised: 16 Feb 2017
Date Written: December 1, 2016
In the age of the patent troll, patents are often licensed and transferred. A transferred patent may have been subject to multiple complex license agreements. To what extent do such agreements bind subsequent owners of the patent? The prevailing framework for analyzing this issue is inadequate. This article attempts to develop a more useful framework for determining the effects of a license agreement on the underlying patent rights, using Hohfeld’s jural relations and the “bundle of sticks” conception of property. A license agreement can diminish the bundle of in rem patent rights initially granted by the USPTO, and a new patent owner takes only the diminished bundle of rights upon transfer, given that one cannot transfer more than what one owns. The bundle theory can provide greater clarity regarding the extent to which licenses “run with the patent,” and also has implications for how patent transfer affects other doctrines such as patent exhaustion, FRAND obligations, prior user rights, and laches.
Keywords: license, bundle, Hohfeld, trolls, LOT, exhaustion, laches, in rem, FRAND
Suggested Citation: Suggested Citation
Michaels, Andrew C., Patent Transfer and the Bundle of Sticks (December 1, 2016). GWU Law School Public Law Research Paper No. 2016-57; GWU Legal Studies Research Paper No. 2016-57. Available at SSRN: https://ssrn.com/abstract=2883829