Beyond Hybrid Licenses – Strategies for Post Patent Expiration Payments in the United States

Abstract

The recent US Supreme Court decision in Kimble v Marvel confirmed that royalty payments based on post-patent expiration sales violate US patent laws and the Court’s often criticized 1964 Brulotte decision.  Fortunately, several alternatives exist for structuring deals that can extend payments beyond the expiration of a patent for a license that existed during the patent term.   This article explores those alternatives and proposes strategies that address the needs of business while complying with the patent laws.

Keywords: Kimble v Marvel, US supreme court, 1964 brulotte, patent terms