Title: Licensors face new challenges after the US Supreme Court's decision in MedImmune v. Genentech

Authors: Leslie Morioka, Scott Weingaertner

Addresses: White & Case LLP, 1155 Avenue of the Americas, New York, NY 10036-2787, USA. ' King & Spalding LLP, 1185 Avenue of the Americas, New York, NY 10036-4003, USA

Abstract: In a landmark decision, MedImmune v. Genentech, the US Supreme Court held that a patent licensee does not have to terminate or be in breach of its licence agreement before filing a lawsuit to challenge the validity or enforceability of the licensed patent in a declaratory judgement action. This paper reports on the state of the law before MedImmune, the MedImmune decision itself, and the impact of MedImmune on technology transfer and licensing, including the new leverage US patent licensees now enjoy in challenging their licensors. The paper also discusses possible ramifications as to license agreements in the future, including the antitrust implications of restrictive licence provisions in the USA, as well as various international aspects of technology licensing in Europe and Japan.

Keywords: declaratory judgement; patent licensing; technology transfer; Europe; Japan; right to sue; MedImmune v Genentech; antitrust implications; USA; United States.

DOI: 10.1504/IJTTC.2009.024909

International Journal of Technology Transfer and Commercialisation, 2009 Vol.8 No.4, pp.340 - 355

Published online: 03 May 2009 *

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