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The two-part Alice test on patent subject matter eligibility means patent owners and licensors face severe and potentially overwhelming obstacles in the licensing playing field, argues Eric Guttag, chair of the public policy legal task force of the Association of University Technology Managers.
There are two important criteria that can affect how, and even if, a patent licensing deal will be agreed. One is the relative bargaining leverage of the parties that may be involved in such licensing. The other is the actual or at least perceived value of the patent asset(s) which may be the subject of the licence.
Until about 2006, the patent owner/licensor may generally have had the upper hand in terms of bargaining leverage. However, two US Supreme Court decisions have generally tilted the relative bargaining position more in favour of the licensee and against the patent owner/licensor.
The first decision was the 2006 case of eBay v MercExchange. Before eBay, it was almost automatic that the patent owner could obtain a permanent injunction to prevent infringement of its patent, but this case has made it extremely problematic for a patent owner to secure a permanent injunction against an accused infringer of the patent.
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Eric Guttag, Association of University Technology Managers, AUTM, Alice, patent,