Ilan Barzilay and Danielle Bochneak Published in Intellectual Property & Technology Law Journal
"The Ground on Which You Stand: Lessons in Licensing"

Ilan Barzilay and Danielle Bochneak authored the article, "The Ground on Which You Stand: Lessons in Licensing," published in the September 2010 issue of Intellectual Property & Technology Law Journal. The article discusses how research institutions that desire to hand off enforcement of their portfolios must make sure that sufficient rights beyond simple enforcement are given to their licensees or else they will find themselves unwittingly solely responsible for an infringement lawsuit. The authors note that this situation happened to the Massachusetts Institute of Technology in E8 Pharmaceuticals LLC v. Affymetrix, Inc. Similarly, the authors point out, Alfred E. Mann Found. for Scientific Research v. Cochlear Corp. provides guidelines for institutions wishing to license a patent but also wanting to retain the ability to sue just in case. The authors conclude that patentees and licensees alike should take note of the lessons of these and other cases when engaging in licensing to ensure that the desired party has standing to enforce a patent.