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A License to Make, Use, and Sell a Patented Product Inherently Includes Have Made Rights

June 11, 2009

By Jane Song and Julia Miller

Introduction

On May 22, 2009, the United States Court of Appeals for the Federal Circuit ruled in Corebrace LLC v. Star Seismic LLC, 2008-1502, that the right to make, use, and sell a patented product inherently includes the right for the licensee to have the product made for it by a third party. This holding may surprise many licensing practitioners whose common practice has been to include an express have made right in a patent license grant where such a right was intended to be granted. Under Corebrace, however, the drafter of a patent license agreement must include language evidencing a clear intent to exclude a have made right in order to rebut the presumption that a license to make, use, and sell a patented product includes an inherent right of the licensee to have the product made for it by a third party.

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