9.11.23: Obligation To Bring Actions Against Infringers

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Abstract

To facilitate actions against infringers or unauthorized converters (third parties) of intellectual property, the agreement will usually require the licensee to affix "patent ... patent pending," and "copyright" notices[1] in the places suggested by the relevant statute sufficient to provide the basis for infringement actions or other equitable remedies.[2] Whatever the form of notice, protection is not self-executing; somebody has to undertake the burden of bringing an action against an unlawful infringer, copier, or converter of the intellectual property in question. The agreement should allocate the obligation to undertake a defense or prosecution on that party-licensor or licensee-with the greater economic interest in maintaining the confidentiality or exclusivity of the material. The expense, of course, can be shared, but the responsibility for enforcement (and defense) should be focused so that at least one of the parties is forever alert to possible violations. [1] ...