LaFrance on Zila v. Tinnell, 502 F.3d 1014 (9th Cir. 2007)

Document Type

Response or Comment

Publication Date



In spite of two Supreme Court precedents, uncertainty continues to surround the enforceability of patent licensing agreements which require the licensee to continue paying royalties for the use of an invention even after its patent has expired. The Supreme Court invalidated such a clause where, in the Courts view, it amounted to an improper attempt to extend the scope of the patent monopoly. However, the economic assumptions underlying this rationale have come under question. This commentary, written by law professor Mary LaFrance, examines the Ninth Circuits 2007 decision in Zila v. Tinnell, addressing the question of whether, and to what extent, a licensee can be required to continue paying royalties after one of several patents on the licensed invention has expired.

Publication Citation

2008 Emerging Issues 1758.

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