Consider this scenario: You are a founder of a small company who has been offered a patent portfolio with pending applications for your company's very important technology. The party offering the portfolio had acquired it as a spin-out of a large competitor in your field who has been making noise about your technology infringing their intellectual property. The spin-out is moving in a different direction and believes selling or licensing the portfolio could bring them much needed funds. How much is this portfolio worth to you? How do you determine if the portfolio gives you the protection you need? Is this the answer to your prayers, or does it present a future nightmare?

Oftentimes, businesses address these questions too quickly, by looking only at the offered portfolio. However, as I show here, a deeper dive is needed to determine if you are getting everything you need in the license, whether the original owner may still have rights in the portfolio, and whether those residual rights can impede your ability to block competitors with the new portfolio.

A recent district court case in Delaware, Horizon Medicines v. Apotex, dealt with a somewhat similar scenario and it highlights an interesting intersection of patent law and contract law that has implications for anyone reviewing patent portfolios for value, whether as part of a larger corporate transaction or one specific to a sale or license of a portfolio.