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Robbins Shares Insights on Brulotte Rule in Law360

Spencer Fane Partner Glenn Robbins was featured as a guest author in Law360 this past week, offering his insights on the Brulotte rule, which restricts patent holders from receiving license royalties following a patent’s expiration.

In June of this year, the U.S. Supreme Court revisited the rule in Kimble v. Marvel Entertainment LLC and ultimately upheld it despite significant criticism of its economic impact. Based on the outcome of this case, as well as many previous unsuccessful challenges, it is safe to say that the Brulotte rule is not going to change anytime soon, reported Robbins.

However, there are some strategies that patent holders can execute to ensure compensation after the patent’s term is up. In the article, Robbins outlined several of these approaches including the following:

  • Base royalty payments on an overall portfolio of patents.
  • License the invention together with another asset whose life can exceed the patent, such as an associated trade secret.
  • Create a separate entity for marketing the invention to which the patent could be assigned.

Robbins has been an intellectual property attorney for nearly three decades and has extensive experience in the prosecution of patent and trademark applications as well as handling patent litigation and inter partes actions before the Trademark Trial and Appeal Board. He routinely counsels clients on contracts, licensing and due diligence matters pertaining to trademark rights.

Robbins’ professional achievements have earned him numerous accolades including being named one of The Best Lawyers in America in patent law, trademark law and copyright law. He is also an AV-rated attorney by Martindale-Hubbell, the highest ranking of professional excellence and a distinct honor.

To learn more on Robbins’ strategies for navigating the Brulotte rule, read the full Law360 article here.