[Patentpractice] PoA/Representation of licensee and licensor?

[Jim Larsen]

Dear Listmates,

I have a question of first impression (for me) regarding power of attorney.

A new client (Licensee) has, by license agreement, agreed to solely “be responsible for and shall control the preparation, filing, prosecution, protection, defense and maintenance of all claims relating to the Patent Rights [i.e., full interest in several existing foreign patents] licensed hereunder which are solely applicable to the Field of Use (“Licensee Claims”).”  Note: Licensor is currently a part owner of Licensee.

The agreement also requires that Licensor have a chance to review the text of each patent application “relating to Licensee Claims” before filing, and “Licensee shall give Licensor the opportunity to provide comments concerning the preparation, filing, prosecution, protection, defense and maintenance of the Licensee Claims, and shall give reasonable consideration to such comments….”

Acknowledging the potential breadth of “relating to” language, the license agreement was reportedly hard-fought, was executed before we got involved, and is not likely to change.  So, my question regards power of attorney and (joint?) representation.  I think we needn’t represent the Licensor, and Licensor’s “opportunity to provide comments” does not necessarily require us to directly communicate with Licensor.  Is it nevertheless advisable to get POA and conflicts waiver from both Licensor and Licensee? Or, since Licensor is a part owner of Licensee, would POA from and representation of Licensee be sufficient?

I see these and other variations as each having pluses and minuses, but I bet some of you have dealt with a similar situation.  What works best?
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