[Patentpractice] PoA/Representation of licensee and licensor?

Wed Jun 11 13:47:54 UTC 2025

Jim,

I haven't had this situation in patent prosecution but the representation agreement should spell out that you do not represent Licensor assuming you decide to represent only Licensee, which I would be inclined to go with to avoid issues when the parties disagree on something.

Roger
Masson
Senior Counsel
Hinshaw & Culbertson LLP
151 North Franklin Street, Suite 2500
,
Chicago
,
IL

60606
O: 312-704-3516<tel:312-704-3516>
 |
F: 312-704-3001<fax:312-704-3001>
RMasson at hinshawlaw.com<mailto:RMasson at hinshawlaw.com>
My Bio<https://www.hinshawlaw.com/professionals-roger-masson.html>
 |
hinshawlaw.com<http://hinshawlaw.com/>
 |
[Hinshaw LinkedIn Page]<https://www.linkedin.com/company/17618/>
[Hinshaw Facebook Page]<https://www.facebook.com/hinshawlaw/>
[Hinshaw Twitter Page]<https://twitter.com/hinshaw>
[cid:image004.jpg at 01DBDAAC.F97FBD50]<https://www.instagram.com/hinshawlaw/>
[Hinshaw & Culbertson LLP]<http://www.hinshawlaw.com/>
[cid:image006.jpg at 01DBDAAC.F97FBD50]<https://www.hinshawlaw.com/newsroom-news-hinshaw-90-year-anniversary.html>
[cid:image007.jpg at 01DBDAAC.F97FBD50]<https://www.hinshawlaw.com/newsroom-news-hinshaw-2023-2024-mansfield-rule-certification-trendsetter-firm.html>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Jim Larsen via Patentpractice
Sent: Tuesday, June 10, 2025 10:04 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Jim Larsen <jim at larsen-ip.com>
Subject: [Patentpractice] PoA/Representation of licensee and licensor?

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,

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?

Hinshaw & Culbertson LLP is an Illinois registered limited liability partnership that has elected to be governed by the Illinois Uniform Partnership Act (1997).

The contents of this e-mail message and any attachments are intended solely for the addressee(s) named in this message. This communication is intended to be and to remain confidential and may be subject to applicable attorney/client and/or work product privileges. If you are not the intended recipient of this message, or if this message has been addressed to you in error, please immediately alert the sender by reply e-mail and then delete this message and its attachments. Do not deliver, distribute or copy this message and/or any attachments and if you are not the intended recipient, do not disclose the contents or take any action in reliance upon the information contained in this communication or any attachments.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 2084 bytes
Desc: image001.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 2091 bytes
Desc: image002.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0001.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.jpg
Type: image/jpeg
Size: 1397 bytes
Desc: image003.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0002.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image004.jpg
Type: image/jpeg
Size: 1425 bytes
Desc: image004.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0003.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image005.jpg
Type: image/jpeg
Size: 11099 bytes
Desc: image005.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0004.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image006.jpg
Type: image/jpeg
Size: 39131 bytes
Desc: image006.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0005.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image007.jpg
Type: image/jpeg
Size: 45183 bytes
Desc: image007.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250611/7c86724e/attachment-0006.jpg>