This clause says one party promises not to sue the other party for patent infringement—but only for specific patents or in specific situations. It's weaker than a full patent license because you don't get permission to use the patent; you just get a promise not to be sued. This matters because if the patent holder changes their mind (or a new owner takes over), they could still sue you, depending on how the non-assertion clause is written. For example, a company might promise not to assert their patents against you "for non-commercial use only"—meaning if you commercialize the product, they can sue. Non-assertion clauses are common in open-source software and tech partnerships, but they offer less protection than a license.
Non-assertion is better than nothing, but a license is better than non-assertion. If you must accept non-assertion, make sure it covers all the ways you plan to use the IP (commercial, non-commercial, modifications, etc.). Get it in writing that the promise survives even if the patent is sold to someone else. Ask whether the promise is exclusive to you or if they're giving it to your competitors too—if competitors get it, you lose your competitive advantage. ---
Frequently Asked Questions
What does this clause mean in simple terms?
This clause says one party promises not to sue the other party for patent infringement—but only for specific patents or in specific situations.
Why should I care about this clause?
It's weaker than a full patent license because you don't get permission to use the patent; you just get a promise not to be sued.
What are my options?
This matters because if the patent holder changes their mind (or a new owner takes over), they could still sue you, depending on how the non-assertion clause is written.
How does this affect small businesses?
For example, a company might promise not to assert their patents against you "for non-commercial use only"—meaning if you commercialize the product, they can sue.