Integrating Business Goals And The Law In Licensing Deals
Edward F. Perlman of Wolf, Greenfield & Sacks, P.C.
Today more than ever in-house counsel need to be aware of the broader business context in which a license functions. By understanding the pros and cons of granting or taking a license you can work together to create an agreement which will define those rights, obligations and liabilities necessary to create a win-win for both sides.
Commercialization: Get the Most Out of Your Intellectual Property Rights
Michael A. Diener,Barry J. Hurewitz,Barry J. Hurewitz,Barry J. Hurewitz and Barry J. Hurewitz of Wilmer Cutler Pickering Hale and Dorr LLP
Companies seeking to profit from their intellectual property may adopt a number of commercialization strategies, ranging from direct sales to the outright sale of their technology. Michael Diener of Hale and Dorr LLP discussed these two strategies, as well as the continuum of options in between them.
Bankruptcy Code Section 365(n) Protects Licensees Right to Continued Use of Intellectual Property
Carl T. Anderson of Paul, Hastings, Janofsky & Walker LLP
In the rapidly changing world of technology, it is not uncommon for large companies to become dependent .
Protecting Your Intellectual Property License in Bankruptcy
Joshua M. Marks of Arter & Hadden LLP
The recent economic slowdown has forced scores of businesses to shut down or file for protection under Title 11 of the United States Code (the "Bankruptcy Code"). Since more bankruptcies are forecasted, especially in the dot-com sector, the prudent licensee should understand certain rights available to it if one of its licensors enters bankruptcy.
Judge Overturns Record $1.5 Million Microsoft Verdict
Robert J Ambrogi and IMS Expert Services
Expert testimony proved to be the linchpin in a federal judge's Aug. 6th decision to set aside the largest-ever damages award in a U.S. patent case.
Technology-Based Joint Ventures
Richard Raysman and Peter Brown
Technology-based joint ventures are subject to rapidly changing technical standards, fluctuating markets and an emphasis on intangible services. But with careful legal planning, the joint venture can be an extremely effective vehicle for bringing together technology companies wishing to tap each otherÃÂs intellectual property assets, often allowing these parties to reach new markets or expand existing relationships.
University Technology Transfer Practices
Benjamin Thorner of Brobeck Phleger & Harrison LLP
Prior to the passage of the Bayh-Dole Act (the "Act") by Congress in 1980, inventions, writings and creations of American academic institutions were for the most part freely contributed to the body of public knowledge.
We've Got Algorithm--Software Patents Boom
Lori E. Lesser of Simpson Thacher & Bartlett LLP
?1999 Distributed Computing, all rights reserved; reprinted with permission. The race to be first wi.
Pitfalls in Intellectual Property Licensing in the European Union
Coudert Brothers LLP
U.S. companies licensing their intellectual property - patents, copyrights or confidential know-how ("IP".
Antitrust Implications of Patent Settlements: Balancing Patent Policy, Antitrust Law, and the Practical Limits of Litigation
Michael K. Friedland of The Federalist Society
In a perfect world, all patents would be valid and none infringed. In a near-perfect world, a mechanism would exist to rapidly and efficiently determine whether a patent is valid and infringed. We live in neither world.
Offering to Sell Your "Sliced Bread": A Potential Bar to Patentability
Lana M. Knedlik
I've worked with a lot of inventors, ranging from sophisticated universities to guys who just like to tinker with stuff in their garage. In nearly every case, the inventor considers his or her invention to be the greatest thing since sliced bread. Naturally, before filing a patent application, the inventor will often try to generate commercial interest in the invention.
Protecting Your Rights To Intellectual Property In Bankruptcy
Maureen C Dellinger and John S. Wesolowski of Pillsbury Winthrop Shaw Pittman LLP
This article recommends how creditors should protect their security interests in intellectual property. In addition, the author reviews how licensees should protect their intellectual property rights.
Patent Management: Preserve Your Damages by Proper Marking and Infringement Notices
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
Has your client marked his patented product with the patent number? Required his customers to do so? If not, shoul.
What is Intellectual Property?: Patents
Judith A. Silver of Coollawyer.com
Intellectual Property is the group of legal rights in things that people create or invent. Intellectual property rights include patent, copyright, trademark and trade secret rights. In Europe and some other countries, "moral rights", which are rights of the artist not to have her work greatly altered, are also included.
The Impact of Non-Traditional Patent Litigation on Cost/Benefit Analysis
J. Steven Baughman of Ropes & Gray LLP
When a company receives a cease-and-desist letter, the most dreaded question that intellectual property counsel must answer is, "What is this patent suit going to cost us?" While a traditional cost-benefit analysis may be used to calculate the settlement value of a case, the evolution of unorthodox twists in traditional patent litigation may affect your answer and change the valuation of the case and the possibility of settling at an early stage.
IP Strategies In Deals. Seminar Summary of Speaker Wayne Kennard of Hale and Dorr LLP
FindLaw M V
Wayne Kennard, partner at Hale and Dorr LLP, discussed how to create an effective assertion licensing program. It takes both in-house and outside counsel to look at it. One size does not fit all for a licensing program. One needs to look at one's own business to determine what a licensing program must accomplish.
FTC-Rambus Trial To Set The Standard For Antitrust-IP Overlap
M. June Casalmir and Bernard Rhee of Bryan Cave LLP
Against the backdrop of multiple, private patent infringement cases, as well as a two year Federal Trade Commission investigation, the trial of the Commission's case against Rambus, Inc. began on April 30, 2003. In the Matter of Rambus, Incorporated, Docket No. 9302. Although former FTC Administrative Law Judge (ALJ) James Timony handled most of the pre-trial process, recently sworn-in ALJ Stephen McGuire will be presiding over the trial.
Technology Licensing Agreements: Findlaw Interview with Richard C. Hsu of Townsend and Townsend and Crew
FindLaw M V
Richard C. Hsu is Co-Chair of the Technology Licensing Group, where he counsels and provides companies advice on all licensing transactions and associated intellectual property issues. He has extensive experience in licensing, development, acquisitions, service and other partnering agreements for a variety of industries, including semiconductors, life sciences, medical devices, hardware, software and telecommunications.
Destroying Patent Rights by Making an "Offer for Sale"
M. Henry Heines of Townsend and Townsend and Crew LLP
Patent infringement lawsuits are generally brought against parties that manufacture, use or sell, the patented invention without the patent owner's permission. Patent infringement can also occur when someone other has simply offered the invention for sale without the patent owner's permission. Sometimes in fact it takes very little to show that an offer has been made.
IP Value Extraction: Patent and Technology Licenses
Barbara A. Wrigley of Oppenheimer Wolff & Donnelly LLP
One of the most common methods of extracting value is through licensing. Corporate counsel and senior executives embarking on licensing programs should be aware of certain pitfalls that may result in costly disputes and the loss of patent rights.
IP Due Diligence in Biotech Business Transactions
William Schmonsees of Townsend and Townsend and Crew LLP
Intellectual property due diligence is generally conducted coincident with an investment or acquisition. Often the intellectual property is the most important asset of the target, particularly in the case of a start-up. Certain characteristics typify the due diligence process, regardless of the nature of the transaction, the underlying technology, or the size of the portfolio. Those characteristics include a short timeline, budget constraints, reliance upon representations made by counsel and the principals of the target, and the necessity of drawing conclusions.
Protecting Your Rights to Intellectual Property in Bankrupcy
Philip S. Warden of Pillsbury Winthrop Shaw Pittman LLP
A. Introduction. The United States bankruptcy laws affect intellectual property rights, particularly the rights.
Seller Beware: Granting licenses has its issues
Neil P. Ferraro of Wolf, Greenfield & Sacks, P.C.
Unlike most other kinds of property, Intellectual property, such as patents, trade secrets, trademarks and copyrights, is intangible - it is a product of the mind. But like other property, intellectual property (IP) can be sold, given away or licensed to generate revenue or other valuable assets.
A Buyer's Guide to Special-Interest Groups
Timothy F. Haslach of Schwabe, Williamson & Wyatt
For some time, silicon and hardware manufacturers have participated in cooperative programs for the development and promotion of widely adopted specifications. Such Special Interest Groups (SIGs) are crossing increasingly into the realm of combined software and hardware, or purely software specifications.
The Looming Crisis Over the Research Use Exception To Patent Infringement: What Madey Taught Duke University
Stephen B. Maebius and Harold C. Wegner of Foley & Lardner LLP
Madey v. Duke promises to set off a lively debate about the direction of research at federally funded universities and in particular the role of patents both to protect the intellectual property wealth of such institutions but also the very right to continue to function as research institutions, free from third party patent problems. The confirmation by the court that a nonprofit or other university enjoys no special privilege or experimental use exemption to conduct testing or research guarantees that in the 108th Congress there will be a reconsideration of earlier attempts to provide a statutory research exemption.
Business & Technology Report--Winter 1997
Wayne H. Shortridge and Edward S. Johnson of Paul, Hastings, Janofsky & Walker LLP
This Report discusses how to obtain confidential treatment for information furnished to the SEC; stock-based compensation in the biotech industry; insurance coverage considerations for technology companies; and Bankruptcy Code section 365(n) regarding licensees right to continued use of intellectual property.
Use of Unlicenced Contractors
Chu, Harold of Harold Chu, Attorney at Law, ALC
Hawaii Revised Statutes ?444-9 prohibits any person, corporation or entity from offering or .
Research Method Patents: A Territoriality Loophole?
Stephen B. Maebius and Harold C. Wegner of Foley & Lardner LLP
Recent trial court decisions have exposed an Achilles' heel in licensing regimes for research method patents. In Bayer AG v. Housey Pharmaceuticals, Inc., 169 F. Supp.2d 328 (D. Del. 2001), and in Trustees of Columbia University in City of New York v. Roche Diagnostics GmbH, 150 F. Supp.2d 191 (D. Mass. 2001), trial courts have sharply limited infringement liability for offshore use of patented methods, where the products introduced as the fruits of this research are ultimately manufactured without use of the patented methods. It remains to be seen what reception the U.S. Court of Appeals for the Federal Circuit will give to this issue.
Considerations In Licensing New Technology
Homer L. Knearl of Merchant & Gould P.C.
This review begins with the considerations on selecting a type of intellectual property to protect a new technology and follows up with practical considerations in licensing the intellectual property protecting the technology. With a new technology it is not always clear what type of intellectual property is the best fit to protect the technology. Accordingly, I?m going to take a couple of minutes to quickly review the relationship between tangible property, intellectual property and rights in the intellectual property.
Global Patent Considerations for the 21st Century
Dykema Gossett PLLC
There was a time when all U.S. business competitors and markets were domestic, and we only needed to protect our te.
HP's Patent Armada is Lost at Sea
Ronald S. Katz of Coudert Brothers LLP
In earlier issues, we have written about the torpedoing of Seiko-Epson's submarine patents and the sinking of Cano.
Patent Overview
Intellectual Property Law Group
What is a U.S. patent? A patent is a grant of an exclusive pro.
Defendant's Experts Help Make Plaintiff's Case
Robert J Ambrogi and IMS Expert Services
Expert witness opinion of patent infringement, offered by a patent owner during licensing negotiations, proved to be key evidence in establishing an "actual controversy" sufficient to allow the alleged infringer to bring a declaratory judgment action in federal court, the Federal Circuit Court of Appeals said in a March 26 opinion.