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.
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.
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.
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.
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.
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.
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".
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.
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.
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.
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.