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.
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.
When "Exclusive" is not "Exclusive" and "Compulsory" not "Compulsory:" eBay v. MercExchange and Paice v. Toyota
David L. Applegate of The Federalist Society
The source of American patent law in the Constitution empowers Congress to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." But just what does this mean and have Congress and the courts been faithful to that grant of power?
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.
New Developments In Assessing Customs Duties On Royalty For Imported Goods In China
R.Z. Margaret Lu and Yuping Wang of Davis Wright Tremaine LLP
Following China's accession to the World Trade Organization (WTO) in December 2001, the Customs General Administration of the People's Republic of China promulgated Measures of the People's Republic of China Customs on Examination and Determination of Customs Duties Levied against Imported and Exported Goods (the "Measure"). The Measure replaced two pre-WTO regulations on the same subject, and set forth the rules, among others, for assessing customs duty on royalties to be paid by buyers of imported goods and the payment of such royalties is the seller's condition to selling the goods into China.
The Value of "Research Tool" Patents in View of Integra v. Merck
Deborah A. Somerville and Jeffrey S. Ginsberg of Kenyon & Kenyon LLP
On June 6, 2003, the Court of Appeals for the Federal Circuit seemingly breathed new life into research tool patents when it held that the use of patented peptides for drug discovery was not exempt from infringement under the "safe harbor" provision of 35 U.S.C. § 271(e)(1).
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.