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.
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?
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).
Licensing Translation Rights: Part II--Negotiating The Deal
Lloyd L. Rich of The Law Office of Lloyd L. Rich
In this article, the author discusses some of the key the key terms that will need to be discussed and agreed upon by the parties before a licensing agreement can be successfully concluded.
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.