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Patent Ownership IP License Patents

Snell & Wilmer

Creating Wealth Through Innovation

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Much has been made of the demise of U.S. manufacturing. Once the U.S. was a manufacturing powerhouse, but much of its industry has now moved overseas or south of the border to low-cost countries such as China, India, and...more

American Conference Institute (ACI)

[Event] 6th Annual Summit on Life Sciences IP Due Diligence - November 28th - 29th, Boston, MA

ACI’s 6th Annual Life Sciences IP Due Diligence Summit is devoted to providing corporate and IP counsel with expert strategies for assessing, valuing, and commercializing IP assets when conducting strategic IP due diligence –...more

Linda Liu & Partners

Current State and Emerging Challenges of SEP Licensing for Intelligent Connected Vehicles in China (II)

Linda Liu & Partners on

III. Principles and Methods Adopted by Chinese Courts for Calculating SEP Royalties in Lawsuits in the Field of Communications - 1. Regarding Justiciability of SEP License Disputes in China - Interpretation of the Supreme...more

McDermott Will & Emery

Acts Supporting Induced Infringement Allegations Must Occur During Damages Period

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated a damages verdict because the acts supporting the induced infringement finding took place years before the statutory damages period and thus could not support a finding...more

Akin Gump Strauss Hauer & Feld LLP

Future Tense in Contractual Language Found Insufficient to Convey Title, Depriving Party of Right to License Patent

Applying recent Federal Circuit precedent requiring language evincing a present conveyance of patent rights, a district court in the Western District of Pennsylvania found that the contractual language “shall become the...more

Smart & Biggar

Mythe ou réalité ? Démystifier les mythes sur les brevets pour les dirigeants d’entreprises

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De nombreuses perceptions erronées ou « mythes » concernant les brevets sont présents dans le discours des dirigeants et des gestionnaires d'entreprise, allant du type d'innovations brevetables à l'importance de posséder et...more

Goodwin

Changes To March-In Rights Under Bayh-Dole And More?

Goodwin on

Since its enactment in 1980, the Bayh-Dole Act has been credited with promoting the development of over 10,000 startup companies and at least 200 pharmaceutical drugs and vaccines, while contributing more than $500 billion...more

WilmerHale

Essential Guidance for Non-(Standard) Essential Patent Pools: DOJ’s UTLP Business Review Letter

WilmerHale on

It has long been recognized that patent pools can create licensing efficiencies by establishing “onestop shops” for patents owned by multiple rights owners. There is also broad consensus that patentee collaboration in patent...more

Orrick - Trade Secrets Group

The Interplay of Patents and Trade Secrets in Protecting IP

Often companies are faced with a dilemma in protecting their IP—should the company disclose its IP to the world and seek a patent that will protect its IP for a set number of years? Or, should the company keep the IP a secret...more

Kidon IP

Employees or Independent Contractor Generated IP (Part 1)

Kidon IP on

This post will provide an overview of key IP issues encountered when dealing with employees and independent contractors. We will cover the default ownership rules and rights for different types of IP and some tips on how to...more

Farella Braun + Martel LLP

Monetizing University Patent Portfolios During the Economic Downturn

Colleges and universities may be leaving money on the table with under-utilized patent portfolios. The time is right, as the law has shifted in favor of patent owners, both in inter partes review litigation before the Patent...more

Latham & Watkins LLP

Unilever – Too Big to Pay?

Latham & Watkins LLP on

The Court’s decision rested on whether the patents provided outstanding benefit to the employer’s undertaking.  On 23 October, the UK Supreme Court (UKSC) handed down its highly anticipated ruling in Shanks v Unilever [2019]...more

Troutman Pepper

Pepper Hamilton Higher Education "In Brief" Webinar Series: Intellectual Property Basics - What Every Higher Education...

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With a constantly evolving legal landscape, colleges, universities and independent schools encounter a vast spectrum of new topics on any given day. Pepper Hamilton's Higher Education Practice Group has created its "In Brief"...more

Faegre Drinker Biddle & Reath LLP

Lack of Co-ownership for Terminally Disclaimed Patents May Doom a Lawsuit and Result in an Award of Attorneys’ Fees

Can lack of co-ownership for a terminally disclaimed patent render your otherwise well-founded infringement lawsuit baseless, requiring you to pay your adversary’s attorneys’ fees? At present, the answer may depend on the...more

Ladas & Parry LLP

Return Mail Inc. v. United States Postal Service

Ladas & Parry LLP on

On June 20, 2019, the United States Supreme Court held that government entities could not be considered “persons” entitled to challenge patents owned by others before the Patent Trial and Appeal Board (PTAB)....more

K&L Gates LLP

K&L Gates Triage: Five Key Questions for Academic Medical Centers About Patent Ownership and Enforcement

K&L Gates LLP on

On this week’s episode, George Summerfield and Kelly Plummer explore five key questions academic medical centers often face with respect to patent ownership and enforcement. Their discussion covers a number of issues,...more

Bradley Arant Boult Cummings LLP

Substance Over Labels: Establishing Standing in Patent Infringement Suits - Intellectual Property News

The Federal Circuit’s decision last week in Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, et al. (in addition to previous decisions from the court on this issue) emphasizes exactly how fact-specific the...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 17, Issue 2

USPTO Issues CBD Trademark Guidelines in Light of the 2018 Farm Bill: Key Takeaways - On May 2, 2019, the USPTO released its new guidelines on how it will examine federal trademark applications for CBD products in light of...more

Foley & Lardner LLP

When a Promise Isn’t Enough – Crafting Proper Employee Patent Assignments

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Manufacturers have an inherent interest in owning the intellectual property rights created by their employees in the course of performing their jobs. Employees are the engine that drives a manufacturer’s innovations, but...more

McCarter & English Blog: Government Contracts...

Contractors And Grantees Beware! Safe Harbors Removed In Preserving Patent Ownership Rights Under Bayh-Dole

Buried in a grab bag of seemingly innocuous course-correcting changes to the Bayh-Dole Act regulations (effective May 14 of this year) is the removal by regulators of the sixty-day window between the federal agency’s notice...more

Kilpatrick

NIST Revises Intellectual Property Rights Offered to Federally Funded Inventions and Licensing of Government Owned Inventions

Kilpatrick on

Patent Intellectual Property (collectively, “IP”) rights represent a significant element of many government contracts, including those for research and development, whether by commercial, non-profit or educational...more

Mintz - Intellectual Property Viewpoints

International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC. In Certain Audio...more

Snell & Wilmer

Amendments to Rights of Federally Funded Inventions and Government Owned Inventions

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On April 13, 2018, a final rule was published in the Federal Register adopting proposed rule changes from the National Institute of Standards and Technology (“NIST”)....more

Hogan Lovells

Calculating larger patent damages in China by burden shifting

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In China, most damages awarded in patent cases are statutory in nature despite the availability of additional options of calculating damages including losses by the plaintiff, profits obtained by the defendant, or where a...more

Jones Day

Owning the Patent Isn’t Always Enough for Standing

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In a recent Initial Determination (“ID”), Administrative Law Judge Lord ruled that a patent owner did not have standing to sue without joining a third party to which certain rights had been transferred. Certain Audio...more

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