IP Assignment Agreements

News & Analysis as of

District Court Grants Motion to Dismiss for Lack of Standing Where Co-Owners of Patent Were Not Joined in Original Complaint But...

Cobra International, Inc. ("Cobra") filed a patent infringement action against Defendants for infringement of U.S. Patent No. 5,821,858 ("the '858 patent"). Cobra alleged that the '858 patent was issued to Allan J. Stone, who...more

Intellectual Property Issues in Bankruptcy and the Exclusion of Trademark Licenses from the Definition of Intellectual Property

The Bankruptcy Code divides intellectual property into distinct categories depending upon the particular type of intellectual property. Issues with respect to intellectual property can be of utmost importance in bankruptcy,...more

Getting The Deal Through - Trademarks 2016: United States

1. Ownership of marks - Who may apply? An application may be filed by any person or legal entity that uses or intends to use a mark in connection with goods sold or distributed, or services transacted, in United...more

If It's Worth It, You Should Work It (As a Work Made for Hire)

With the growth of mobile apps, non-tech companies face the challenge of creating apps to promote and sell their services or goods. Because the creation of an app can be a one-time project, hiring an independent software...more

Reality Check: What Marcus Lemonis Learned About Purchasing Intellectual Property That Your Business Should Too

Entrepreneur and reality television star Marcus Lemonis, host of CNBC’s The Profit, has learned a tough lesson about contract law. With a business strategy that makes every lawyer cringe, Lemonis prides himself on having made...more

Baldwin v. EMI Feist Catalog, Inc. - USCA, Second Circuit, October 8, 2015

Second Circuit overturns district court ruling and holds that notice of termination sent to EMI for song “Santa Claus Is Comin’ to Town” successfully terminated 1981 grant of rights because, despite the lack of recordation of...more

What Every Technology Company Needs to Know About Assumption, Assumption and Assignment, Or Rejection Of Its Contracts In...

Technology companies can preserve both significant sums of money and valuable intellectual property rights if they take action when a customer or business partner files for bankruptcy protection....more

Bad Day for California as TTA Sales Tax Exemption for Software Is Broadly Reaffirmed by Appellate Court – Will Taxpayer Refund...

In a significant rebuff of the California State Board of Equalization (BOE), the California Second District Court of Appeal held that a manufacturer’s sale of software on tangible media was exempt from sales tax under the...more

Copyright Strategies for Start-Up Companies

As a leader of a start-up company, you are probably aware of the importance of protecting your company’s innovative products, services and technologies through patent filings. If you are savvy, you are also aware of the...more

Sublicensee’s Purchase of Licensee Not Prohibited under the License Agreement - VDF FutureCeuticals, Inc. v. Stiefel Labs., Inc.

The U.S. Court of Appeals for the Seventh Circuit ruled that a sublicensee of patent and trademark rights that purchased its sublicensor in order to reduce the royalties it owned to the licensor was not prohibited from buying...more

Hooli Needs New Lawyers on “Silicon Valley”

As is obvious from our many posts on the subject, we here at IP Legal Forum are big fans of the show “Silicon Valley.” That said, its season finale could have used more Jared Dunn (can we give him a spin-off already?), as...more

Protecting IP Through Employment Law [Video]

Oftentimes, a patent case will not be decided by patent law, but by employment law. If an invention was developed by an employee or a third-party contractor without the proper agreements in place, the company may find itself...more

Structure your start-up for fundraising success - Part Three: Protect your intellectual property

If you’ve determined that your new venture is going to require outside investment, there are a number of things you can do to make your company more attractive to investors. ...more

Budding Family Business Entrepreneur? Top Three Legal Tips You Need to Know

A recent New Tech Seattle event at the Seattle Center brought together a group of interesting budding entrepreneurs. Discussions with several people led to the realization that many of them are facing the same basic legal...more

Copyright Co-Owner’s Ability to Grant an Exclusive Right to a Third Party - Corbello v. DeVito

Revisiting the issue of a copyright co-owner’s right to grant an exclusive right to a third party, the U.S. Court of Appeals for the Ninth Circuit clarified its prior ruling in Sybersound v. UAV, and explained that a...more

Do You Really Own All Your IP?

As we discussed in our inaugural posts in this series, after management, the most valuable asset for most startups can be their intellectual property (IP). And as such, it is important for a startup to own its intellectual...more

Delaware Joins the 7th and 9th Circuits in Protecting Trademark License Owners from Non-consensual Bankruptcy Assumptions and...

The bankruptcy court in Delaware recently joined a number of bankruptcy courts in other jurisdictions protecting trademark owners’ rights to prohibit a debtor from either assuming or assigning a trademark without the...more

Start-Up Pack (Belgium)

In This Issue: - Welcome - An introduction to key legal documents for start-ups - Glossary of useful venture capital and company terms - A step-by-step guide to setting up a company in Belgium - A shareholders’...more

‘Fresh’ guidance on the importance of signed copyright assignments – High Court steps in to smooth out copyright dispute

The High Court of Justice of England and Wales recently delivered its judgment in a case relating to the ownership of the copyright of the ‘halo’ logo (the “Dude Logo”) used on the well-known brand of ‘Innocent’ smoothies...more

Do We Have the Right to Sell Our Products/Services?!

Intellectual property (IP) due diligence is an assessment of the IP owned or used by a company and third-party IP rights that may impact the company’s business. More often than not, companies do not think about IP due...more

What are you implying?

Case law teaches contractors a valuable lesson when dealing with ownership of copyright. It is essential to deal with each party’s position, typically through a written copyright licence, to avoid pitfalls further down the...more

Is “One Dollar” Sufficient for a Patent Assignment?

You may have read the recitals or introductory clauses in a license or an assignment agreement. In most cases, these clauses are just skimmed, if they are reviewed at all. In a recent decision of the US Federal Circuit Court...more

Oral Assignment Ineffective to Convey Patent Rights and Subsequent Assignment too Late to Save Complaint from Dismissal with...

The plaintiff, Freed Designs, Inc. ("Freed Designs"), filed a patent infringement action defendant Sig Sauer. Robert Freed is the sole inventor of the '764 Patent, titled "Grip Extender For Hand Gun." Freed is also the sole...more

Trademark Licensees May Be Protected in a Licensor’s Bankruptcy Even After a “Free and Clear” Sale

The Bankruptcy Code generally permits intellectual property licensees to continue using licensed property despite a licensor’s bankruptcy filing. However, because the “intellectual property” definition in the Bankruptcy Code...more

Make Sure You Own the Patent You Think You Do.

The biotechnology industry has a long history of successfully licensing and litigating university technology. That trend looks to be continuing, even as other industries have taken aim at limiting patent enforcement. Ten U.S....more

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