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IP Assignment Agreements

Intellectual Property and Business: Part 4

by Barley Snyder on

(NOTE: This is the final part of a series of alerts linking intellectual property and economic strategy.) Once a business identifies that it has acquired intellectual property, business policies and conduct can make...more

Intellectual Property and Business: Part 3

by Barley Snyder on

(NOTE: This is part 3 of 4 in a series of alerts linking intellectual property and economic strategy. You can read part 1 here and part 2 here. Check back each week for a new installment.) - Selling Intellectual Property...more

PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs

by Knobbe Martens on

The PTAB recently designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in IPR proceedings in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290,...more

What Would the Perfect Employee Agreement Look Like?

Lawyers strive for perfection in their work, but time constraints, budgets, and other factors work against us. Also, perfection is not always the same thing in every circumstance. It is interesting, however, to contemplate...more

Boletín Mensual de Comercio Internacional: Mayo - Información con énfasis en la Regulación Comercial y de Arbitraje Internacional

by Holland & Knight LLP on

Comercio U.S. Trade Representative - Estados Unidos notificó a su Congreso la intención de iniciar negociaciones con Canadá y México en relación a la modernización del Tratado de Libre Comercio de América del Norte, las...more

The Katten Kattwalk | Issue 12

The Katten Kattwalk discusses legal issues in the fashion industry affecting the trademarks, patents and copyrights associated with companies, brands and products. Please see full Newsletter below for more information....more

Defect in Patent Assignment Results in IPR Challenge Effectively Going Unopposed

by Knobbe Martens on

Old Republic’s IPR petition was effectively unopposed due to a defect in the chain of assignment, which led the PTAB to hold all claims unpatentable without considering arguments or evidence submitted in favor of...more

Key IP Questions For Emerging Businesses

Are you starting a new company or business venture? Launching an exciting new product or expanding into a new business line? Congratulations. Just remember, if you wind up with a high-growth opportunity, it can often pay big...more

PTAB Applies Collateral Estoppel to Exclude Purported Patent Owner

by Knobbe Martens on

The PTAB issued an order applying collateral estoppel to determine that one purported owner of U.S. Patent 7,215,752 and U.S. Patent 7,844,041 (the “challenged patents”) had no authority to act as the patent owner in...more

Help! Someone Copied My Stuff!

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an...more

Don’t Take Your Eye Off the Ball or Your Patent Assignment Will End Up in the Dirt

In Intellectual Ventures I LLC v. Erie Indemnity Company, [2016-1128, 2016-1132] (March 7, 2017), the Federal Circuit affirmed in part, vacated in part, and remanded in part the district court’s decision finding all claims of...more

Improper Assignment of THE EMERALD CITY Mark – Registration Cancelled in Toto

by Dorsey & Whitney LLP on

Assignment of an intent-to-use trademark application can be fraught with risk. To deter “trafficking” in ITU applications, Section 10 of the Lanham Act prohibits the assignment of an ITU application before an amendment to...more

Copyright and Trademark Case Review: Copyright Preemption, Software-as-a-Service and Popularity on the Internet

by WilmerHale on

Copyright Decisions - Claim for Copying of Useful Article Design Preempted by Copyright Act: Ultraflo Corp. v. Pelican Tank Parts, Inc., No. 15-20084 (5th Cir. Jan. 11, 2017)...more

Employers Don’t Own Your Brain; They Merely Rent it

New Jersey is apparently about to join the list of states with statutes that protect the rights of inventors. Generally, inventions made by employees belong to the employee, unless (1) that employee was specifically hired to...more

EPO Begins Enforcing Dual-Party Execution of Assignments

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In...more

Stricter Rules for Patent Assignments in Europe

Many patent offices, including the USPTO, will record a transfer of rights on the basis of a document that has been signed only by the assignor. The European Patent Office (EPO) has traditionally followed the same practice,...more

Paying for software development? Make sure you own it!

by Butler Snow LLP on

In a digital society dominated by the saying, “there’s an app for that,” copyright protection is essential. Paying to have a work created does not automatically vest ownership of the copyright in the paying party. When making...more

Intellectual Property in Medicine: Initial Considerations

by Davis Brown Law Firm on

Physicians are well-positioned to generate new inventions and thereby improve the treatment of their patients. As a result, physicians have historically been some of the best and most active inventors in the United States. ...more

Judge McMahon Dismisses Case Because Agreement that Inventor “will assign” Doesn’t Mean “did assign”

On June 14, 2016, S.D.N.Y. District Judge Colleen McMahon granted defendants HTC Corporation, HTC America, Inc., Blackberry Limited, Blackberry Corporation, and Motorola Mobility LLC’s (collectively “Defendants”) motion to...more

Where’s My %$^&# Dollar?

The issue of consideration in an assignment is always in the background, but only occasionally comes up. In Memorylink Corp. v. Motorola Solutions, Inc., 773 F.3d 1266, 113 USPQ2d 1088 (Fed. Cir. 2014), the Federal Circuit...more

Brumley Heirs Win Fight over Rights to Old Gospel Song *WEB ONLY**

by McDermott Will & Emery on

Addressing the termination right given to authors and their heirs under the Copyright Act, the US Court of Appeals for the Sixth Circuit concluded that four siblings could use their right to terminate the transfer their...more

To Confer Standing, Assignment Must Transfer Entire Exclusive Right

by McDermott Will & Emery on

Addressing the issue of standing, the US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a patent case brought by an exclusive licensee, finding that the original assignee had not transferred...more

North Carolina Supreme Court Denies Employee's Claim to Patent Ownership Based on Pay Dispute with Employer

Under the “hired to invent” doctrine, employees who develop intellectual property during the course of their employment generally have no ownership rights to such innovations. Earlier this month, the North Carolina Supreme...more

MAG Aerospace Industries, Inc. v. B/E Aerospace, Inc. (Fed. Cir. 2016) - Equitable Assignor Estoppel Doctrine Expanded by Federal...

Arcane aspects of the law are frequently analogized as constituting "traps for the unwary," and patent law seems to have more than its share of minutiae that fall within that characterization. The equitable principle of...more

Copyright and Trademark Case Review: Sibling Rivalry, Grilled Meat and Attorneys' Fees

by WilmerHale on

Copyright Opinions - Sixth Circuit Upholds Siblings' Termination of Brother's Copyright Assignment: Brumley v. Albert E. Brumley & Sons, Inc., No. 15-5429 (6th Cir. May 16, 2016) - Sutton, J. In a declaratory...more

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