IP Assignment Agreements

News & Analysis as of

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

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

Jurisdiction Cannot Be Cured Retroactively If Plaintiff Lacked Substantial Rights to Patent When Suit Was Filed

In Diamond Coating Tech. v. Hyundai Motor, [2015-1844, 2015-1861] (May 17, 2016), the Federal Circuit affirmed the dismissal of a patent infringement action for lack of standing. The Federal Circuit agreed that Diamond...more

Registrar, Registry, Domain Name…A Quick Primer…

If you’ve got a really good memory, you remember that we talked about issues regarding the owning of your website back in August 2015. I promised then that we’d discuss “owning” your domain name (e.g. knowingstartups.com),...more

Here’s Another Fine Mess You’ve Gotten Me Into: Best Practices for Employee, Contractor and Consulting Agreements.

In This Presentation: Overview of Messes to Avoid: • Split Ownership • Agreements to Agree • Agreements with Unclear/Improper: – relation to prior agreements – term – royalty rate –...more

Obtaining and Recording IP Assignments

The earliest-acquired and most valuable assets of a typical startup company are the elements of that company’s intellectual property, which may include copyrights, trademarks, patents, and trade secrets. Failure to...more

Equitable Estoppel Stops NPE From Asserting Patents that its Assignor Failed to Assert

In High Point SARL v. Sprint Nextel Corporation, [2015-1298] (April 5, 2016), the Federal Circuit affirmed summary judgment that equitable estoppel and laches preclude prosecution of High Point’s claims for infringement of...more

Stent Contract Collapses Standing Argument - TriReme Med., LLC v. AngioScore, Inc.

Addressing the issue of when patent rights are assigned under a contract, the US Court of Appeals for the Federal Circuit overturned the district court’s finding that a prospective inventor had surrendered his rights to an...more

Proper Inventorship Still Matters, Even With a Proper Assignment

In a few recent cases, we see that failing to properly name inventors in a patent application can lead to unnecessary troubles for a company. This is true whether the assignment document is an employment agreement or an...more

Larson v. Warner Bros. Entertainment, Inc. - USCA, Ninth Circuit, February 10, 2016

Ninth Circuit affirms district court’s decision that 2001 letter operated as agreement by heirs of Superman co-creator to transfer to DC Comics rights in Superman, Superboy and Superman advertisements....more

Share and Share Alike? Not so fast.

The joint ownership of patents is governed by 35 USC 262: - In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the...more

IP Alert: "Are Your IP Assignments Effective?"

Many assignments of intellectual property are ineffective for failing to actually convey title as the parties intended. U.S. law is clear that only individuals may be inventors, who then may assign their inventions to...more

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor’s required declaration statements into an...more

Patent Strategies For Start-Up Companies

Patents can be vitally important for protecting the innovations of a start-up company, just as it is important for start-ups to be mindful of trademark, copyright, and domain name strategies (see our other guides for...more

Do the Paperwork: How Properly Executing Patent Assignments Can Win Your Case

Properly prepared patent assignments and IP assignment clauses in employment agreements can play a critical role in an IPR proceeding — for example, by preventing your own patent applications from becoming invalidating prior...more

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

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