Williams Mullen's Trending Now - An IP Podcast - Intellectual Contracts
Protecting IP Through Employment Law
The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more
In today's extremely rich material environment, many consumers choose goods not only based on simple cost performance to decide, but are willing to pay for creativity and brand value recognition. Consumer choice trends...more
An assignment or transfer (right) clause in a technology contract can be crucial. The clause must be drafted accurately while also ensuring that any allowances or restrictions on assignment or transfer apply....more
IN RE: SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., LG ELECTRONICS USA, INC. [OPINION] (2021-139, 2021-140, 6/30/2021) (Lourie, Dyk, Reyna) - Dyk, J. Granting the writs of...more
On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Amy Pruett is joined by Janet Cho and Ed White to discuss approaches to IP-related agreements during a pandemic....more
As businesses consider how to transition to a "new normal," a thorough review of intellectual property (IP) assets and a protocol for managing those assets should be part of the planning process. For many companies, the...more
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
In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more
In a highly anticipated decision on the Saint Regis Mohawk Tribe’s motion to terminate inter partes review proceedings, the Patent Trial and Appeal Board rejected tribal sovereign immunity to IPRs. The PTAB’s decision also...more
Sovereign Immunity - Sovereign immunity exempts a sovereign from the jurisdiction of a court - States are entitled to sovereign immunity under the 11th amendment Seminole Tribe of Fla v. Florida, 517 U.S. 44 (1996) ...more
You are in negotiations with a copyright owner to obtain a license to her work, which you want to publish, distribute, and/or license yourself. You want to ensure that you have the right to enforce the copyright against...more
For declaratory judgment (DJ) actions concerning patents, whether a patent owner’s conduct is sufficient for there to be a real and immediate controversy is the usual jurisdictional hurdle. In BASF Plant Science, LP v. Nuseed...more
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
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
In This Presentation: Overview of Messes to Avoid: • Split Ownership • Agreements to Agree • Agreements with Unclear/Improper: – relation to prior agreements – term – royalty rate – execution ...more
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
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
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
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
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
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