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Royalties Patents License Agreements

CJEU Confirms EU Competition Law Does Not Prevent Royalties for Revoked Patent Licences

by K&L Gates LLP on

On 7 July 2016, the Court of Justice of the European Union (CJEU) ruled that, provided that a licensee is free to terminate a licence agreement on reasonable notice, it can be obliged to pay royalties even after the patent...more

EU Court Rules That Royalties for Unpatented Technology Are Not Necessarily Anticompetitive

by McDermott Will & Emery on

On 7 July 2016, the Court of Justice of the European Union (CJEU) handed down a judgment on whether Article 101 of the Treaty on the Functioning of the European Union (TFEU) must be interpreted as precluding effect being...more

[Webinar] Best Practices for Licensing in Today's Evolving Legal Framework - June 16th, 1:00pm CST

by Robins Kaplan LLP on

The Supreme Court of the United States recently held that royalty payments beyond the expiration of a patent are per se unlawful. However, many ground-breaking technologies being developed and licensed from the nation's...more

Drafting Intellectual Property Agreements: Best Practices From a Litigator’s Perspective

As intellectual property licensing continues to grow more prevalent, legal practitioners and business personnel are being asked to craft and negotiate agreements that can significantly impact a business’s ability to compete...more

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

by McDermott Will & Emery on

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

Ninth Circuit Affirms Judge Robart’s RAND Decision (Microsoft V. Motorola)

by Kelley Drye & Warren LLP on

Yesterday, the Ninth Circuit court of appeals issued a decision affirming Judge Robart’s RAND decision in the much watched Microsoft v. Motorola case, basically ruling that the determination of a reasonable and...more

The Finite Life of a Patent Upheld: No Royalties After Expiration

The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more

Supreme Court Declines To Overrule Brulotte Rule: Post-Expiration Patent Royalties Remain Unlawful

by Brooks Kushman P.C. on

Background - Fifty years ago, the U.S. Supreme Court ruled that a patent license agreement that requires the licensee to pay royalties after the expiration of the licensed patent is unlawful per se, because such payments...more

Kimble and Post-Expiration Royalties: The Next Big Thing, or Much Ado About Nothing?

by Mintz Levin on

Today, as we previewed here, the US Supreme Court analyzed the question of whether patent holders should be allowed to contract for royalty payments that continue to accrue after the expiration of the subject patent. While...more

Supreme Court Corner: Q4 2014

by DLA Piper on

KIMBLE V. MARVEL ENTERPRISES, INC. Patent Licensing - Cert. Pending - Issue: Whether the Supreme Court should overrule Brulotte v. Thys Co., which held “a patentee’s use of a royalty agreement that projects...more

Will the Supreme Court Remove Brulotte’s Shadow Over Patent Licensing?

by Morrison & Foerster LLP on

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Although criticized by scholars, antitrust agencies, and the...more

Supreme Court 2014 Patent Preview

by Brooks Kushman P.C. on

On average, the U.S. Supreme Court historically hears fewer than one patent case each term. For example, in the 14 years between 1982 and 1995, the Court decided only five patent cases. In the seven years between 1995 and...more

Supreme Court to Decide Whether License Agreements May Require Payment of Royalties After Patent Expiration

by Goodwin on

The U.S. Supreme Court Friday agreed to revisit a longstanding precedent that bars patent owners from collecting royalties after their patents have expired, even if those post-expiration payments represent compensation for...more

License Definition Trumps Need for Actual Infringement Finding

by McDermott Will & Emery on

Cellport Systems, Inc. v. Peiker Acustic GMBH & Co. KG - In a case addressing whether royalties are due under a patent licensing agreement even if the products are not covered by the patents, the U.S. Court of Appeals...more

Indiana DOR Finds Economic Nexus, Disregards UPS

by Morrison & Foerster LLP on

The Indiana Department of Revenue recently concluded that a company that earned royalty income from licensing trademarks and trade names to two of its Indiana affiliates, and had no physical presence in the state, nonetheless...more

U.S. Supreme Court Holds That Patentees Bear the Burden of Proof of Infringement in DJ Actions Brought by Licensee

A patentee bears the burden of proving infringement when a licensee seeks a declaratory judgment of non-infringement, the U.S. Supreme Court has held. The ruling reversed the Federal Circuit and clarified declaratory...more

Ninth Circuit Holds Hybrid IP Agreement With Flat Royalty Rate Unenforceable Post Patent Expiration

by Ropes & Gray LLP on

The Ninth Circuit U.S. Court of Appeals recently reluctantly refused to enforce a hybrid intellectual property agreement – that is, an agreement involving a bundle of patent, trade secret, and other intellectual property...more

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