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Patents Contract Terms

Womble Bond Dickinson

Federal Circuit Reversal in Assignment Clause Case Highlights Importance of Contract Language in Intellectual Property Ownership

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In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more

K&L Gates LLP

Fraud May Not Always Unravel All–What Does the Contract Say?

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Introduction - In the recent case of Innovate Pharmaceuticals Ltd v University of Portsmouth Higher Education Corporation [2024] EWHC 35 (TCC), the English High Court has determined that a limitation of liability clause in a...more

Venable LLP

NFT Intellectual Property Considerations

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Want to learn more about drafting, negotiating, and understanding intellectual property and technology contracts and have 10 minutes to spare? Grab your morning coffee or afternoon tea and dig into our Tech Contract Quick...more

Wyrick Robbins Yates & Ponton LLP

What are IP Assignment Agreements?

For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly...more

BCLP

Renewable Energy Case Update 2022

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As we enter 2023, we reflect on 2022 as another dynamic year in the renewables and clean energy market. The Renewables and Clean Energy team at BCLP has undertaken a review of judicial decisions reported in 2022 involving the...more

Linda Liu & Partners

Reward and Remuneration to the Inventors of Service Invention completed by the Subsidiary but Applied for Patent by the Parent...

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The first paragraph of Article 15 of the Patent Law stipulates: "The organization which has been granted patent rights shall reward the inventor or designer of a service invention-creation; upon implementation of the patent...more

Knobbe Martens

Federal Circuit Review - February 2022

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Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more

McDermott Will & Emery

Bargained-Away Rights to File for IPR May Not Be Recovered

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In a precedential opinion, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of a plaintiff’s requested injunction seeking to force a patent challenger to abandon its petitions for inter...more

A&O Shearman

Penalty Clause VAR: “Extremely Harsh” But Still Enforceable

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The court in Permavent v Makin determined that although the provision before it was “extremely harsh” it was not “out of all proportion” to the claimants’ legitimate business interests and so was not an unenforceable penalty....more

Knobbe Martens

An “Agreement to Agree” Is Unenforceable Under Washington State Law

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PHYTELLIGENCE, INC. v. WASHINGTON STATE UNIVERSITY Before Prost, Reyna, and Stoll.  Appeal from the United States District Court for the Western District of Washington. Summary: Under Washington law, a contract must be...more

McDonnell Boehnen Hulbert & Berghoff LLP

Phytelligence, Inc. v. Washington State University (Fed. Cir. 2020)

One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding...more

McDonnell Boehnen Hulbert & Berghoff LLP

Immunex Corp. v. Sandoz Inc. (Fed. Cir. 2020)

The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more

Mintz - Intellectual Property Viewpoints

Arbitration of IP Disputes in a Post-COVID-19 World

The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery and continued economic challenges. During these trying times, companies...more

Bradley Arant Boult Cummings LLP

When Merger Clauses Don't Merge - Intellectual Property News

Last week, a divided panel of the Federal Circuit extinguished Molon Motor and Coil Corporation’s hopes of going forward with a patent infringement suit against its electric motor industry competitor Nidec Motor Corporation....more

Nutter McClennen & Fish LLP

Licensee Challenges Ruling that a Standard Language Forum Selection Clause Bars PTAB Proceedings 

In a case that could have a significant impact on the interpretation and drafting of patent licensing agreements, a patent licensee filed an appeal for an en banc proceeding at the Federal Circuit to challenge the court’s...more

BCLP

Public APIs Have Broad Applications, From E-Commerce to Payroll Management

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This post is the second in a two-part series concerning emerging uses and considerations involving application programming interfaces, or “APIs.”     Most retailers and other large and mid-size businesses, and even some...more

JAMS

Arbitration Questions To Consider In Patent License Disputes

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Let’s say two entities entered into a patent license agreement years ago. Everything has been going wonderfully: The patentee has been receiving royalties, and the licensee has been selling its product without fear of an...more

NAM (National Arbitration and Mediation)

Arbitrate Without Losing The Inter Partes Review Option

New York Law Journal Intellectual Property Special Report March 2018 - I recently overheard one of my colleagues make the following observation: “Well, with AIA being so challenger friendly, quick, and relatively...more

Patterson Belknap Webb & Tyler LLP

Judge Sweet Holds that Standing Question Cannot Be Resolved Until Trial

On September 14, 2017, District Judge Robert W. Sweet (S.D.N.Y.) denied the motion of Ferring B.V., et al. (“Ferring”) to dismiss for lack of standing a patent infringement suit brought by Allergan, Inc., et al. (“Allergan”)....more

McDermott Will & Emery

When Asserting Arbitration Provisions, Think Inside the Box

The US Court of Appeals for the Federal Circuit declined to apply an arbitration provision to a dispute where the asserted claims were not within the scope of the contract containing the arbitration provision. Roof N Box,...more

McAfee & Taft

Avoiding contractual pitfalls and 'gotchas'

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You’re likely to see the same clauses repeated in most patent, trade secret and software license contracts. As a result, these agreements have a similar structure and feel, which can lead one to assume that a clause in a new...more

Proskauer Rose LLP

Three Point Shot - November 2016

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Who's First in Ownership of the "Sweet Spot" Remains Unclear - Baseball is often called a "game of inches," whether one is describing the strike zone, a close play at the plate, or a liner past third base that just kicks...more

Fenwick & West LLP

Client Alert: Brexit – What Silicon Valley Needs to Know

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The vote of the UK Electorate to leave the EU has politicians, economists, lawyers and commentators from all sectors speculating on what will happen next and over exactly what period. While it is unlikely that there will be a...more

Knobbe Martens

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

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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

McAfee & Taft

Regular audits of technology license agreements may reduce your patent royalty payments

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Patent license royalty payments can be habit-forming. Some patent licenses have terms extending for potentially two decades or longer. As a result, patent licenses are frequently filed away never to be seen again....more

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