News & Analysis as of

Patents License Agreements

An EC Communication on SEPs – Not More Not Less

A summary of the European Commission’s Policy Document on standard essential patents (SEPs). After considerable preparations and consultation the European Commission has on 29 November 2017 issued a Communication “setting...more

License Agreement Restrictions Can Provide A Real Advantage To Patent Holders

by Tarter Krinsky & Drogin LLP on

Generally, a patent owner's rights are exhausted after an authorized sale; the patent owner cannot sue a downstream customer who purchased an authorized patented product from a third party reseller. So how can a patent owner...more

Five Things to Know About University Licensing

by WilmerHale on

Earlier this year, WilmerHale Partners Dave Gammell, Barry Hurewitz and Jeff Johnson discussed the basics of licensing and legal considerations for university licensing agreements such as unique aspects of university licenses...more

Naming Exclusive Licensee as Defendant, Exclusively, Leads to Dismissal of Declaratory Judgment Action

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

The enforcement of standard essential patents in Germany – a stocktaking

by DLA Piper on

In July 2015, the European Court of Justice (CJEU) issued a long-awaited judgment answering questions as to the requirements an owner of a standard essential patent (SEP) is able to enforce its SEP without a breach of...more

How Startups Can Protect Their IP Rights

by Revision Legal on

For businesses that are just starting out, intellectual property (IP) rights can be immensely valuable. Your IP rights could be the business asset that sets your company apart from your competitors. Equally important to...more

Forum Selection Clause Not Triggered Based on Statements Made in Another Forum

On May 15, 2017, District Judge Paul Oetken (S.D.N.Y.) denied the motion of Comcast Corporation, et al. (“Comcast”) for reconsideration of the Court’s prior Order dated December 14, 2016. The Court had earlier denied...more

University License Agreements: Tips for Start-up Companies

Universities develop and license innovative technologies, patents and cutting edge research, and often transfer the benefit of such innovations to the public through licensing agreements with start-up companies. By licensing...more

Bayer CropScience AG and Bayer S.A.S. v. Dow Agrosciences LLC (Fed. Cir. 2017)

Last week, in Bayer CropScience AG and Bayer S.A.S. v. Dow Agrosciences LLC, the Federal Circuit determined that the District Court for the District of Delaware did not abuse its discretion in determining that, under the...more

Bayer CropScience AG v. Dow Agrosciences LLC (Fed. Cir. 2016)

Earlier this month, in Bayer CropScience AG v. Dow Agrosciences LLC, the Federal Circuit concluded that the District Court for the Eastern District of Virginia correctly confirmed an international arbitration tribunal's award...more

Sovereign Immunity Can Shield State University Research Foundations in PTAB Proceedings

by McDermott Will & Emery on

Addressing the application of the sovereign immunity defense under the 11th Amendment in the inter partes review (IPR) context, the Patent Trial and Appeal Board (PTAB) dismissed three IPR petitions, finding that the...more

PTAB Finds Sovereign Immunity Applies to IPRs for State Universities

by Winstead PC on

The Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) proceedings involving the University of Florida based on sovereign immunity. As background, the University of Florida Research Foundation...more

Updated Antitrust Guidelines for IP Licensing Address New Laws, Omit Some Key Areas

by Perkins Coie on

In 1995, the U.S. Department of Justice (DOJ) and the Federal Trade Commission (FTC) (collectively, the Agencies) published guidelines that delineated how and when the Agencies would evaluate intellectual property licensing...more

IP Licenses & Bankruptcy Laws (Part 1)

by Field Law on

When a company goes through bankruptcy, it’s a process that can up-end all of the company’s contractual relationships. When that bankrupt company is a licensor of intellectual property, then the license agreement can be one...more

Licensees Beware: Assignment Provisions in a License Agreement

by Field Law on

Let’s say a company negotiates a patent license agreement with the patent owner. The agreement includes a clear prohibition against assignment – in other words, for either party to transfer their rights under the agreement,...more

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

6 Unique Challenges for Protecting and Exploiting Intellectual Property in the United Arab Emirates

by Latham & Watkins LLP on

The United Arab Emirates (UAE) is an attractive global business centre and gateway to the wider Middle East region for international companies seeking to commercialise and exploit their brands, products and...more

District Court Holds that a Sale Must Make the Invention Public in Order to be an On-Sale Bar under AIA

On March 3, 2016, a U.S. District Court judge held that the entering into and publicizing of a licensing and supply agreement did not constitute an on-sale bar under the America Invents Act. The pre-AIA statute relating...more

Plaintiff Has Standing To Sue For Infringement Of Deduplication Patents

by Morris James LLP on

EMC Corporation, et al. v. Pure Storage, Inc., C.A. No. 13-1985 - RGA, February 29, 2016 - Andrews, J. Court finds plaintiff has standing to sue - The disputed technology relates to deduplications. ...more

CBM Review Not a Venue for Review of Contractual and Tortious Disputes (Ocean Tomo, LLC v. PatentRatings, LLC)

by McDermott Will & Emery on

Addressing the issue of standing, the Patent Trial and Appeal Board (PTAB or Board) denied institution of a covered business method (CBM) patent review, finding that the petitioner failed to show sufficient proof...more

U.S. Patent Rights Are Not Exhausted By Restricted U.S. Sales or By Any Foreign Sales

The U.S. Court of Appeals for the Federal Circuit has issued a significant new opinion on February 12, 2016, Lexmark International, Inc. v. Impression Products, Inc., Nos. 2014-1617, 2014-1619. The impact of this new opinion...more

Six Key Ways to Protect Mobile Medical App IP

by Arnall Golden Gregory LLP on

As a long-term means of protecting value for a mobile medical application (MMA) product, securing core intellectual property tops the list. The technology behind your app may represent most of your company’s value, as any...more

Better Early than Never: SDNY Dismisses Lawsuit over Patent Settlement where Generics were Granted Early-Entry Licenses with...

On September 22, Judge Ronnie Abrams of the Southern District of New York dismissed an antitrust lawsuit against Takeda Pharmaceuticals and three generic drug manufacturers based on settlements they had reached regarding a...more

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