It’s always important to ensure that intellectual property agreements are carefully drafted. However, on rare occasions a court will see past a drafting error and interpret an agreement to match the apparent intent of the parties, even if certain language of the agreement may conflict with that interpretation.
This happened in a recent case from the Southern District of Indiana. In a consolidated order involving suits that GS CleanTech Corporation (CleanTech) brought against various defendants in that court, the defendants filed motions for summary judgment and asserted that CleanTech lacked standing to bring the suit because CleanTech had not established title to the asserted patents.
CleanTech acquired the patents from GS Ethanol Techs. Inc. (GSET) and other entities by an assignment agreement dated May 15, 2009. The defendants asserted that the chain of title in the patents was broken by a January 2008 Security Agreement in which GSET and the other owners conditionally assigned the patents to YA Global Investments, L.P. (YA Global).
The defendants argued that although the document was titled “Security Agreement,” it was actually an assignment because of the grant clause conveyed “a continuing interest in the patents” to YA Global. The wording of the grant clause was immediate, the agreement was recorded against the patents, and so the defendants argued that the Security Agreement passed ownership of the patents to YA Global.
The court disagreed, stating that the remainder of the Agreement made it clear that the intent of the document was to grant “a continuing security interest in the patents” rather than actual title, even if the grant clause didn’t include that specific word.
This year’s 3 Rivers Venture Fair is scheduled for October 7 and 8, 2014 at PNC Park in Pittsburgh, PA. The 3RVF connects investors, entrepreneurs, business leaders and service providers who are interested in discovering innovation breakthroughs, ground-floor investment opportunities and trends in industries ranging from life sciences, to energy, to manufacturing, to electronics and software, and more.
The 3RVF is accepting nominations for presenting companies, but the available slots are filling fast. Companies seeking venture investment should click here to apply to be considered for a presentation as a featured company. Or, if you know a rising company who may benefit from the exposure and potential investment, nominate that company via the attached link. Presenting companies will receive free admission to the event, and will participate in a Presenters’ Bootcamp to help sharpen presentations prior to the main event.
Although the application deadline is August 13, several presentation slots have already been filled. And when the slots are gone, the application process will be closed. So, apply now to be considered. See you at the 3RVF!
In the next week I will talk about the business of intellectual property at two very unique events. I’m excited to share the details of each event below:
First, on May 13, 2014 I will be part of a program entitled “Solving Problems in U.S.-Israel Cross-Border Transactions.” Hosted by Herzog Fox & Neeman in Tel Aviv and co-sponsored by Fox Rothschild, the event will feature two panel discussions providing a spectrum of perspectives on the complex investment challenges of cross-border M&A transactions. In a panel moderated by Michael Sweet, I’ll discuss the intellectual property issues that are most important to U.S. companies who are investing in or acquiring non-U.S. businesses or IP assets. The conference will offer practical solutions to various challenges that may arise during inbound and outbound transactions. Details are available here.
Second, on May 16, 2014, the topic of the Intangible Asset Finance Society’s monthly Mission: Intangible Monthly Briefing will be “IP Quality – 1, 2, 3 What Are We Fighting For?” Intellectual property can be extremely valuable — provided it is really good stuff. Whether it be due to a lack of attention, resources, or knowledge, too often companies build IP portfolios that appear to be strong, but are actually of questionable quality. What are the measures of “good?” John Kepler and I will debate this with host Jonathan Salem Baskin during this online briefing. Details are available here.
Penn State University is primed to launch the country’s first online auction of patent rights resulting from university research. According to a Penn State news release:
About 70 engineering patents in areas as diverse as acoustics, fuel cells and sensors will be available for license in this first auction. Required bid minimums on many will be as low as $5,000.
Available patents are listed on the Penn State Intellectual Property Auction Website. Bidders must pre-register to participate in the action. In addition to single patents with minimum bids as low as $5,000, the auction will include several patent bundles with minimum bids ranging from $10,000 to $50,000. The auction will open March 31, 2104 and close on April 11, 2014.
Winning bidders will need to enter into a license agreement with the University’s Office of Technology Management. The agreement will require the winning bidder to also pay all patent maintenance fees. However, unlike typical university research licenses, no ongoing royalties will be due. Penn State also retains the right to pursue third-party infringers; the licensee can only participate in enforcement if Penn State’s enforcement efforts are not successful after a six month period.
Patent auctions have met with limited success over the years. However, Penn State is tempering expectations with low minimum bids and realistic public statements. Penn State’s news release notes that a key goal of the auction is to “raise awareness among interested parties in business and industry that the University does have licenses available whose commercial applications could prove extremely valuable.”
A small license fee is certainly better than no license fee, especially for patents that are just sitting on the shelf. In addition, by calling attention to its portfolio of IP in fields such as antenna systems, superconductors, and ground water remediation, the auction will certainly help draw attention to the university’s diverse research capabilities.
This week Wall Street Journal columnist Dennis Berman posed an interesting question: “Is Peanut Butter Pop-Tart an ‘Innovation’?” In the article, Berman described the skyrocketing use – and likely overuse — of the word “innovation” by many American companies and asks: is this really innovation? When a food company introduces a new product, or a restaurant offers a new burger, is it innovation? Or are these simply the actions that a company needs to do on a day-to-day basis to stay competitive?
The article prompted me to think about how the word “innovation” can sometimes be confused with “invention.” Roget’s Thesaurus lists the two terms as synonyms of each other, and many dictionaries give the words nearly-identical definitions. However, there are subtle differences between the two terms. Continue reading
Intent-to-use (ITU) trademark applications can give companies the opportunity to reserve valuable trademark rights before actually using the mark in commerce. However, ITU applications do have certain limitations – including restrictions on assignment.
In many cases, U.S. trademark law imposes few conditions on assignment of trademark registrations and applications. However, in the case of ITU applications, Section 10(a)(1) of the Lanham Act states that ITU applications may not be assigned before the applicant files a statement of use, unless the assignment is “to a successor to the business of the applicant, or portion thereof, to which the mark pertains.” This means that ITU applications can be assigned only in those situations that also involve a “successor,” and not merely to any buyer.
A recent Trademark Trial and Appeals Board opinion in Central Garden & Pet Co. v. Doskocil Mfg. Co. illustrates the perils of improperly assigning ITU applications. Continue reading
Are you an growing company in the Mid-Atlantic region that is seeking outside investment? If so, IMPACT 2013 may be the perfect opportunity for you.
The IMPACT 2013 Venture Summit is an opportunity for growing technology and health care companies, along with innovative early stage businesses, to pitch their company to prominent investors. IMPACT 2013, also offers networking opportunities with business community leaders and panel sessions that offer relevance, value and expert knowledge.
IMPACT 2013 will take place October 22 and 23, 2013 in Philadelphia. We at Fox Rothschild LLP are proud to be the host sponsor of IMPACT 2013, and we look forward to seeing you there.
Click here to learn more and apply to be a featured company at IMPACT 2013.