Category Archives: Licensing

In another case highlighting why it’s important for license agreements to clearly describe the parties’ intent, the U.S. District Court for the Southern District of New York recently considered a situation where a patent holder granted a third party (licensee) a covenant not to sue under certain patents.  The patent holder later obtained additional patents that were related to the licensed patents as continuations.  In the suit, the patent holder sued the licensee for infringement of the new patents.

The court ruled that the patent holder was not justified in bringing the suit, as the agreement did not expressly exclude continuation patents from the scope of the license.  The court relied on the Federal Circuit’s 2011 decision in Gen. Protecht Group, Inc. v. Leviton Mfg. Co., Inc., which held that “where, as here, continuations issue from parent patents that previously have been licensed as to certain products, it may be presumed that, absent a clear indication of mutual intent to the contrary, those products are impliedly licensed under the continuations as well.”

The S.D.N.Y decision is ICOS Vision Systems N.V. v. Scanner Technologies Corporation, No. 1-10-cv-00604 (S.D.N.Y. Feb. 15, 2012)

According to a recent report by Keystone Edge,  Penn State University has announced a major shift in its policies relating to research projects that are sponsored by private industry.  Instead of the typical arrangement where the university retains ownership of intellectual property rights resulting from sponsored research, Penn State will entertain proposals in which the industry sponsor will own all intellectual property rights in the research.  The university expects to implement this policy starting in late 2012.

Penn State appears to be the first major research institution to propose such a policy. The university formally considered the proposal in a May 31, 2011 internal memorandum.  Penn State’s Vice President of Research Henry (“Hank”) Foley confirmed the new policy in a recent interview with Keystone Edge.

Each year Intellectual Asset Management (IAM) magazine publishes the IAM Licensing 250: The World’s Leading Patent and Technology Licensing Practitioners.  This week IAM announced the release of the 2011 edition of the IAM Licensing 250.  According to IAM:

The second edition of a unique guide that names top patent and technology licensing practitioners in 25 key jurisdictions has been released today.  IAM Licensing 250: The World’s Leading Patent and Technology Licensing Practitioners is the only research-based publication that names both lawyers and patent attorneys working in this increasingly important area of legal practice.

In order to find the individuals and firms named today, Intellectual Asset Management (IAM) magazine undertook an extensive four-month research process.  A team of experienced researchers spoke with hundreds of licensing professionals in face-to-face and telephone interviews, as well as via email exchanges. They provided in-depth information on their individual practices, recent work and other firms and individuals that stood out for their expertise in patent and technology licensing in the jurisdictions covered in this publication. The final selection process was based on the comments received.

The IAM Licensing 250 is available on the IAM website via this link.  My law firm (Pepper Hamilton) and I are proud to be profiled in the 2011 edition (available to registered IAM users here.)