Category Archives: Licensing

Licensing tips: which entity is the licensee?

When licensing a patent, software or other intellectual property, it’s critical for the licensee to ensure that the license covers all entities who will use the IP.  This may include the licensee’s parent company, subsidiaries, other affiliates, customers or other entities.

The license grant clause, along with the definitions of “licensee” and (if included in the license) “affiliate” will typically govern the entities who may take advantage of a license. Unless the agreement specifically calls out an entity, that entity may not be able to take advantage of the license, whether as a licensee or (depending on the nature of IP involved) as a sublicensee.

A recent court decision from the Central District of California illustrates how the definitions will typically control the scope of a license. In the case, nQueue Inc. v. Control Systems (USA) Inc., nQueue filed a patent infringement suit against Control Systems. In defense, Control Systems argued that it was covered by a license that nQueue granted to Control Systems’ ultimate parent company, Equitrac Corporation. Continue reading

Shop Rights: What are they and can they be assigned?

“Shop rights” arise when an employee uses an employer’s resources to create an invention, but the employer does not own the invention. A shop right permits the employer to use a patented invention for its own business as a quid pro quo when the inventor used the employer’s resources to develop the invention.

The concept of a shop right is not found in any law.  Instead, it is a judicial creation that grew out of equitable principles. Because of this, shop rights are fact-specific. When determining whether a shop right exists in a particular situation, a court will consider several factors to determine whether equity and fairness should entitle the employer to use the invention without paying a royalty.  These factors include Continue reading

Let’s Keep it a Secret

On June 6, 2013, I had the opportunity to attend a spirited panel discussion about trade secrets.  The session, titled “Let’s Keep it a Secret:  Protecting, Valuing and Licensing Trade Secrets,” was hosted by the New York City Chapter of the Licensing Executives Society and Fox Rothschild LLP.  The panel and audience of licensing professionals debated issues ranging from “why treat trade secrets differently from any other confidential information,” to “how can you make money licensing trade secrets?”

Moderated by patent and licensing attorney Janet MacLeod, Ph.D  of Fox Rothschild, the panelists included:

Moderator Janet MacLeod started the discussion by asking whether the recent media and court attacks on software patents and gene patents could make trade secrets even more valuable.  With the panelists generally agreeing that the answer was “yes,”, tips from the panelists included: Continue reading

IAM Patent 1000 published – 2013 edition

Intellectual Asset Management (IAM) magazine has released the IAM Patent 1000:  The World’s Leading Patent  Practitioners 2013.  Each year, IAM surveys its readers and asks them to recommend patent litigation, licensing, and prosecution attorneys for inclusion in the list.  According to IAM:

When it comes to obtaining, enforcing and monetising these vital commodities, private practice lawyers and patent attorneys play an essential role; selecting the right specialist is of paramount importance. The IAM Patent 1000 delivers the most in-depth coverage of the market yet undertaken, pinpointing the best of the best in prosecution, litigation and licensing. The listings and editorial provide readers with a truly comprehensive overview of patent services around the world, making the IAM Patent 1000 an essential tool for all IP decision makers

The IAM Patent 1000 is available on the IAM website to registered users via this link.   I am honored that IAM named me to its lists for both patent licensing and patent prosecution for the second consecutive year.

New house and senate bills, and White House memo, call for open public access to publications and data resulting from federally funded research

If a new White House memo directing government agencies to ensure that publications and data resulting from federally funded research seems familiar, that’s because it nearly matches a new bill that was introduced in the House and Senate just a week earlier.

On February 22, 2013, the White House’s Office of Science and Technology Policy issued a memo directing U.S. government agencies who annually fund over $100 million in research to implement a plan for requiring public access to data and publications resulting from that research.

The memo requires that each plan included elements for: Continue reading

Getting to “Yes” in University IP Licensing

Are you thinking about licensing technology from a university or research institution?  Are you a research institution licensing professional looking for tips about negotiating with both start-ups and established companies?

If so, you’ll want to sign up for a “Getting to ‘Yes’ in University IP Licensing,” a live webinar sponsored by Technology Transfer Tactics magazine on October 25, 2012.  During the session, my colleague Brienne Terril and I will cover topics such as:

  • Anatomy of a license agreement
  • Common sticking points, and strategies for overcoming them quickly
  • How to balance competing interests of the researcher, institution, and the corporate licensee

We will illustrate several of the topics with a mock negotiation session, to help attendees see various negotiation tactics in the tech transfer context.

More information about the webinar is linked here at the Technology Transfer Tactics website.

Court: Patent license extends to continuation patents unless the agreement expressly says otherwise

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)