Writing Licenses And Other Agreements—Some Tips Based On Over Fifty Years Of Mistakes And Confusion (Mostly Others’, But A Few Of Mine)
By Robert S. Bramson The Skills Required for Negotiating and Drafting ContractsDrafting any sort of agreement requires three skillsets. Just being a smart lawyer isn’t enough. The skillsets are:
Recent U.S. Court Decisions And Developments Affecting Licensing
By John Paul and D. Brian Kacedon U.S. Supreme Court Upholds Ban on Post-Expiration Royalties in Patent LicensesIn the 1964 decision Brulotte v. Thys Co., the U.S. Supreme Court held that a patent owner cannot receive royalty payments that “accrue” after a patent expires. Under this ruling, the patent owner cannot receive royalties for a […]
Opportunities And Challenges For Expanding Technology Transfer In United Arab Emirates (UAE)
By Ahmed Alosi, Ph.D., John Fraser and Michael J. Martin The UAE is a relatively young country (established in 1971) with enormous per capita wealth and a strategic goal as expressed in their 2021 vision: “To translate from an economy based on fossil fuel to a Knowledge-Based Economy.” Universities can assist in strengthening the Innovation […]
Licensing In Cosmetics: A Practical Approach
By Jean-Yves Legendre The worldwide cosmetic market is estimated around 180 billion € (sell-in price) and is dominated by historical, large international corporations (L’Oréal, Unilever, Coty, Procter & Gamble, Shiseido, Johnson & Johnson, Estee Lauder). However, despite a global, steady growth of about three percent per year, this market covers many diverse regional and local […]
To What Extent Are University IP Policies Legally Binding? Part 2: Students
By Philip Mendes In Part 1 the extent to which a university IP policy is legally binding upon a university’s staff was considered. In this part we consider that question in relation to students, both undergraduate, and postgraduate. The IP policies of universities and research organizations (for brevity, the term “university” is employed, and refers […]
Allocating Risks And Rewards In Collaborative Agreements Using The Financial Structure
By Matthew W. Sagal and Gene Slowinski Open Innovation (“OI”) is a well-accepted methodology that allows two or more firms to combine technical and other resources to achieve their marketplace objectives. The OI relationship is called an “alliance.” The firms are often referred to as “partners,” although use of that term does not imply a […]
Patent Royalties And Competition Law: The Genentech Judgment Of The Court Of Justice Of The European Union
By Patricia Cappuyns and Jozefien Vanherpe On 7 July 2016, the Court of Justice of the European Union (“CJEU”), the highest court in Europe, held that a requirement to pay royalties for the licensed use of patented technology for the entire duration of the license is not contrary to competition rules in the event of […]
Bankruptcy-Related IP Valuations: Consider The Use Of Market Approach
By Robert F. Reilly Licensing executives and other intellectual property (IP) professionals (for purposes of this discussion, called “analysts”) are sometimes asked to provide IP valuation and related analyses within the context of a commercial bankruptcy or other type of commercial litigation. Within the commercial bankruptcy environment, the analyst could serve as a transaction adviser, […]
NSFW: Naked Licensing And Uncontrolled Trademark Use
By Luke S. Curran The nucleus of trademark owners’ post-registration operations centers on protecting and enforcing those rights against unauthorized use by third parties. Conversely, much less attention is afforded to addressing the potential for inadvertent loss of rights when employed by authorized third parties.
Application Of Enterprise Risk Management (ERM) Principles To Patent Freedom-To-Operate (FTO) Analysis: A Novel “IP-RM” System
By Gillian M. Fenton Intellectual property (IP) is an integral component of business strategy in many industries, and for many types of enterprises ranging from startups, to emerging companies in growth phase, to mature companies that may be considered an attractive target for IP litigation. Certainly this is true in life science fields, particularly for […]
