Three Years After The America Invents Act: Practical Effects On University Tech Transfer
By Robert MacWright The America Invents Act (AIA) has significantly changed the way university technology transfer offices operate. On the plus side, the first-inventor-to-file rule has allowed for simpler invention disclosures, since disclosures no longer have value as conception records. The AIA has also provided more relaxed procedural rules, avoiding the mad dash to get […]
Are We There Yet? Recent Obstacles On The Rocky Road To The Unitary Patent
By Patricia Cappuyns and Jozefien Vanherpe Following the Brexit vote on 23 June 2016, chances of the UK ratifying the Agreement on a Unified Patent Court (UPCA) appeared slim. Since such ratification is required for the entry into force of the Unitary Patent system, including the Unified Patent Court (UPC), this meant that the future […]
What Is An Intellectual Property Strategy For Oil And Gas Industry?
By M. Rashid Khan In recent years, intellectual property (IP) has become increasingly strategic. The increasing importance of IP raises questions about how to best protect and use them to achieve certain organizational objectives. It has become “imperative” that companies have well-defined strategies that capitalize on maximizing the value of the IP assets. Over a […]
Standard Development: Opportunities For SMEs
By Matteo Sabattini and Alessandra Mosca Standards allow companies of all sizes to actively contribute to a collaborative and yet challenging ecosystem by making new technologies widely accessible through interoperability and providing several benefits to all users. Small and Medium Enterprises( SMEs), however, require a tailored standardization strategy that can leverage their key strengths, exploit […]
Shifts In Big Oil Patent Landscape: Capturing Value From Intellectual Property For National Transformation
By Paul Germeraad, Rashid Khan and Deepa Ravindranath This paper highlights the emerging trends in energy sources and in particular the effect of these trends upon the traditional oil and gas industry and the oil rich nations of the world. Particular attention is paid to emerging countries which have vast oil and gas assets but […]
Recent U.S. Court Decisions And Developments Affecting Licensing
By John Paul and D. Brian Kacedon Claims of Patent Infringement 1. Pleading patent infringement based on continue production of licensed products.2. Divided patent infringement based on customer software use.Standing to Sue 3. Covenants not to sue and standing to challenge patent validity.4. Retroactive patent license insufficient to cure defect in standing to sue for […]
Beyond Hybrid Licenses— Strategies for Post Patent Expiration Payments in the United States
By Patrick Gattari, Steven Ferguson, David Crichton and Bryan Helwig The United States patent system grants patent holders exclusive rights in their invention for 20 years from the application filing date.2 During the period of exclusivity patent holders often elect to offer licenses in exchange for royalty payments. At the end of the patent term […]
To What Extent Are University IP Policies Legally Binding? Part 3: Visiting Scientists
By Philip Mendes Part 3 concludes this series by considering the question of the extent to which a university IP policy is binding upon a visiting scientist, that is, a scientist employed by one university (the employer university) who visits and undertakes research at another university (the host university).
Royalties For Unpatented Technology
By Richard Binns and Nicola Walles The Court of Justice has ruled that a licensee could be obliged to pay past royalties under a patent licence agreement even after a patent has expired or been deemed invalid, provided that the licensee has the ability to terminate the licence agreement for convenience.
Effective Royalty Rates In Biopharma Alliances: What They Are &, Why Use Them In Negotiations
By Mark G. Edwards As a licensing professional in the biopharma industry for the past three decades, I’d argue that there is no component of a biopharma contract that is more heavily relied upon, and less rigorously analyzed, than the royalty rate.