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Advanced Royalty Strategies

Advanced Strategies for Establishing Royalty Streams Presented to MNLES, Minneapolis, MN June 8, 2010

Annotated License Agreement

Annotation protocol: The annotations throughout this annotated license will be provided in paragraphs having the format of the paragraph that you are reading now. Each annotation will refer to the clause or clause set immediately preceding the ...

Attorney Client Privilege for Patents

Why is this important? What is it? Outside counsel v. inside counsel Waiver Special Topics Download the Presentation

Deposition Comparison

IPR cross-examinations v. discovery depositions. Honorable Jimmie V. Reyna Intellectual Property Inn of Court - March 17, 2016. Download the Presentation

Did Shift in Exhaustion Makes Patents Stronger

Snapshop 6: Did a quiet shift in the exhaustion doctrine just make licensed patents stronger? Replacement parts and consumables more protectable? Download the Presentation

Four Major Stars of Every Patent License

Snapshot 1: Four Major Stars in Every License Agreement. How the Big Four can help you draft and negotiate any license agreement. Download the Presentation

Freedom to Operate

Free to Operate (FTO) Goal: Avoid infringing valid, enforceable patent rights of the third parties. Download the Presentation

Frequently Asked Questions About Trademarks

These are some of the common questions and answers related to trademark services. However, each client's situation is unique, and specific inquiries may vary based on their needs and circumstances. At Kagan Binder, we are equipped to provide ...

How to Recognize Invention

Not intuitive, Myths v. Truths, Powerful perspective, "Harvest" inventions, Select best for patenting, Super harvesting. Download the Presentation

License v. Covenant Not to Sue

Snapshot 2: Patent License v. Covenant not to Sue. What's the difference? Download the Presentation

Navigating the World of Copyright

Kagan Binder is dedicated to protecting your creative vision – your unique work, your artistic expression, and your success. Our Copyright Practice is designed to provide you with comprehensive copyright protection, strategic counsel, and the legal ...

Patent and Know-How License For Rustproof Widgets

Annotation protocol: The annotations throughout this annotated license will be provided in paragraphs having the format of the paragraph that you are reading now. Each annotation will refer to the clause or clause set immediately preceding the ...

Patents are Different from other IP

Patents are different from other Intellectual Property. Unique characteristics, Good and bad, Valuable, Why have a patent system? Download the Presentation

Pitfalls under the implied license doctrine 

A myriad of law and fact circumstances create implied licenses. Scholars have commented that the law is a morass of doctrines that overlap and/or conflict.1 Nonetheless, a substantial majority of implied license cases fall into one or more of the ...

Pitfalls under the Repair v Reconstruction Doctrine

The repair v. reconstruction doctrine (RRD) also limits patent scope. You are significantly impacted by the RRD if you sell patented items, such as capital equipment, for which there is a sizeable used equipment or repair markets. You also are ...

Pitfalls When Commercializing Products Developed From Joint Research.

Joint development agreements often contain supply terms by which one party agrees to sell products to the other party. Those products might already exist or might exist after some joint development. Supply terms in a joint development relationship ...

Power of Know How

Snapshot 5: The Power of Know How. Know how strategies avoid many agreement pitfalls. Download the Presentation

Prosecution Pitfalls

Patent Therapies: Prescriptions for Healthy Patents. Key prosecution mistakes you must avoid. Success strategies show winning prosecution principles. Download the Presentation

Reasons to Pursue Trademarks

Trademarks are not just symbols or names. They are invaluable assets with a myriad of benefits for your business. Our team is here to help you harness the full potential of trademarks and realize the value they present.

Recent Significant Copyright Decisions

These cases represent some of the most significant copyright decisions from 2016 to the present, shaping the landscape of copyright law in the United States. Please consult with your attorney for the most up-to-date information and developments in ...

Recent Significant Trademark Decisions

Booking.com B.V. v. United States Patent and Trademark Office (2020): Significance: The U.S. Supreme Court ruled that a generic term, like "booking," could become a protectable trademark when combined with ".com." This decision expanded the scope of ...

Settlement Agreements and blocking clauses

Lear v. Adkins revoked licensee estoppel and authorized licensees to challenge validity. MedImmune extended Lear by allowing validity challenges even if the licensee is not in breach. Generally but not always, license clauses that block validity ...

Standing room only.

Spin Master, Ltd. v. E. Mishan & Sons, Inc., No. 1:2019cv09035 (S.D.N.Y. 2019) Does a licensee have standing to bring an infringement action against an accused infringer, or does the patent owner have to be involved somehow? The provisions of 35 ...

Strategic IP Planning

Myth v. truth, Planning scope, Strategic patenting plan, Sample IP harvesting plan. Download the Presentation

Term Sheet Strategies Helpful to Draft and Negotiate Joint Development Agreements 

Term sheets offer many advantages. They can simplify the negotiation process and make it less expensive to put in place a fully signed joint development agreement. With a term sheet in hand, the parties can hammer out the main concepts without ...

Term Sheet System 

This section of the annotated agreement manual includes a full term sheet system with annotations. The information is referred to as a system, because it is a turnkey program for placing binding and nonbinding terms in the context of a license ...

The Patent Exhaustion Doctrine is Here to Stay

The courts strongly favor the exhaustion doctrine as a defense against patent infringement. There is not even the tiniest hint that courts question the integrity or policies of the defense. Except for a minor retreat taken by the Federal Circuit ...

Useful Model for Joint Research Deals

Snapshot 4: A useful model for drafting and negotiating joint development agreements. Download the Presentation

Who wears the boxing gloves?

Alexsam, Inc. v. Mastercard, Inc., No. 1:2015cv02799 (E.D.N.Y. 2019) Litigating parties can be surprisingly creative in creating and defending against causes of action in license disputes. No matter how straightforward the issues appear to be from ...

Winning is Losing

Snapshot 3: When winning is losing. Getting rid of a royalty burden can be Licensee's worst move! Download the Presentation