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Library: IP Due Diligence

 All Good Things Must Come to an End: Kimble v Marvel
All Good Things Must Come to an End: Kimble v Marvel

Kimble v. Marvel Entertainment, LLC, 135 S. Ct. 2401 (2015). Kimble evaluates whether a patent owner can collect any kind of patent royalty (e.g., royalty under a license or royalty for an assignment) for activity occurring after a patent expires. ...

 Antitrust Pitfalls Common to Joint Development Agreements
Antitrust Pitfalls Common to Joint Development Agreements

Antitrust pitfalls common to Joint Development Agreements. In the late 1970s, the Justice Department promulgated the famous “nine no-no’s” to be avoided as antitrust pitfalls when licensing patent rights. In that era, many of the no-no’s were per se ...

 Are you getting submarined by your sublicenses?
Are you getting submarined by your sublicenses?

Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., No. 2018-2400 (Fed. Cir. Oct. 17, 2019). This case presents many important lessons for sublicense strategies. Fraunhofer exclusively licensed Worldspace under patent rights protecting technology to ...

 Introduction to the Patent Exhaustion Doctrine
Introduction to the Patent Exhaustion Doctrine

U.S. patent law authorizes an inventor to secure patent protection for inventive machines, articles of manufacture, methods, and compositions that are useful. 35 USC 101. Patent protection allows the patentee to exclude others from making, using, ...

 Joint Development Agreements
Joint Development Agreements

Many view joint development agreements as the most complicated type of IP agreement. New developments in statutes and case law are adding to that complexity – causing us even to question and revise the basic practices that have, for decades, guided ...

 Joint Owners who Fight over Ownership and Use of Joint Research.
Joint Owners who Fight over Ownership and Use of Joint Research.

Joint development research often results in the joint creation of an invention. In the patent world, this makes the creators not just joint inventors, but also joint owners of that invention. The provisions of 35 U.S.C. § 262 expressly state that ...

 Pitfalls under the Repair v Reconstruction Doctrine
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 ...