Magazine Archive
The Evolving Scope of the Inter Partes Review Statutory Time Bar
Inter partes review (“IPR”) is an adversarial administrative proceeding at the United States Patent and Trademark Office allowing a party to challenge the validity of an issued patent before the Patent Trial and Appeal Board (“PTAB”). Since the enactment of the America Invents Act, IPR proceedings have become an integral part of litigating patent disputes, often...
Read ArticlePreserving Employer’s Patent Rights with Shop Rights & Hired-to-Invent Doctrines
By default, U.S. patent law presumes that inventors own their inventions, even when developed during the course of employment.1As such, employers typically require new employees to sign an employment agreement, assigning patent rights to the employer at the time of hire. But what happens when no such agreement is executed or an employee refuses to...
Read ArticleEarly Mediation of Intellectual Property Disputes: The Strategic Proposition
The peculiarities of different types of intellectual property disputes – patents, trademarks, copyrights and trade secrets – are often cited as reasons to defer settlement efforts. Patent cases are likened to a game of Chutes and Ladders, with multiple spots where a case can fail or proceed. Trade secrets often involve bitter accusations of theft,...
Read ArticleOne Size Does Not Fit All: Tailoring IP Due Diligence to the Transaction
Investing in, acquiring, or partnering with companies in the San Francisco Bay Area requires a due diligence investigation, where intellectual property (IP) will likely play a major role. The adequate level of review largely depends on the individual situation, the investor or buyer’s strategic objectives, and the type of transaction. Levels of IP Due Diligence...
Read ArticleDon’t Overlook the Estate’s Interest in Intellectual Property! The Fundamentals of Identifying and Marshaling Patents and Trademarks
When someone dies, someone else steps in to manage the decedent’s affairs. Regardless of whether the fiduciary is a trustee or a personal representative, she must not overlook the decedent’s interests in intellectual property (“IP”) assets such as patents or trademarks. Investigating and Identifying IP Rights. Generally, the first step for a fiduciary is to...
Read ArticleImportant Considerations in Licensing Know-How with Patents
Companies own many forms of intellectual property (IP) — patents, trademarks, copyrights, and know-how (e.g., unpatented inventions, technical information, specifications, and trade secrets) — and depending on the industry, a given company may own more of a particular type of IP over others. While many companies monetize patents through license agreements, know-how is also a...
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