Posts Tagged: "licensing agreements"

For the innovators capitalizing on the legal growth, distribution, and commercial sale of cannabis, the procurement of intellectual property rights can go a long way in the monetization of their ideas, products, and services. As with any new venture, solidifying an IP protection strategy early on can maximize the benefits of a new invention and minimize risk the of potential infringement. This rings especially true in a field where so few patents, copyrights, and trademarks have been issued… It is not impossible to secure IP rights on cannabis-related inventions, but there are a number of factors to consider and a number of complexities to be aware of.

The Federal Circuit has agreed to expeditiously hear an appeal from Dodocase VR, Inc. v. Merchsource, LLC No. 17cv7088 (N.D. Cal.) (“Dodocase”) in which the district court determined that a forum selection clause could not be overridden to allow a patent validity challenge at the PTO without breaching the contract containing the clause.  The court issued a preliminary injunction ordering the withdrawal of the petitions MerchSource had filed with the Patent Trial and Appeal Board (PTAB).  Dodocase at 24.  In its arguments, MerchSource strongly relied on the public’s interest in permitting the PTO to correct its mistakes.  This interest, however, was not found to outweigh the policy favoring enforcing parties’ agreed upon selection of a forum.  Id. at 17.

Turning to the injunction, Infineon was enjoined from undertaking certain activities concerning products in the Exclusive Field that practice the licensed patents. The Court vacated this provision because it lacks the specificity required by FRCP 65(d). The Court found that this sentence of the injunction “is, in essence, an injunction prohibiting infringing acts—but without reference to any particular, adjudicated infringing product,” and “[i]ndeed, no product has yet been adjudicated.”

On Monday, February 5th, Finnish enterprise cybersecurity solutions firm SSH Communications Security announced that it had entered into a patent cross-license and settlement agreement with Japanese electronics conglomerate Sony Corporation (NYSE:SNE). The agreement reportedly resolves all patent disputes between the two companies after Sony successfully challenged the validity of two U.S. patents owned by SSH Communications at the Patent Trial and Appeal Board (PTAB).

The art of preventive negotiation in a license agreement is not practiced solely by means of pen and paper (or word processor); but instead, starts much earlier. The care and attention devoted to the earliest stages of a deal are highly worthwhile. A friend and fellow LES member is fond of saying: “No deal without a meal.” This is emblematic of the fact that a license agreement is no more than an attempt to put in writing what the parties have agreed they are desirous of achieving, and how they propose allocating rights and responsibilities to achieve those ends. Trust is an essential component, and this is built up over time… The term sheet should be focused only on the major terms of consequence. It should not descend to tactics and operations or else it runs the risk of invading the rightful province of detailed negotiation and drafting of the agreement itself, and a needless redundancy. Tactical details are for later, when the investment is clearly justified. Likewise, premature focus on the tactical raises the risk that negotiation of the ultimate agreement becomes a rehash of the term sheet, which risks not only duplication of effort, but inconsistency, misunderstanding, and deviation from the strategic objectives underlying the alliance.

Donald J. Trump, the 45th President of the United States (POTUS), managed to get elected based at least in part on his real or perceived success as a businessman. In the last dozen years or so, he achieved this reputation in part by licensing his “Trump” brand name—a kind of intellectual property (IP)—to third parties… “It may come as a surprise to most people that many of Trump’s buildings, resorts and golf clubs aren’t even owned by him,” says Sonia Lakhany, trademark attorney and owner, Lakhany Law, PC, a national award-winning trademark law firm. “They just bear his name for branding purposes. In return, Trump collects fees for the use of his brand, without ever investing a dime into the actual projects.”