Patent Law Practice Center

Patented University Technology Creates Jobs

On Monday, August 5, 2013, the Association of University Technology Managers (AUTM) released the highlights of the AUTM U.S. Licensing Activity Survey: FY2012. The full results of the survey won’t be available until later this year, but the “highlights” release does provide some interesting quantitative information about licensing activities at U.S. universities, hospitals and research institutions.

Institutions responding to the survey reported startup companies formed by 70 institutions employed 15,741 full-time employees. The survey also showed:

• 22,150 total U.S. patent applications filed (+11.3%)
• 14,224 new patent applications filed (+7.2%)
• 5,145 issued U.S. patents (+9.5%)
• 5,130 licenses executed (+4.7%)
• 1,242 options executed (+7%)
• 483 executed licenses containing equity (+16.1%)
• Total license income: $2.6 billion (+6.8%)
• 705 startup companies formed (+5.1%)
• 4,002 startups still operating as of the end of FY2012 (+1.9%)

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Barney Cassidy on Non-Practicing Entities

Barney J. Cassidy, General Counsel and Executive VP of Tessera, Inc. as well as PLI faculty member, recently had an op-ed article published on Politico.com. The article, entitled, “Shooting a patent straw man,” challenges the notion that patent trolls and their readiness to litigate is at the root behind the recent surge of patent portfolio growth among the major tech companies.

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Facebook Continues to Load Its Patent Arsenal

The patent wars are all the rage amongst tech companies these days. Not too long ago, Microsoft Corp. made news when announcing it purchased approximately 925 patents from AOL, Inc. for an estimated $1.1 billion dollars. The commentary regarding that purchase was equally focused on the impressive sale price for the amount of patents purchased as it was on the fact that tech companies are looking twice at their patent portfolios as litigation and licensing tools.

The latest development is that Facebook, who is currently in a patent infringement battle with Yahoo, recently purchased 650 of the AOL patents from Microsoft for an estimated $550 million dollars. This recent acquisition comes just one month after Facebook purchased 750 patents from IBM. (more…)

PLI’s Advanced Patent Licensing 2011: Current Developments and Best Practices

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important.  I recently received this outline from Joseph Yang, Partner at PatentEsque Law Group and Co-Chair of PLI’s Advanced Patent Licensing 2011 (scheduled for October 24, 2011 in San Francisco and via live webcast) that explores the law of patent licensing and the business of licensing.

Here is an excerpt from the outline:

In any “patent” or “technology” licensing effort, it is critical to understand the interplay between the business and legal aspects of the transaction.  The legal team must build a legal structure that is consistent with the requirements of the law, while the business team must have a deal structure that meets the grantee’s business needs.  Unfortunately, there is often a inadvertent chasm between the two sides — the lawyer has little experience in business, and vice versa. (more…)

Rocky Mountain IP Conference: Nimmer & Dodd on Licensing

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles on the highlights from the Institute.  The first two articles  focused on the Judges panel wherein they discussed best practices in intellectual property litigation.  In this article, David discusses current IP licensing issues.

IP licensing luminaries Nimmer and Dodd spoke at length on current IP licensing issues. It was an excellent and enlightening discussion. At first blush, it is not directly litigation related, however, I found the session very valuable for the settlement work that I do, as well as for the IP licesing portion of my practice. So, here are some of the highlights:

• Integration clauses — Be careful to understand what is integrated: Does “Agreement” mean just the legal contract? Does it includes schedules and exhibits? What about subsequent purchase orders or more broadly the non-written agreement that the parties came to which was memorialized by the written agreement? If you mean just the written document, you should say that and define what papers are included. Also, make sure that you integrate any prior agreements as well, if you want them integrated. Watch out because most do not pay much attention to integration clauses. (more…)