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    Q&A: key IP issues affecting licensing agreements in USA





      Intellectual property issues

      Paris Convention

      Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

      Yes, the US is a party to all three.

      Contesting validity

      Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?

      No. In 2007, the Supreme Court overturned the law requiring a licensee to terminate the licence before challenging the validity of a licensed patent (MedImmune v Genentech, 549 US 118 (2007)), and US law does not differentiate between domestic and foreign licensors. Licensors may attempt to limit this contractually by including provisions providing for increased upfront compensation or royalty rates as well as a right to (1) terminate the patent licence; (2) reduce the scope of a licence (ie, convert an exclusive licence to non-exclusive); or (3) require the licensee to bear litigation costs. However, general ‘no challenge clauses’ prohibiting a licensee from challenging validity have not been universally enforced by the courts and United States Patent and Trademark Office (USPTO).

      Invalidity or expiry

      What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be levied? If the licence does not remain in effect, can the licensee freely compete?

      Because subject matter disclosed in a patent is dedicated to the public upon expiration, any exclusive right, licence or privilege expires. Agreements requiring royalties after expiration of a licensed patent are unlawful per se.Brulotte v Thys, 379 US 29 (1964); Kimble v Marvel Entertainment, 576 US 446 (2015). Brulotte, however, is limited and ‘poses no bar to business arrangements other than royalties - all kinds of joint ventures, for example - that enable parties to share the risks and rewards of commercializing an invention’ (Kimble, 576 US at 435-55).

      Further, there is no such prohibition on the term of licence under know-how, technology or trade secrets with no set duration.

      Because trademark rights derive from use in commerce in the US, the rights may be licensed insofar as the mark is used in connection with the relevant goods or services, whether or not registered; it is highly advisable to register and maintain trademark registrations because they provide notice to third parties and a presumption of validity.

      Regarding copyrights, there are specified terms following creation or publication to perfect an ownership in a registered US copyright, after which the work will fall into the public domain and cannot thereafter be levied.

      Requirements specific to foreigners

      Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?

      A US trademark application (including intent-to-use under 15 USC 1051(b)) may be based upon use in US commerce, or a corresponding non-US registration, provided the applicant’s country of origin is a party to a treaty such as the Paris Convention for the Protection of Industrial Property of 1883 or other specific treaties.

      For US applications based upon non-US registrations, a true copy of the corresponding foreign registration, along with a verified English translation, must be submitted to the USPTO. While it is not necessary to demonstrate use in the US prior for applications based upon non-US registrations, the owner will be required to prove use of the mark in US commerce by submitting a Declaration of Use and specimen of use between years five and six following the US registration date and every 10 years thereafter from the registration date to maintain the US registration.

      Regarding copyrights, the US is a member of the Berne Convention for the Protection of Literary and Artistic Works of 1886. Consequently, registration is not required for protection for non-US works; but statutory damages and attorneys’ fees are only available for infringement of registered US works. See, for example,Fourth Estate Public Benefit Corp v Wall-Street.com, 139 SCt 881 (2019).

      Unregistered rights

      Can unregistered trademarks, or other intellectual property rights that are not registered, be licensed in your jurisdiction?

      Yes. US trademark rights derive from use in commerce and are valid while the mark (whether or not registered) is used in US commerce in connection with the relevant goods or services. However, rights in an unregistered mark are limited to the geographical area within which it has been used or may be reasonably expected to expand. It is best practice to register and maintain trademark registrations since this provides the broadest protection, including nationwide notice to third parties as well as a presumption of validity.

      Security interests

      Are there particular requirements in your jurisdiction to take a security interest in intellectual property?

      A security interest in a US patent, trademark or copyright must be recorded or ‘perfected’ with the proper federal or state authorities to be enforceable, and to protect an ownership or security interest in IP against subsequent purchasers for value, an assignment should be recorded with either the USPTO or Copyright Office. 35 USC 261. Recording a security interest with the USPTO alone is not effective to ‘perfect’ the security interest, and to perfect a security interest in a patent or trademark against future lien creditors or owners, a filing should be made in the appropriate state jurisdiction in accordance with the law applicable in that state; often the Uniform Commercial Code. To perfect a security interest in a registered copyright, it should be recorded in the Copyright Office (In re Peregrine Entertainment, 116 Bankr 194 (CD Cal 1990)).

      Proceedings against third parties

      Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?

      Whether foreign or domestic, an intellectual property right (IPR) holder must have ‘standing’ to enforce such IPRs. Owners will almost always have ‘standing’ (but joint owners may have to join), and exclusive licensees may have ‘standing’ if the licence coveys sufficient rights, which the court analyse on a case-by-case basis.

      Further, ‘a(chǎn)ny person [including a licensee] who believes that he or she is or is likely to be damaged’ by the false or misleading use of a trademark may bring an action under the Lanham Act, 15 USC 1125(a), without the consent of the owner.


      Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?

      Yes, provided that the licensor supervises and controls the licensee’s use of the mark to protect the public’s expectation as to the origin and quality of products or services provided thereunder. Absent such controls, the mark may be deemed abandoned owing to the ‘naked licensing’. The right to sub-license typically must be granted contractually. SeeIn re Trump Entm’t Resorts, Inc, 526 BR 116, 127 (Bankr D Del 2015).

      Jointly owned intellectual property

      If intellectual property in your jurisdiction is jointly owned, is each co-owner free to deal with that intellectual property as it wishes without the consent of the other co-owners? Are co-owners of intellectual property rights able to change this position in a contract?

      Co-owners are generally free to deal with that intellectual property without the consent of the other co-owner(s). We address trademarks, copyrights and patents in turn.

      Unless contractually prohibited, a trademark co-owner is free to assign the trademark rights provided that (1) the assignee is subject to the obligations of such co-owner; (2) all goodwill is transferred; and (3) such transfer would not result in consumer confusion as to the origin.  In examining such transfers, courts have employed a test balancing the parties’ contractual expectations with consumer expectations of origin and quality. SeeLigotti v Garofalo, 562 FSupp2d 204, 222-23 (DNH 2008).

      With copyrights, the authors of a joint work are co-owners of copyright in the work (17 USC 201(a);Davis v Blige, 505 F3d 90, 98 (2d Cir 2007); Thomson v Larson, 147 F3d 195, 199 (2d Cir 1998). As such, co-owners may allocate the rights and duties of the work of authorship among themselves, and may contractually regulate, modify or otherwise limit the exploitation of the work.

      Regarding patents, each co-owner may make, use, offer to sell, sell or import the patented invention into the US without the consent of and without accounting to the other owners absent any contractual prohibition (35 USC 262;Schering v Roussel-UCLAF SA, 104 F3d 341 (Fed Cir 1997)).

      First to file

      Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?

      The America Invents Act of 2011 (AIA) changed the US patent system from a ‘first to invent’ to a ‘first to file’ system, for all patent applications filed in the US that have an earliest effective filing date on or after 16 March 2013. Patent applications may be licensed, and federal patent law does not pre-empt state contract law such that the term of a patent licence may continue if the patent application fails; typically where the license includes know-how or other technical information (Aronson v Quick Point Pencil, 440 US 257 (1979)).

      Scope of patent protection

      Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?

      The execution of a physical process is patentable, but mathematical formulae and abstract ideas, in and of themselves, are not (Bilski v Kappos, 561 US 593 (2010). However, the mere presence of software does not render an otherwise patentable process unpatentable (Diamond v Diehr, 450 US 175 (1981)).

      The Federal Circuit has rendered several decisions to reiterate that ‘[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can’ (Enfish v Microsoft, 822 F3d 1327 (Fed Cir 2016)), and held that if claims at-issue recite unconventional rules or specific processes that result in a specific technological improvement, the claims are non-abstract and patent eligible. Id.; McRO v Bandai, 837 F3d 1299 (Fed Cir 2016). Conversely, claims are patent-ineligible if they recite a process ‘for which computers are invoked merely as a tool’ (Enfish; RecogniCorp v Nintendo, 855 F3d 1322 (Fed Cir 2017).

      With living organisms, the Supreme Court has held that ‘a(chǎn)nything under the sun that is made by man’, including a living, human-made organism, is patent-eligible subject matter, with the caveat that naturally occurring organisms, other products of nature, and laws of nature are not patent-eligible (Diamond v Chakrabarty, 447 US 303 (1980)).

      The Supreme Court’sAlice and Mayo decisions provide the two-stage framework by which patent eligibility under section 101 is assessed. A patent claim is unpatentable under section 101 where:

      it is directed to a patent ineligible concept (ie, a law of nature, natural phenomenon, or abstract idea); and

      if so, the particular elements of the claim, considered both individually and as an ordered combination, do not add enough to transform the nature of the claim into a patent-eligible application.

      Further, business methods remain patentable in the US.

      Trade secrets and know-how

      Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? In either case, how are trade secrets and know-how treated by the courts?

      Yes. The Uniform Trade Secrets Act (UTSA), which has been enacted, in one form or another, by most of the states, defines a trade secret as information, including a formula, pattern, compilation, program, device, method, technique or process, that derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use where reasonable efforts are made to maintain its secrecy. The states that do not follow the UTSA generally follow the First Restatement of Torts, which evaluates the similar factors to determine whether information constitutes a trade secret.

      Misappropriation remedies include damages and injunctions, and enhanced damages (up to two times damages) and attorneys’ fees under certain circumstances. The Defend Trade Secrets Act, additionally, creates a federal civil cause of action for misappropriation, and enables plaintiffs to also seek an ex parte seizure order, permitting an aggrieved party to seek relief from the court to seize misappropriated trade secrets without providing prior notice to the alleged wrongdoer.

      Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement? Is there any distinction to be made with respect to improvements to which the licensee may have contributed?

      Generally, a licensor can restrict disclosure or use of trade secrets and know-how by the licensee or third parties both during and after the term of the licence. Improvements and the underlying trade secret or know-how should be addressed separately in licences; however, it is not unusual for parties to agree to the same rights or obligations concerning these items.


      What constitutes copyright in your jurisdiction and how can it be protected?

      Copyright protection automatically applies to ‘original works of authorship fixed in any tangible medium of expression’ (17 USC 102), which include: literary, musical, dramatic, pictorial, and architectural works. Copyright protection typically does not extend to any idea, procedure, process, system, method of operation, concept, principle or discovery, but computer source code is copyrightable as a literary work, and manifestations, such as the visual display, may be copyrightable as an audiovisual work. Registration also provides the opportunity to recover statutory damages and attorneys’ fees in court. Additionally, a work that is registered within five years of the date of first publication will constitute prima facie evidence in court that the copyright is valid.