The document discusses non-obviousness, which is a requirement for patentability. To satisfy non-obviousness, an invention must not be obvious to someone with skill in the related field. While it does not need to be a brilliant act of new genius, the combination of elements cannot be obvious and must provide a utility greater than the sum of the parts. The patent application process involves initially filing a provisional application, then a formal application which undergoes review and potential appeals before a patent is issued. The process is lengthy and obtaining a US patent can cost over $1 million due to extensive legal costs.
The document discusses various topics related to patent searching and drafting patent claims including:
1) The purposes of conducting patent searches such as avoiding infringement and monitoring competitors.
2) Resources for conducting patent searches such as online databases and tools from patent offices which provide time-efficient and cost-effective access to comprehensive international patent information.
3) Key considerations for drafting patent claims including writing broad and narrow claims to fully cover the invention while avoiding prior art and unnecessary limitations.
The document discusses amendments made to the Indian Patents Act of 1970 in 1999 and 2002. Some key changes included introducing provisions for product patents in pharmaceuticals, granting exclusive marketing rights, allowing simultaneous foreign patent filings, strengthening disclosure requirements, and increasing patent terms to 20 years. The amendments also aimed to strengthen India's ability to protect public health and promote generic drug production through measures like compulsory licensing.
Licensing allows a company to generate revenue from its intellectual property while another entity uses the IP under agreed terms. The owner of the IP retains ownership and controls how the IP is used through the license agreement. Key terms of a license include exclusivity, territory, royalty payments, minimum royalties, and termination clauses. Licensing has advantages like immediate revenue, risk reduction, and accessing new markets. However, licenses can increase product expenses and require ongoing development work from the licensor. Proper negotiation and drafting of the license agreement is important for success.
This document provides an overview of patents, including definitions, the need for patenting, conditions for patentability, types of patents, parts of a patent document, the patent application process, and search techniques. Key points include: a patent provides exclusive rights to an invention for a limited time; to be patentable, an invention must be novel, non-obvious, and useful; the main types of patents are utility, design, and plant patents; important parts of a patent include the abstract, background, claims, and detailed description; the application process involves filing a provisional or complete specification within 12-15 months; and patent searches help determine patentability and freedom to operate.
The document discusses intellectual property (IP) and patents. It defines IP and the main methods of protecting IP, including patents. Patents provide a temporary monopoly on inventions and encourage innovation. The summary describes the patent process, including filing requirements, examination, opposition periods, and duration of typically 20 years. It outlines strategies for patenting, such as aggressively patenting everything or using patents defensively. The benefits of patents include exclusivity, monopoly pricing and licensing income. Infringement can result in injunctions or requirement to pay reasonable royalties or lost profits.
David Furtado brings to the forefront just how important patent protection is for a business. Patents protect businesses from copyright and other legal issues.
This document outlines the stages of filing a patent in India. There are 7 main steps: 1) Filing a provisional or complete application, 2) Filing the complete specification within 12 months, 3) Publication of the application within 18 months, 4) A pre-grant opposition period, 5) Examination by a patent examiner, 6) The applicant responds to any objections, and 7) If approved, the patent is granted for 20 years from the filing date. Key requirements for a patent include novelty, inventive step, and industrial application. Non-patentable inventions include artistic works, business methods, and inventions against universal law.
The document discusses non-obviousness, which is a requirement for patentability. To satisfy non-obviousness, an invention must not be obvious to someone with skill in the related field. While it does not need to be a brilliant act of new genius, the combination of elements cannot be obvious and must provide a utility greater than the sum of the parts. The patent application process involves initially filing a provisional application, then a formal application which undergoes review and potential appeals before a patent is issued. The process is lengthy and obtaining a US patent can cost over $1 million due to extensive legal costs.
The document discusses various topics related to patent searching and drafting patent claims including:
1) The purposes of conducting patent searches such as avoiding infringement and monitoring competitors.
2) Resources for conducting patent searches such as online databases and tools from patent offices which provide time-efficient and cost-effective access to comprehensive international patent information.
3) Key considerations for drafting patent claims including writing broad and narrow claims to fully cover the invention while avoiding prior art and unnecessary limitations.
The document discusses amendments made to the Indian Patents Act of 1970 in 1999 and 2002. Some key changes included introducing provisions for product patents in pharmaceuticals, granting exclusive marketing rights, allowing simultaneous foreign patent filings, strengthening disclosure requirements, and increasing patent terms to 20 years. The amendments also aimed to strengthen India's ability to protect public health and promote generic drug production through measures like compulsory licensing.
Licensing allows a company to generate revenue from its intellectual property while another entity uses the IP under agreed terms. The owner of the IP retains ownership and controls how the IP is used through the license agreement. Key terms of a license include exclusivity, territory, royalty payments, minimum royalties, and termination clauses. Licensing has advantages like immediate revenue, risk reduction, and accessing new markets. However, licenses can increase product expenses and require ongoing development work from the licensor. Proper negotiation and drafting of the license agreement is important for success.
This document provides an overview of patents, including definitions, the need for patenting, conditions for patentability, types of patents, parts of a patent document, the patent application process, and search techniques. Key points include: a patent provides exclusive rights to an invention for a limited time; to be patentable, an invention must be novel, non-obvious, and useful; the main types of patents are utility, design, and plant patents; important parts of a patent include the abstract, background, claims, and detailed description; the application process involves filing a provisional or complete specification within 12-15 months; and patent searches help determine patentability and freedom to operate.
The document discusses intellectual property (IP) and patents. It defines IP and the main methods of protecting IP, including patents. Patents provide a temporary monopoly on inventions and encourage innovation. The summary describes the patent process, including filing requirements, examination, opposition periods, and duration of typically 20 years. It outlines strategies for patenting, such as aggressively patenting everything or using patents defensively. The benefits of patents include exclusivity, monopoly pricing and licensing income. Infringement can result in injunctions or requirement to pay reasonable royalties or lost profits.
David Furtado brings to the forefront just how important patent protection is for a business. Patents protect businesses from copyright and other legal issues.
This document outlines the stages of filing a patent in India. There are 7 main steps: 1) Filing a provisional or complete application, 2) Filing the complete specification within 12 months, 3) Publication of the application within 18 months, 4) A pre-grant opposition period, 5) Examination by a patent examiner, 6) The applicant responds to any objections, and 7) If approved, the patent is granted for 20 years from the filing date. Key requirements for a patent include novelty, inventive step, and industrial application. Non-patentable inventions include artistic works, business methods, and inventions against universal law.
This document discusses compulsory licensing of patents in India. Compulsory licensing allows the government to grant a license to a third party to produce a patented product or use a patented process without the consent of the patent holder. The objectives are to reward patent holders while also making patented pharmaceutical products available to the public at affordable prices. Section 84 of the Indian Patent Act lays out the conditions for granting compulsory licenses, such as if the patented invention is not available to the public at a reasonable price. The first compulsory license granted in India was for the cancer drug Nexavar, allowing generic manufacturer Natco to sell a version at a much lower price than the branded version from Bayer.
The document discusses different types of patent searches including patentability searches, freedom to operate searches, validity searches, landscape searches, state-of-the-art searches, bibliographic searches, continuing searches, assignment searches, number searches, name searches, subject searches, classification searches, family searches, and legal status searches. It provides details on the purpose, timing, and scope of each type of search.
The document discusses intellectual property licensing. It defines licensing as an agreement where the IP owner (licensor) allows another person (licensee) limited use of the IP. There are different types of licensing including exclusive, sole, and non-exclusive. Developing an effective licensing strategy involves protecting the IP, finding the right licensee, assessing foreign markets, and negotiating a fair contract covering compensation, territory, conditions, and more. Franchising is also discussed as a type of licensing where the franchisor's business system is licensed in exchange for fees.
This Presentation teaches on how to search patent using various patent database like Free patent database, Patent database of National Authority and Paid patent database. It also focus on general parts of the patent and why patenting is needed. This presentation was delivered to M.Pharm. student by Mr. Pratik Vora for supporting them in their dissertation topic search. Hope you may find it helpful to you, also.
The document discusses India's Patent Act of 1970 and its amendments. It covers several key points:
- The Act governs patent granting in India and provides protection for 20 years. Patents must meet criteria of novelty, inventive step, and industrial applicability.
- Several types of patents can be granted including ordinary patents, patents of addition, and patents of convention. Both product and process patents are allowed.
- The Act excludes inventions that are offensive, harmful to health/environment, or relate to nuclear technology. Compulsory licensing and revocation provisions aim to protect public interests.
- The patenting process and rights of patentees are outlined along with permissible patent subject matter and exceptions. Maint
Nike sued Adidas for patent infringement over Adidas' use of cushioning technology in its shoes that was similar to Nike's patented Shox technology. Nike had invested heavily in developing Shox and held 19 patents protecting it. Despite these patents, Adidas manufactured and sold shoes using a refashioned version of the Shox technology, called the a3 cushioning system. The court found that Adidas had infringed on Nike's patents by using its patented cushioning technology without permission.
The presentation herein, on the US Patent Process, has been delivered by Mr. Nitin Nair at the National Law School of India University, Bangalore, for Senior Officials of the Ministry of MSME, Government of India. For more information about the presentation or the event, you may contact the Sinapse team at sinapse@bananaip.com.
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
The World Intellectual Property Organization (WIPO) is a specialized UN agency dedicated to developing an accessible international IP system. It was established in 1967 and is headquartered in Geneva, Switzerland. WIPO promotes the protection of IP including copyrights, patents, trademarks, and industrial designs. It works to establish international IP laws and provides global registration and protection services for IP. Its goals include facilitating the use of IP for development and building cooperation and understanding of IP worldwide.
Introduction To Intellectual Property RightsQadir Chamber
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The document discusses intellectual property rights (IPR) and provides an overview of key concepts. It defines IPR as intangible property resulting from creativity that can be owned, bought, sold, and licensed. The major types of IPR are discussed as copyright, trademarks, patents, and industrial designs. The objectives and positive/negative impacts of IPR protection are also summarized.
This document discusses several patent cases in India between foreign pharmaceutical companies and Indian generic drug manufacturers. It summarizes key patent cases such as Novartis vs. India regarding Glivec, Bayer vs. Natco regarding Nexavar, Roche vs. Cipla regarding Tarceva. It also discusses India's patent laws including sections 3(d) and compulsory licensing. Many foreign drug patents were revoked by Indian courts based on lack of innovation or in the interest of public health and making medicines more affordable in India. The document supports India's stance on promoting generic competition and ensuring access to healthcare.
Indian Patent Law: Patentability RequirementsLipika Sahoo
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The document discusses Indian patent law and the requirements for patentability in India. It notes that India follows a first-to-file system. The key requirements for an invention to be patentable are that it must have patentable subject matter, utility, novelty, non-obviousness, and be adequately described in the specification. It lists exclusions such as methods of agriculture or medicine that cannot be patented. The document also outlines the patent filing procedure and timeline in India.
There are four main types of patents: utility patents, provisional patents, design patents, and plant patents. Utility patents protect inventions that are processes, machines, manufactures, or compositions of matter, lasting usually 20 years. Provisional patents establish an early filing date for an invention and last one year. Design patents protect the ornamental design or shape of an object for 14 years. Plant patents protect novel asexually reproduced plant varieties for 20 years. Filing different types of patents provides inventors flexibility in protecting their inventions appropriately.
The document discusses the TRIPS agreement and its impact on Indian patent law. Some key points:
- TRIPS established minimum global standards for intellectual property protection, including recognizing 7 types of IP rights like patents and copyright. It required countries to provide patent protection for inventions in all fields of technology.
- India initially only allowed process patents for food, drugs etc. TRIPS allowed India a 10 year transition period to implement product patents in all areas.
- The 2005 Patent Act Amendment in India fully complied with TRIPS by granting product patents for all inventions effective January 1, 2005. It also addressed issues like patentability criteria, opposition processes, and compulsory licensing.
The above presentation is a step to simplify the concept of Trademark in India.It also focuses on the process of registration under the Trademarks Act 1999.
The presentation simplifies the steps involved and makes it easier to understand the same.
Note:-The following presentation is a general writing containing contents derived from basic knowledge and relevant books and articles.Also it is the original work of the writer.
The document provides an introduction to patent law, including:
1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details.
2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times.
3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
This document provides an overview of intellectual property rights (IPR) in India, focusing on patent laws. It discusses that IPR includes patents, trademarks, copyrights and more. For patents, it outlines the Patent Act of 1970, including that patents protect inventions for 20 years and can be granted to individuals or assignees. The stages of filing a patent application and granting are described, including opposition and revocation processes. Rights of patentees to prevent use of patented inventions are explained. Infringement and related legal reliefs are also summarized.
The document discusses common issues that arise when drafting and negotiating intellectual property (IP) license agreements. It addresses key terms that should be addressed in the license grant, including the parties, subject matter, scope of rights, territory, term, exclusivity, improvements, and assignment. Care must be taken to clearly and specifically define the rights being licensed to avoid ambiguity and conflict.
IP And Licensing What You Need To Know About Trademarks, Patents And Licens...sdgarrison
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A general overview of trademarks, patents and common issues in license agreements presented on March 25, 2011 for The Entrepeneurs Initiative in Tucson, Arizona
This document discusses compulsory licensing of patents in India. Compulsory licensing allows the government to grant a license to a third party to produce a patented product or use a patented process without the consent of the patent holder. The objectives are to reward patent holders while also making patented pharmaceutical products available to the public at affordable prices. Section 84 of the Indian Patent Act lays out the conditions for granting compulsory licenses, such as if the patented invention is not available to the public at a reasonable price. The first compulsory license granted in India was for the cancer drug Nexavar, allowing generic manufacturer Natco to sell a version at a much lower price than the branded version from Bayer.
The document discusses different types of patent searches including patentability searches, freedom to operate searches, validity searches, landscape searches, state-of-the-art searches, bibliographic searches, continuing searches, assignment searches, number searches, name searches, subject searches, classification searches, family searches, and legal status searches. It provides details on the purpose, timing, and scope of each type of search.
The document discusses intellectual property licensing. It defines licensing as an agreement where the IP owner (licensor) allows another person (licensee) limited use of the IP. There are different types of licensing including exclusive, sole, and non-exclusive. Developing an effective licensing strategy involves protecting the IP, finding the right licensee, assessing foreign markets, and negotiating a fair contract covering compensation, territory, conditions, and more. Franchising is also discussed as a type of licensing where the franchisor's business system is licensed in exchange for fees.
This Presentation teaches on how to search patent using various patent database like Free patent database, Patent database of National Authority and Paid patent database. It also focus on general parts of the patent and why patenting is needed. This presentation was delivered to M.Pharm. student by Mr. Pratik Vora for supporting them in their dissertation topic search. Hope you may find it helpful to you, also.
The document discusses India's Patent Act of 1970 and its amendments. It covers several key points:
- The Act governs patent granting in India and provides protection for 20 years. Patents must meet criteria of novelty, inventive step, and industrial applicability.
- Several types of patents can be granted including ordinary patents, patents of addition, and patents of convention. Both product and process patents are allowed.
- The Act excludes inventions that are offensive, harmful to health/environment, or relate to nuclear technology. Compulsory licensing and revocation provisions aim to protect public interests.
- The patenting process and rights of patentees are outlined along with permissible patent subject matter and exceptions. Maint
Nike sued Adidas for patent infringement over Adidas' use of cushioning technology in its shoes that was similar to Nike's patented Shox technology. Nike had invested heavily in developing Shox and held 19 patents protecting it. Despite these patents, Adidas manufactured and sold shoes using a refashioned version of the Shox technology, called the a3 cushioning system. The court found that Adidas had infringed on Nike's patents by using its patented cushioning technology without permission.
The presentation herein, on the US Patent Process, has been delivered by Mr. Nitin Nair at the National Law School of India University, Bangalore, for Senior Officials of the Ministry of MSME, Government of India. For more information about the presentation or the event, you may contact the Sinapse team at sinapse@bananaip.com.
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
The World Intellectual Property Organization (WIPO) is a specialized UN agency dedicated to developing an accessible international IP system. It was established in 1967 and is headquartered in Geneva, Switzerland. WIPO promotes the protection of IP including copyrights, patents, trademarks, and industrial designs. It works to establish international IP laws and provides global registration and protection services for IP. Its goals include facilitating the use of IP for development and building cooperation and understanding of IP worldwide.
Introduction To Intellectual Property RightsQadir Chamber
Â
The document discusses intellectual property rights (IPR) and provides an overview of key concepts. It defines IPR as intangible property resulting from creativity that can be owned, bought, sold, and licensed. The major types of IPR are discussed as copyright, trademarks, patents, and industrial designs. The objectives and positive/negative impacts of IPR protection are also summarized.
This document discusses several patent cases in India between foreign pharmaceutical companies and Indian generic drug manufacturers. It summarizes key patent cases such as Novartis vs. India regarding Glivec, Bayer vs. Natco regarding Nexavar, Roche vs. Cipla regarding Tarceva. It also discusses India's patent laws including sections 3(d) and compulsory licensing. Many foreign drug patents were revoked by Indian courts based on lack of innovation or in the interest of public health and making medicines more affordable in India. The document supports India's stance on promoting generic competition and ensuring access to healthcare.
Indian Patent Law: Patentability RequirementsLipika Sahoo
Â
The document discusses Indian patent law and the requirements for patentability in India. It notes that India follows a first-to-file system. The key requirements for an invention to be patentable are that it must have patentable subject matter, utility, novelty, non-obviousness, and be adequately described in the specification. It lists exclusions such as methods of agriculture or medicine that cannot be patented. The document also outlines the patent filing procedure and timeline in India.
There are four main types of patents: utility patents, provisional patents, design patents, and plant patents. Utility patents protect inventions that are processes, machines, manufactures, or compositions of matter, lasting usually 20 years. Provisional patents establish an early filing date for an invention and last one year. Design patents protect the ornamental design or shape of an object for 14 years. Plant patents protect novel asexually reproduced plant varieties for 20 years. Filing different types of patents provides inventors flexibility in protecting their inventions appropriately.
The document discusses the TRIPS agreement and its impact on Indian patent law. Some key points:
- TRIPS established minimum global standards for intellectual property protection, including recognizing 7 types of IP rights like patents and copyright. It required countries to provide patent protection for inventions in all fields of technology.
- India initially only allowed process patents for food, drugs etc. TRIPS allowed India a 10 year transition period to implement product patents in all areas.
- The 2005 Patent Act Amendment in India fully complied with TRIPS by granting product patents for all inventions effective January 1, 2005. It also addressed issues like patentability criteria, opposition processes, and compulsory licensing.
The above presentation is a step to simplify the concept of Trademark in India.It also focuses on the process of registration under the Trademarks Act 1999.
The presentation simplifies the steps involved and makes it easier to understand the same.
Note:-The following presentation is a general writing containing contents derived from basic knowledge and relevant books and articles.Also it is the original work of the writer.
The document provides an introduction to patent law, including:
1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details.
2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times.
3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
This document provides an overview of intellectual property rights (IPR) in India, focusing on patent laws. It discusses that IPR includes patents, trademarks, copyrights and more. For patents, it outlines the Patent Act of 1970, including that patents protect inventions for 20 years and can be granted to individuals or assignees. The stages of filing a patent application and granting are described, including opposition and revocation processes. Rights of patentees to prevent use of patented inventions are explained. Infringement and related legal reliefs are also summarized.
The document discusses common issues that arise when drafting and negotiating intellectual property (IP) license agreements. It addresses key terms that should be addressed in the license grant, including the parties, subject matter, scope of rights, territory, term, exclusivity, improvements, and assignment. Care must be taken to clearly and specifically define the rights being licensed to avoid ambiguity and conflict.
IP And Licensing What You Need To Know About Trademarks, Patents And Licens...sdgarrison
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A general overview of trademarks, patents and common issues in license agreements presented on March 25, 2011 for The Entrepeneurs Initiative in Tucson, Arizona
Fundamentals of IP and Licensing
Contact Us for Intellectual Property Services
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
The document discusses various types of patent licensing including exclusive, non-exclusive, and royalty-free licenses. It describes key components of a patent license agreement such as background, definitions, license grants, royalties, technical assistance, warranties, terms, termination, recording, and obligations of parties. The document also discusses licensing strategies, antitrust considerations, compulsory licensing, and tips for negotiating patent license agreements.
Introduction to Patents and IP CommercializationHasit Seth
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NEWS FLASH: //Check our latest course offering on Patent-Business-Strategy over at Udemy here: http://www.udemy.com/patent-business-strategy/ with a 50 per cent launch discount //
Introduction to Patents and IP Commercialization. These are slides from a talk I gave at Venture Center NCL (National Chemical Laboratory) in Pune, India to a audience of scientists involved in nanotechnology.
IP protection & commercialization strategiesLead To Win
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This document discusses various intellectual property strategies and commercialization options. It outlines different types of intellectual property including patents, copyrights, trademarks, and trade secrets. It explains why IP is important to protect ownership, control technology transfer, establish means to pursue infringers, and increase competitive advantage. The document also provides details on patent costs, factors to consider in patent strategy, advantages and disadvantages of trade secrets, and components of a license agreement.
This document discusses key components of intellectual property (IP) valuation including:
- Fields of use, which are specific applications that each IP asset must be valued for separately
- Present discounted value, which accounts for the time value of money and risks to calculate the current value of future profit streams
- Discount rates and factors that decrease further into the future and with more risk
- Methods for determining profit including cost-based, market-based, and analyzing the present discounted value of future profit streams under various factors
- Allocating profit between licensors and licensees, which considers up-front payments, milestones, royalties, and risk sharing
- Maximizing IP value by capturing all fields of use
Open source licensing is determined by the licence approved by the Open Source Initiative. Approved licences meet the Open Source Definition and include popular licences like GPL, LGPL, MPL and BSD. Intellectual property rights specify who owns software property through agreements and contracts. All software projects must keep detailed records of licensing and ownership of contributions in an IPR registry to properly manage copyrights and the effects of open source licensing.
This document discusses patent infringement, including what it is, types of infringement, how to judge infringement, and potential consequences. Patent infringement occurs when someone makes, uses, or sells a patented invention without permission from the patent holder. There are two types of infringement: direct infringement involves directly using the patented invention, while indirect infringement involves supplying parts that can only be used with a patented invention. To determine if infringement occurred, a court will analyze the patent claims and see if they encompass the accused device or process. Potential consequences of infringement include barriers to innovation, damage to economic and legal systems, and financial remedies determined in court cases.
1. Technology licensing pathways include licensing from research institutes, commercial firms, independent innovators, and open innovation platforms. Key factors for licensing include patents, innovation, technology, products, revenue, and value.
2. Battery startups can gain competitive advantages through partnerships with national laboratories to develop new battery technologies and acquire promising patents and innovations through such collaborations and grants.
3. Open innovation provides opportunities to tap unknown sources for problem solving and opportunities, but comprehensive intellectual property strategies are needed to integrate proprietary and shared knowledge from such collaborations.
This document provides the pricing and order form for a SawStop jobsite saw and accessories. It lists the price for shipping a saw directly from SawStop to a customer as $100. It also provides the item descriptions, part numbers, prices and quantities for the 1.5HP jobsite saw and various blade cartridges, guards, inserts and blades that can be ordered. Shipping rates and notices that prices are subject to change without notice are also included.
The SawStop Jobsite Saw provides SawStop safety technology in a compact, portable design. It features an innovative one-turn blade elevation system, easy blade tilting, advanced dust collection, and a smooth-sliding fence for accuracy. The low-profile blade guard and quick-change riving knife increase safety while minimizing interference. Large wheels and a collapsible cart make it easy to transport the saw between job sites.
Ron Zink: intellectual property and how to protect your brand and innovationIAMCP MENTORING
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Ron Zink from Microsoft Corp. describes how to protect intellectual property and strengthen brand in innovative business.
The presentation was delivered at the IAMCP Europe annual summit in 2012. Join the IAMCP (www.iamcp.org) and stay in touch day-to-day.
Licensing is a marketing tool; so powerful to give the licensee the temporary right to exploit and develop a brand in an agreed market. It’s a fast and riskless technique to capitalize brand in short time
This document discusses various aspects of intellectual property law, focusing on patents, designs, and trademarks. It provides details on:
1) What constitutes a patentable invention and the process for obtaining a patent. Patents provide a temporary monopoly for new inventions.
2) Industrial designs, which protect the visual appearance of objects, and how designs are registered.
3) Trademarks, which distinguish goods and services of different sources, and how trademarks are registered and protected from infringement.
The document outlines intellectual property management in Pakistan. It discusses the intellectual property assets that are protected, including patents, trademarks, copyrights, and more. It summarizes the legal framework for intellectual property protection in Pakistan, both historically and under the current Intellectual Property Organization of Pakistan Ordinance. The document also provides information on filing for various types of intellectual property protections in Pakistan.
Groundless threat of infringement remedies under ip lawsAltacit Global
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The document discusses groundless threats of infringement under intellectual property (IP) laws. It provides that IP laws allow those who receive unjustified threats of legal action for infringement to sue the party making the threats. The key remedies under patent, copyright, and trademark laws in India include injunctions against further threats and potential damages. An example case discusses a company obtaining an injunction when threatened with legal action over its trademark by another company with no genuine basis for infringement claims.
Initial public offerings (IPOs) in Pakistan saw varying levels of activity between 2005-2014. In 2012, there were only 3 IPOs that raised a total of Rs. 500 million, significantly lower than the Rs. 4.8 billion raised in 2011. However, IPO activity increased in 2013 when 3 companies raised Rs. 4.2 billion after the change in government in May 2013. Upcoming IPOs in 2014 were expected to include Hascol Petroleum Limited, which planned to raise Rs. 1.4 billion for expanding operations.
This document contains an agenda for a course on intellectual property law taught by Dr. Tabrez Ahmad. The 10 point agenda includes: concepts of property and intellectual property; examples of where IP is used; rationale for IP; public and private protection of IP; the nature and types of IP rights; main IP instruments; strategic elements of IP; international IP frameworks; India's national IP regime; and a recent WIPO case. Students are instructed to collect course materials and join an online group in preparation for the course.
Licensing involves granting permission to use legally protected properties like trademarks or copyrights. Licensing agreements specify the terms under which the licensee can use the property in exchange for fees. Key aspects of licensing agreements include the type of license granted, territory covered, duration and renewal terms, fees and payments, termination clauses, and effects of termination. Well-structured agreements benefit both licensors by expanding their brands and generating revenue, and licensees by leveraging well-known properties to increase sales.
The patent licensing occurs when the licensor (patent holder) grants exploitation rights over a patent to a licensee for royalty or a lump sum payment. A licensee can challenge the validity of a licensed patent to avoid paying royalties, though there are some limitations, such as not being able to challenge after failing to pay royalties. The Supreme Court's MedImmune v. Genentech decision found that licensees can challenge licensed patents even while continuing to pay royalties, increasing licensees' freedom to challenge validity. Licensors may respond by negotiating higher royalties, up-front payments, or termination clauses.
This document outlines key considerations for drafting a technology license agreement, including:
- What can be licensed (patents, know-how, copyrights, designs) and license types (exclusive, non-exclusive, sole)
- Defining the licensed technology and its permitted uses
- Scope of the license (make, use, sell, import, distribute, sublicense rights)
- Payment terms (royalties, lump sums, minimum annual payments, milestones)
- Provisions for improvements, infringement, term and termination
- Dispute resolution, choice of law, warranties, indemnities, and recordal of the license
This document outlines key issues to consider when drafting a technology license agreement. It discusses what types of intellectual property can be licensed (patents, know-how, copyrights, designs), the scope of the license granted, important parties, payment terms, infringement provisions, term and termination, dispute resolution, competition law considerations, warranties, and recordal of the license. Key points covered include defining the licensed technology, exclusivity, field of use restrictions, ownership and licensing of improvements, royalty structures, termination rights, applicable laws, and ensuring the agreement complies with competition regulations.
Mitigating Risks Through Contracts - Poorvi ChothaniGetEvangelized
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The document discusses legal risks associated with contracts and their mitigation. It defines what a contract is and highlights risks like ambiguity, lack of clarity around obligations, and inadequately defined terms. It then outlines strategies to manage these risks such as having lawyers draft contracts, defining scope of work and deliverables clearly, including liability limitations, dispute resolution clauses, and indemnification clauses. The document emphasizes the importance of reviewing contracts systematically to identify risks and ensure compliance.
LES World IP Day - Top Licensing Mistakes - Emily Bayton, Lewis Roca Rothgerb...Traklight.com
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Failing to properly define key terms of an intellectual property license can lead to problems. Licensors should ensure licenses clearly specify the intangible assets, rights, territory, exclusivity, term, restrictions, enforcement provisions, termination rights, post-termination obligations, ways to structure payments, diligence duties, representations and warranties, and recordation obligations. Without addressing these important issues, licenses risk being improperly granted, ambiguous, or failing to protect the interests of both parties.
This document discusses four lessons learned in handling license agreements:
1) Licenses always entail some risk to the licensee's freedom to operate as the licensee does not have complete control over the intellectual property.
2) Complex license structures can invite misunderstanding between the licensor and licensee.
3) Business people and lawyers may have different interests in structuring agreements, with lawyers focused on contingency and business people on timelines.
4) When negotiating, understand both sides' cost-benefit considerations, such as expected damages, legal fees, and the negotiation range.
Third party rights allow non-parties to a contract to enforce certain terms of that contract. They provide an alternative to collateral warranties in construction contracts. Uptake of third party rights has been slow due to familiarity with collateral warranties and concerns over control. However, recent cases indicate third party rights may avoid issues like adjudication that can arise with collateral warranties. Effective drafting and clarity around beneficiaries and their obligations can maximize the benefits of third party rights.
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Materi Workshop Contract Drafting yang disampaikan oleh Bapak Dendi Adisuryo yang memiliki background sebagai commercial lawyer akan memberikan pemahaman dan pandangan kepada peserta workshop mengenai beberapa segi hukum kontrak, norma kepatutan hukum kontrak dalam proses penyusunan kontrak serta mengenai kontrak atas transaksi bisnis yang bersifat lintas negara.
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Intellectual property generally includes patent rights, copyright rights, trademark and servicemark rights, and trade secrets. The foundation of intellectual property law is the protection of exclusive rights afforded to original works and invention. These rights can be significantly impacted by bankruptcy proceedings. This webinar examines some of these key issues including the perfection of security interests in intellectual property, the protection of certain intellectual property licenses and lack of protection for other types of intellectual property, the relief available to licensors, as well as special issues regarding assignment of licenses in bankruptcy proceedings.
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TrustArc Webinar - 2024 Global Privacy SurveyTrustArc
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How does your privacy program stack up against your peers? What challenges are privacy teams tackling and prioritizing in 2024?
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See how organizational priorities and strategic approaches to data security and privacy are evolving around the globe.
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How to Interpret Trends in the Kalyan Rajdhani Mix Chart.pdfChart Kalyan
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A Mix Chart displays historical data of numbers in a graphical or tabular form. The Kalyan Rajdhani Mix Chart specifically shows the results of a sequence of numbers over different periods.
This presentation provides valuable insights into effective cost-saving techniques on AWS. Learn how to optimize your AWS resources by rightsizing, increasing elasticity, picking the right storage class, and choosing the best pricing model. Additionally, discover essential governance mechanisms to ensure continuous cost efficiency. Whether you are new to AWS or an experienced user, this presentation provides clear and practical tips to help you reduce your cloud costs and get the most out of your budget.
Generating privacy-protected synthetic data using Secludy and MilvusZilliz
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During this demo, the founders of Secludy will demonstrate how their system utilizes Milvus to store and manipulate embeddings for generating privacy-protected synthetic data. Their approach not only maintains the confidentiality of the original data but also enhances the utility and scalability of LLMs under privacy constraints. Attendees, including machine learning engineers, data scientists, and data managers, will witness first-hand how Secludy's integration with Milvus empowers organizations to harness the power of LLMs securely and efficiently.
Skybuffer SAM4U tool for SAP license adoptionTatiana Kojar
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Manage and optimize your license adoption and consumption with SAM4U, an SAP free customer software asset management tool.
SAM4U, an SAP complimentary software asset management tool for customers, delivers a detailed and well-structured overview of license inventory and usage with a user-friendly interface. We offer a hosted, cost-effective, and performance-optimized SAM4U setup in the Skybuffer Cloud environment. You retain ownership of the system and data, while we manage the ABAP 7.58 infrastructure, ensuring fixed Total Cost of Ownership (TCO) and exceptional services through the SAP Fiori interface.
1. License Agreements A brief review of the types of negotiated license agreements, applicable law, and the parts of agreements by Steve Ritchey 1
2. A License Agreement is a Unique Business Arrangement Memorializes Evolving Business Relationship Defines Immediate Rights & Obligations Business peoples’ primary concerns Conveys Parties’ Intentions as to Future Events Technology becomes obsolete Merger or acquisition Changes in law or market power Lawyers’ primary concerns dealing with remedies associated with possible future events People that negotiated the agreement will probably not be around when a problem arises 2
3. General Rules Try to avoid ambiguities Resolved against the drafter Use terminology consistently Strive for completeness and clarity Overemphasizing brevity and simplicity often leads to ambiguity and disputes Negotiated ambiguity is to be tolerated Use boilerplate with care 3
4. Transfer of Patent Rights Patent is a Right to Exclude Make, Use, Sell, Offer for Sale, Import May license each separately Transfer of Right to Exclude is an Assignment Waiver of Right to Exclude is a License 4
5. Assignment or LicenseSubstance over Form Contract terms, not title, controls Exclusive license may be an assignment “All substantial rights transferred” such as to a specific geographic part of the U.S. or the entire U.S., or an undivided share of the patent. Assignment may be found despite conditions subsequent Payment of royalties Best efforts Other conditions outside control of assignor 5
6. Assignment or LicenseWhy is it important? Tax Liability License – ordinary income Assignment – capital gains and depreciation Transfer of all substantial rights is assignment for tax purposes Standing to Sue for Infringement Patent owner or exclusive licensee alone or joining licensor “all substantial rights” standard is different for tax and standing to sue for infringement Very fact specific; granting unqualified right to sue tends to be dispositive; but qualified right to sue not effective (e.g., licensee has first right to sue but if declined licensor has right) 6
7. Agreements to Assign Applies to any arrangement in which Inventions are expected Consulting Contracts, development agreements Employment contracts; don’t rely on implied right to own Agreement to assign vs. present assignment Equitable title vs. Legal title Equitable remedies vs. Damages Assignment of Right, Title, and Interest does not convey right to sue for past infringement; must be separately granted 7
8. Joint Ownership General rule in US - an owner may license without permission from or accounting to other owner(s) Contract provisions will control May grant immunity from suit by other owner Need not share license royalties May not grant exclusive license but may grant exclusive right to that owner’s interest All Owners Needed for Suit Owners may not be compelled unless in a contract 8
9. Primary Types of Negotiated Licenses Express Licenses Exclusive Licenses Nonexclusive Licenses Covenant not to sue Field of Use Licenses Cross Licenses Grantback Licenses Sublicenses 9
10. Express Licenses Written or oral Written contract Exchange of correspondence Oral if terms provable Partial performance Acceptance of payment 10
11. Exclusive Licenses May be an Assignment - rare Agreement not to grant further licenses May be preexisting nonexclusive licenses Agreement not to practice under patent Reservation of right May be limited in time, territory, and field Exclusive Licensee may sue for infringement Can compel joinder of Licensor Though implied, it is advisable to specify terms such as control of litigation, sharing of costs and recovery 11
12. Exclusive Licenses (cont.) Implied Obligation to Exploit “Best Efforts” or “Due Diligence” provisions can be vague Advisable to expressly agree on what constituted best efforts or due diligence Alternatively, set minimum annual royalties with termination or conversion to nonexclusive license Disclaimer of obligation possible but may bring the “consideration” in question 12
13. Possible concerns associated with Exclusive Licenses If total value of agreement is over $50M it may be an Asset Transfer requiring Hart-Scott-Rodino Filing Possible Antitrust Consequences - fact specific; inconsistent enforcement Exclusive rights are “assets” and their acquisition in certain circumstances can violate Section 7 of Clayton Act (a holding company used to promote monopoly) Failure to grant sublicensing rights may imply or expressly require illicit interaction between licensee and licensor in granting or withholding further licenses Exclusive licenses for particular fields can be evidence of illegal allocation and segregation of those fields 13
14. Nonexclusive Licenses Simply a promise not to sue for patent infringement Licensee gets no protection from unlicensed competition Absent contract provision for abating third party infringement Licensor may grant other licenses Nonexclusive licensee may seek most favored licensee protection (often difficult to arrive at terms, contentious) 14
15. Covenant Not to Sue A personal promise – not a transferable license May not run with patent only particular identified product (patent may cover multiple products) Likely considered to cover covenantee and its customers if covenantor knew covenantee will continue making and selling patented products Advisable that agreement granting covenant not to sue expressly address scope Patentee reserves right to sue covenantee’s customers Patent-based scope vs. product-based scope 15
16. Field of Use License Where a patented invention has different uses, such uses may be separately licensed Can maximize the use of the technology and thereby revenue Practice outside of licensed field is an infringement Divisions can be by, e.g., market, size, uses, applications The key is the definition of the field May be exclusive or nonexclusive May have antitrust consequences (intentional restraint of normal competition) 16
17. Cross License Parties exchange technologies Blocking patent(s) Can be patents on different technologies “Consideration” may be more than the license (e.g., money, litigation settlement) May have antitrust consequences Parties agree to consult before granting further licenses Patent pools combining most of the relevant technologies; normally not a problem so long as each member can license someone outside the pool; in the past Justice Dept tended not to view patent pools favorably but that has changed significantly over the past couple of decades 17
18. Grantback Licenses A license directed to “improvements,” which are typically defined as inventions made by the licensee that cannot be practiced without infringing the licensed patent(s) “Consideration” in the license agreement includes the grantback Can be exclusive, nonexclusive, limited to field, etc. 18
19. Sublicenses Structure: Patent Owner -> Licensee -> Sublicensee Purpose: to allow for broad dissemination of technology Different from “have made” right, which is implied unless expressly restricted; right to sell typically includes “have sold” unless expressly addressed Unless specified in license agreement, a licensee is generally not responsible for actions of the sublicensee 19
20. Sublicenses (cont.) Authority to grant sublicenses The right to grant sublicenses must be expressly set for in license agreement Scope of licensee’s authority to grant sublicenses is determined by the terms of the license agreement Sublicense cannot be less restrictive than license (e.g., can’t have a lower royalty rate or to a larger territory) Advisable to specify terms for sublicenses in license agreement (e.g., can sublicensees grant sublicenses, up-front payments, minimum payments, etc.) Advisable to require that licensee notify licensor of sublicensees to avoid accidental suits 20
21. Sublicenses (cont.) An authorized sublicense is, in effect, an agreement between the licensor and the sublicensee Unless specified otherwise, a sublicense usually continues despite early termination of the license agreement; sublicensee will then render payments and other obligations to the licensor Caution: sublicensing involves agency law Possibility for revocation of authority to grant sublicenses; possible protection from revocability if licensee obtains a property interest in the patent Licensor may be estopped from denying sublicensee’s right — detrimental reliance of sublicensee; possibly require licensor review and approval of sublicenses or require licensee to allow sublicensee to review license 21
22. Parts of a License Agreement Preamble – identifies the parties and usually the effective date Recitals – described background relationship of the parties Definitions – probably the most difficult and time consuming portion of an agreement to negotiate and draft; Avoids ambiguity from inaccurate repetition; where parties use different words it is presumed different meanings were intended Aids in achieving conciseness and clarity Specify omissions and inclusions Special meanings to terms Caution – avoid circularity in definitions 22
23. Definitions (cont.) Licensed Patents Identify specific existing patents and applications Consider whether continuations, continuations-in-part, divisionals, corresponding foreign patents, utility models, design patents, inventor’s certificates, reissues, patents of additions, extensions, etc. are to be included Inventions made for a specified period of time Licensed Products May serve to limit scope of license if defined as less than scope of patents; field of use may also serve this purpose 23
24. Grant Clause – licensor grants to licensee Agrees to grant for future (e.g., an option agreement Subsidiaries, affiliates, controlled companies - usually addressed in definitions Consider change of control clauses (e.g., licensed subsidiary could retain license after it is sold). Consider whether performance obligations must be met by each individual subsidiary 24
25. Grant Clause (cont.) Can include combinations of exclusive, nonexclusive, field of use, grantbacks, cross licenses, etc. Expressly include right to grant sublicenses Under what Licensed patents Know-how, technical information To do what Make, use, sell, offer for sale, import, export, otherwise dispose of, etc. Should expressly exclude implied rights to “have made” or “have sold”, if intended 25
26. Grant Clause (cont.) Geographic scope – U.S., its territories, and possessions, other specified countries, worldwide; can be defined as “Licensed Territory” Term of the Grant – unless agreed otherwise the term of the grant is usually presumed to be for the life of the patents. Reservations – explicit provisions inconsistent with license grant such as licensor reserving right to practice patent when granting an exclusive license or prior licenses 26
27. Money – usually the most significant part of the “consideration” Sum certain payments — paid-up license, pay over time, or a combination Milestone payments — can be milestones for both parties (e.g., licensee reaching a development stage or licensor having a patent issue) Royalties — payments based in some manner on sales or use of Licensed Products or licensed methods; may be based on patents, know-how, or a combination Reimbursement of patent prosecution costs 27
28. Royalties Arrive at a Royalty Base then a Royalty Rate Ideally royalty base should (a) relate directly to the licensee’s use of the licensed rights and (b) be amenable to reliable accounting and auditing Thus, it will vary with the licensed technology. Consider patent claim scope Products to be sold Processes to be used Base can be broader than claim if voluntary or negotiated (e.g., patented product is seatbelt but royalty is based on cost of auto)– can possibly implicate antitrust concerns 28
29. Royalties (cont.) Examples for a royalty base when licensed process or product is not sold Volume of raw material used (often appropriate for process license) or production volume (often used where product is intermediate or subcomponent) Not inflation sensitive, without escalation provision Example of royalty base when licensed process or product is sold Net or gross sales price often used Records routinely kept Directly related to use of technology Automatically adjusts for inflation and competition 29
30. Royalties (cont.) “Reach-through” license – tie royalties to sales of identified products not manufactured directly through use of patented product or method Typically used for biotech technologies where use is difficult to police (e.g., research tools) Can be beneficial to both parties Allows licensees to use technology and defer payments until use yields commercial results Allows licensors to have potential for enhanced royalty income based on larger payoff from sales of downstream products rather than certain, but smaller, upfront fees Can result in royalty payments being made after patent expiration; not patent misuse if structured properly For example, royalty paid on the sales of products discovered with research tool for life of patent on discovered product or if not patented for x years from first sale 30
31. Royalties (cont.) Other factors that may impact royalty base and royalty rates Different levels of value added may affect royalty base and royalty rate Sales to Related Companies / non-arms length transactions Other dispositions – leases, given away, use by licensee Patent applications vs. issued patents, trade secrets 31
32. Royalties as Incentives Minimum annual royalties – to maintain license or exclusivity Advance minimum royalty payments Possibly increasing over time to encourage effort Variable Royalties Typically rate is inverse to production volume Vary royalty rate with profit margin; if competition decreases prices, royalty rate is automatically decreased but if efficiency increases both parties earn more 32
33. Royalty Reporting & Accounting Licensee is usually expressly required to keep sufficient records to determine the royalties due licensor Licensor usually has right to audit records of licensee, normally at licensor’s expense unless discrepancy exceeds a threshold The content of reports is negotiable but should be specified along with reporting period(s) and timing of payments Post-termination report is typical 33
34. Indemnification from torts Primarily for limiting the liability of licensor for damages arising from sale or use of licensed products and processes Typically includes duty to defend and indemnify Licensee may be required to maintain liability insurance listing licensor as additional named insured 34
35. Representations & Warranties Usual for Licensors Power to grant license No inconsistent actions have been nor will be taken Title to patent Licensor will not practice under the patent, if exclusive license with no reservation Disclaim (a) validity or scope of patent, (b) noninfringement of third party patents, (c) merchantability, (d) license under other patents, and (e) use of licensor’s name. 35
36. Succession or Assignment of Rights and Obligations Determine whether one or both of the parties can assign their rights and obligations under the agreement to third parties and to what extent Advisable to require assignee to expressly agree to be bound to the terms of the agreement Ability to assign allows for flexibility in spinning off, mergers, sale of relevant business assets, etc. Assignment to competitors can be a concern 36
37. Bankruptcy Treatment of license agreements provided for in bankruptcy code A license agreement is an asset of a licensee A clause terminating a license upon filing for bankruptcy is not illegal but may not be enforceable; could be helpful if bankruptcy petition is rejected Most licenses are considered “executory contracts” and may be rejected or assigned by bankruptcy trustee Consider requiring notice of acts that may signal impending bankruptcy (e.g., pledging of assets or making late payments) or obtaining a security interest in license 37
38. Abating Infringement by Third Party Nonexclusive licensee may be harmed by a tolerated infringer – absent contract provisions, no right to bring suit Exclusive licensee may bring suit and join licensor Licensor agrees to abate infringement Establish criteria – how much infringement, how much proof of infringement, notice Other conditions – possibly limit to one suit at a time Possible remedies for Licensor’s failure to abate Termination, suspension or reduction of royalties, licensee having right to sue in name of licensor 38
39. Term and Termination Absent specified term it is typically presumed to be for life of patents Termination on “Material Breach” Usually notice and cure provisions Acts considered to be material may be defined Termination without cause – usually only appropriate for nonexclusive licensees Termination for failing to pay minimum annual amounts Termination because of financial problems 39
40. Term and Termination (cont.) Specify effects of termination Accrued royalties, reporting, auditing Disposition of existing products Confidentiality Sublicenses Right to use know-how/trade secrets 40
41. Dispute Resolution Alternative Dispute Resolution – arbitration, mediation Choice of law, specify rules, panel size and qualifications, location, language, time limits, etc. Court proceedings even if ADR is applicable to compel arbitration or appealing an award Jurisdiction, venue, choice of law International choices of law – US courts likely to enforce 41
42. Challenges to Validity of Licensed Patents by Licensee Public policy reasons for allowing challenges – strong public interest in free competition and in ideas in the public domain; licensee may have the greatest economic incentive to change validity Cannot enforce a promise not to challenge But may be able to terminate in the event of a challenge MedImmune – US Supreme Court (2007) case held that licensee can file Declaratory Judgment action alleging invalidity without repudiating license (continuing to meet its obligations such as paying royalties) 42
43. Other Provisions Patent marking – required for licensor to recover damages; recent case law may result in a trend of increased false marking lawsuits based on expired patents Force majeure – excuses performance prevented by cause outside of control of party Severability – any provision held to be illegal is severed from the agreement so long as it does not go to the heart of the agreement Amendment – usually required to be in writing and agreed to by both parties Waiver – waiving a breach does not waive subsequent breaches Integration – this is the entire agreement and supersedes all other prior agreements or understandings Government approvals – for example, U.S. export control, USDA, etc. 43
44. Conclusion The law around licensing is fact specific, complex, and sometimes contradictory. This presentation focused on the general rules; exceptions apply to nearly all of the general rules. Therefore, consult an attorney to obtain legal advice for your particular situation. Disclaimer: This presentation is intended for information only and should not be considered legal advice. 44