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Intellectual Property, Software, and Information Licensing: Law and Practice, with 2016 Cumulative Supplement

Published by Bloomberg BNA
By Xuan-Thao N. Nguyen, Robert W. Gomulkiewicz, and Danielle M. Conway
Publication Date: 2016
2,264 pages

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Intellectual Property, Software, and Information Licensing: Law and PracticeLicensing laws are constantly created and revised to keep pace with developer and user needs. One source will keep you up-to-date with the information and tools you’ll need to stay on top of the latest cases related to IP licensing. 

Intellectual Property, Software, and Information Licensing: Law and Practice is a comprehensive resource and accompanying CD-ROM covering all the information and tools you need to develop comprehensive licensing agreements, rectify existing problems, maximize returns within the legal boundaries, anticipate new concerns, and avoid potential pitfalls. Unlike other licensing treatises — that focus on either license drafting or on the theory of license agreements — this valuable resource draws from the authors’ wealth of professional expertise to develop a theoretical and practical balance.

Take a look at some of the timely topics you’ll find covered in Intellectual Property, Software, and Information Licensing: Law and Practice:

  • Objectives and Underlying Law of Common License Provisions
  • License Drafting: Approaches, Strategies, Samples, and Best Practices
  • Patent Licensing, Trade Secret Licensing, Copyright Licensing, Software Licensing, Multimedia Licensing, and Information Licensing
  • Licensing the Right of Publicity
  • Government Contracts and Intellectual Property Licensing
  • Antitrust Issues in Intellectual Property Licensing
  • Bankruptcy Issues in Intellectual Property Licensing
  • Taxation Issues in Intellectual Property Licensing

New in the 2016 Supplement:

  • The Brulotte rule that patentees cannot collect royalties beyond the patent term survives, as the Supreme Court in Kimbel v. Marvel Entertainment declines to overrule the bright line and refuses to adopt case-by-case approach based on antitrust law’s rule of reason.

  • The Seventh Circuit held that the sale of the licensee did not constitute an assignment of the patent license agreement in violation of the anti-assignment clause because the agreement failed to include a restriction on who could own or control the licensee.

  • An exclusive licensee had no standing to bring an infringement against its competitor without joining the patentee because the license agreement contained “field of use” restriction and the nunc pro tunc amended agreement eliminating the “field of use” restriction failed to cure the standing problem, as the Federal Circuit held in a case after litigated on the merits.

  • Does an exclusive licensee’s standing change if the licensee receives the license after the patent has expired?

  • Does the licensee in a patent license agreement with foreign law as the choice of law have the burden to inform the district court to apply foreign law in interpreting the contract?

  • The Eighth Circuit held that the licensee’s fraud claim against the licensor survived summary judgment motion in a case of breach of patent license agreement, fraud, and deceptive trade practices claims where the jury awarded $786,000 in contract damages against the licensor.

  • The Second Circuit reinstated the claims brought by the licensee against the licensor for use of the licensed trademarks even though the licensor retained the ownership in the trademark.

  • Trademark licensee who ignored choice of law and forum in litigating a breach of contract action in foreign court was ordered to litigate in New York court.

  • The Eighth Circuit addressed whether an implied license can be limited in scope after the copyrighted work has been delivered.

  • The Delaware Bankruptcy Court ruled that the Debtors are prohibited from assuming or assigning the Trump trademark license agreement, despite the fact that the Debtors had no immediate plans to assign the agreement to a third party, and allowed Trump relief from the automatic stay and to proceed with the action in state court against the Debtors.

  • New questions on the intersection of patent licenses and bankruptcy:  Does section 365(n) cover exclusive distribution agreement of patented products?  Does the section protect the non-debtor party to retain the right to continue to distribute patented products?

  • The Eighth Circuit considered whether a grant of security interest in trademarks, though properly perfected, is subject to bankruptcy trustee’s power to avoid the security interest as a fraudulent transfer.

About the Publisher and the Authors

Technology Transfer Tactics is proud to partner with Bloomberg BNA Books to bring our customers access to this comprehensive and authoritative resource. All Bloomberg BNA Books are written by respected experts with extensive experience in patent law and IP licensing. These renowned authors draw from their wealth of professional expertise and in-depth research to deliver the most highly regarded editorial quality in the industry.

Intellectual Property, Software, and Information Licensing: Law and Practice is authored by Xuan-Thao N. Nguyen, JD, Professor of Law at the SMU Dedman School of Law, Dallas, TX; Robert W. Gomulkiewicz, JD, Professor of Law at the University of Washington School of Law, Seattle, WA; and Danielle M. Conway, JD, LLM, who is a Michael J. Marks Distinguished Professor of Business Law and Director of the Hawaii Procurement Institute at the University of Hawaii at Manoa William S. Richardson School of Law.

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