Intellectual Property

Citizen Petitions Are Crucial In Managing A Drug's Life Cycle

When properly applied, citizen petitions allow drug companies to extend the valuable near-end period of drug market exclusivity, and in some instances they can broadly impact the availability of drug products, say attorneys at Wilson Sonsini.

What NCAA Publicity Rights Guidance Means For Athletes

Following the recent release of NCAA student-athlete compensation guidelines, it remains unclear how disparate governing bodies will choose to set rules, leaving student-athletes seeking to commercialize their names, images or likenesses through contracts or trademark rights with a confusing mix of incentives and prohibitions, says Radhika Raman of Knobbe Martens.

How Fed. Circ. May Defer To PTAB In Facebook Case

The appeal of six inter partes reviews in Facebook v. Windy City presents an opportunity for the Federal Circuit to provide clarity on the appropriate level of deference to be afforded holdings of the Patent Trial and Appeal Board's precedent-setting panel, and it may even provide a chance for the U.S. Supreme Court to weigh in, say attorneys at Cadwalader.

Calif. Amended Software Tax Regs Have Major Flaws

The California Department of Tax and Fee Administration's proposed amendments to a sales tax regulation for technology transfer agreements recently received an icy reception indicative of the regulation's flaws and inconsistencies with prior court rulings, say Eric Coffill and Alexandra Louderback of Eversheds Sutherland.

Teaching Witnesses To Avoid Cross-Examination Traps

It’s common for inexperienced witnesses to become ensnared in their own responses during cross-examination, so they should be coached in advance on how to break down each question-and-answer scenario into three distinct phases, says Jeff Dougherty of Litigation IQ.

Retaining Federal Jurisdiction After Fed. Circ. License Ruling

Following the Federal Circuit's recent holding in Inspired Development v. Inspired Products that unjust enrichment claims pertaining to a license agreement did not arise under federal patent law, parties can keep jurisdiction on their side by drafting licensing agreements with an eye toward litigation and carefully selecting claims to assert, say Jeffrey Whittle and Christopher Limbacher of Womble Bond.

Where A Litigator's Advice Can Improve Agreement Drafting

Transactional attorneys should consider consulting with litigation counsel when drafting certain contractual provisions — choice of law, choice of forum, attorney fees and others — that could come into play in a broad range of substantive disputes, says Adrienne Koch at Katsky Korins.

Opportunities Abound In Patent Litigation Funding At The ITC

The recent funding of a patent infringement claim brought by the University of California Santa Barbara demonstrates the advantages of the U.S. International Trade Commission as a venue, where creative intellectual property owners and litigation financers may find lucrative opportunities, despite a few hurdles, say Matt Rizzolo and Hyun-Joong (Daniel) Kim of Ropes & Gray.

NY Tax Minutes: Trump Tax Updates, End To SALT Cap Suit

This month's New York tax news features President Donald Trump — who seeks to change his tax domicile to Florida and continues lawsuits to prevent disclosure of his state tax returns — and a dismissal of the state's lawsuit challenging the federal cap on state and local tax deductions, say Timothy Noonan and Craig Reilly of Hodgson Russ.

New Calif. Pay-For-Delay Law May Hurt Those It Aims To Help

Although well-intentioned, a new California law attempting to prevent patent settlement agreements in which a branded drug company pays a generic company to delay the generic may have the unintended consequence of precluding pro-competitive settlement agreements that allow for generic drug entry significantly earlier than patent expiration, say Chad Landmon and Chantelle Ankerman of Axinn.

Fed. Circ. Offers Obviousness-Type Double Patenting Cure

The Federal Circuit’s recent decision in Sanofi-Aventis v. Dr. Reddy’s Labs suggests that, in the right circumstances, reissue of reference patent claims may effectively cure obviousness-type double patenting, and use of reissue to remedy OTDP seems consistent with the remedial nature of the corresponding statute, says David Manspeizer of Squire Patton.

As Cannabis IP Grows, So Do State Licensing Headaches

Washington and Colorado have come up with disparate regulations for cannabis-related intellectual property transactions, providing an indication of the licensing challenges ahead for attorneys drafting cannabis agreements across state lines, say attorneys at Eversheds Sutherland.

Undressing The Risks Of Naked TM Licensing

Earlier this year, in Mission Product v. Tempnology, the U.S. Supreme Court addressed the issue of naked licenses resulting in trademark abandonment, an outcome that can be avoided if attorneys counseling suppliers address the requisite quality controls in supplier/distributor agreements, says Joseph Sullivan of Taylor English.

Parties Seeking PTAB Attorney Fees Face High Bar In Courts

A Michigan federal court recently held in American Vehicular Sciences v. Autoliv that prevailing patent litigants can recover attorney fees for work done before the Patent Trial and Appeal Board only in exceptional circumstances, highlighting the tension between Section 285 of the Patent Act and the PTAB regime, say attorneys at Finnegan.

Opinion

Flat-Fee Legal Billing Can Liberate Attorneys

Replacing hourly billing with flat-fee arrangements, especially for appellate work, will leave attorneys feeling free to spend as much time as necessary to produce their highest quality work, says Lawrence Ebner of Capital Appellate Advocacy.