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• Integrating Business Goals And The Law In Licensing Deals ( July 2004 )
  Edward F. Perlman of Wolf, Greenfield & Sacks, P.C.

  Today more than ever in-house counsel need to be aware of the broader business context in which a license functions. By understanding the pros and cons of granting or taking a license you can work together to create an agreement which will define those rights, obligations and liabilities necessary to create a win-win for both sides.

• IP Strategies In Deals. Seminar Summary of Speaker Wayne Kennard of Hale and Dorr LLP ( June 2004 )
  FindLaw M V

  Wayne Kennard, partner at Hale and Dorr LLP, discussed how to create an effective assertion licensing program. It takes both in-house and outside counsel to look at it. One size does not fit all for a licensing program. One needs to look at one's own business to determine what a licensing program must accomplish.

• Seller Beware: Granting licenses has its issues ( May 2004 )
  Neil P. Ferraro of Wolf, Greenfield & Sacks, P.C.

  Unlike most other kinds of property, Intellectual property, such as patents, trade secrets, trademarks and copyrights, is intangible - it is a product of the mind. But like other property, intellectual property (IP) can be sold, given away or licensed to generate revenue or other valuable assets.

• Patented Technology: Issues in Drafting a License ( November 2003 )
  C. Ben Huber of Dorsey & Whitney, LLP

  Licensing is an important strategy used by patent owners to exploit the value of their technology. This article examines some of the fundamental issues involved in negotiating a license to patented technology.

• Commercialization: Get the Most Out of Your Intellectual Property Rights ( June 2003 )
  Barry J. Hurewitz and Michael A. Diener of Wilmer Cutler Pickering Hale and Dorr LLP

  Companies seeking to profit from their intellectual property may adopt a number of commercialization strategies, ranging from direct sales to the outright sale of their technology. Michael Diener of Hale and Dorr LLP discussed these two strategies, as well as the continuum of options in between them.

• FTC-Rambus Trial To Set The Standard For Antitrust-IP Overlap ( May 2003 )
  Bernard  Rhee and M. June Casalmir of Powell Goldstein LLP

  Against the backdrop of multiple, private patent infringement cases, as well as a two year Federal Trade Commission investigation, the trial of the Commission's case against Rambus, Inc. began on April 30, 2003. In the Matter of Rambus, Incorporated, Docket No. 9302. Although former FTC Administrative Law Judge (ALJ) James Timony handled most of the pre-trial process, recently sworn-in ALJ Stephen McGuire will be presiding over the trial.

• Research Method Patents: A Territoriality Loophole? ( October 2002 )
  Harold C. Wegner and Stephen B. Maebius of Foley & Lardner LLP

  Recent trial court decisions have exposed an Achilles' heel in licensing regimes for research method patents. In <i>Bayer AG v. Housey Pharmaceuticals, Inc.</i>, 169 F. Supp.2d 328 (D. Del. 2001), and in <i>Trustees of Columbia University in City of New York v. Roche Diagnostics GmbH</i>, 150 F. Supp.2d 191 (D. Mass. 2001), trial courts have sharply limited infringement liability for offshore use of patented methods, where the products introduced as the fruits of this research are ultimately manufactured without use of the patented methods. It remains to be seen what reception the U.S. Court of Appeals for the Federal Circuit will give to this issue.

• IP Value Extraction: Patent and Technology Licenses ( August 2002 )
  Barbara A. Wrigley of Oppenheimer Wolff & Donnelly LLP

  One of the most common methods of extracting value is through licensing. Corporate counsel and senior executives embarking on licensing programs should be aware of certain pitfalls that may result in costly disputes and the loss of patent rights.

• Protecting Your Intellectual Property License in Bankruptcy ( December 2001 )
  Joshua M. Marks of Arter & Hadden LLP

  The recent economic slowdown has forced scores of businesses to shut down or file for protection under Title 11 of the United States Code (the "Bankruptcy Code"). Since more bankruptcies are forecasted, especially in the dot-com sector, the prudent licensee should understand certain rights available to it if one of its licensors enters bankruptcy.

• Protecting Your Rights To Intellectual Property In Bankruptcy ( December 1999 )
  Maureen C Dellinger and John S. Wesolowski of Pillsbury Winthrop Shaw Pittman LLP

  This article recommends how creditors should protect their security interests in intellectual property. In addition, the author reviews how licensees should protect their intellectual property rights.