BHW

Many alternatives to expensive and lengthy litigation exist. If used correctly, such Alternative Dispute Resolution (ADR) mechanisms can end costly lawsuits early on, resolve complex disputes, and sometimes even produce win-win solutions. Indeed, the vast majority of all lawsuits are settled out of court, many of them on the courthouse steps after months or years of preparation and expense.

Some ADR mechanisms work better than others in any given case. The most common forms of ADR are arbitration, mediation, summary jury trial, and minitrial, although these forms can be combined to form hybrids that may be useful in a particular dispute.

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Declarations and testimony from technical experts are often used in intellectual property (IP) litigation or post-grant proceedings to inform the court about factual disputes. The technical experts for the opposing parties rarely agree, and so there is an important role for lawyers to ensure that expert statements and testimony does not deviate from the truth, and that the facts that best support a client’s most important arguments are included in the record a persuasive and credible way.

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Inter-partes review (IPR) is an adversarial proceeding before the Patent Trial & Appeals Board (PTAB) of the United States Patent & Trademark Office (USPTO), in which a petitioner challenges the patentability of one or more claims in an issued US patent.

Other types of post-grant proceedings before the USPTO include ex-parte reexamination, post-grant review (PGR), and covered business method (CBM) patent review.

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Patents grant the exclusive right to make, use, and sell an invention. But such rights are limited to the jurisdictions that grant them. For example, United States patent rights do not extend beyond its borders. In order to obtain patent protection outside of the United States, patent applications must be filed outside of the US. Filing in the US and in foreign jurisdictions can be very expensive. Accordingly, inventors must decide on a the best investment strategy for protecting their invention, marketing and developing their product lines, and maintaining or increasing the valuation of their company short- or long-term.

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Maintaining proper business records is critical to any successful business. Where technology and innovation are involved, complete invention disclosure documents can be important for assuring the protection of intellectual property. For example, invention disclosures provide attorneys important information for preparing and prosecuting a patent to protect important aspects of a company’s technology. Well-maintained invention disclosure records can also help a company fully understand the strengths and weaknesses of its inventory of innovation to better execute the right intellectual property strategy.

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Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. A patent owner may choose to retain those rights to prevent others from practicing the inventions, particularly when those inventions are embodied in products produced or services provided by the patent owner. Alternately or additionally, the patent owner may instead choose to license some or all of those rights to other entities to generate licensing revenues. Depending on the licensing strategy, license agreements may convey exclusive rights to a single licensee or non-exclusive rights to multiple licensees.

Barcelo, Harrison & Walker LLP handles a wide variety of licensing and transactional matters involving all forms of intellectual property in a diverse range of businesses. Our experience includes licensing, assignments, patent pool evaluations, technology transfer, consulting contracts, determinations of claim essentiality to standards, and confidentiality agreements.

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Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. To enjoy the benefits of these patent rights, your business should own its patents. However, under U.S. law, only an inventor or an assignee can own a patent and businesses cannot be listed as an inventor. Patent assignment is the legal mechanism to transfer ownership from inventors to your business or from one business to another.

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To facilitate adoption of an industry standard and to create efficiencies in granting and obtaining licenses to standards essential patents, licensors sometimes aggregate patents that cover a particular industry standard into a so-called patent pool. By aggregating standards essential patents, patent pools can significantly lower transactions costs for licensors and licensees by creating a one stop marketplace for standard essential patents that may lower barriers to entry and speed adoption of the industry standard.

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