October 2008

Clean Room Defeats Software Infringement Claim in US Federal Court

Under copyright and trade secrets laws as such laws apply to source code, if a person without permission copies the source code or misappropriates a trade secret contained within the code (such as know-how), that person is liable to the owner of the copyrighted code or the trade secret embodied within that code.

Jacobsen v. Katzer: A Significant Victory for Open Source

Open source licenses rely on enforcement of certain obligations intended to further the ideals of the free software movement. The more significant of these obligations include preservation of copyright notices and developer attribution, to preserve the pride of authorship that motivates the open source developer community, and, most importantly, mandating that any modifications, improvements or derivative works of the open source software be made available under the same terms as the original license under which the software is licensed.

Make Sure Your Arbitration Clause Covers IP Disputes

Mandatory arbitration clauses in licensing agreements as the exclusive means of resolving licensor-licensee disputes are becoming more common. Typically such clauses are phrased in terms of requiring "any controversy or claim arising out of or relating to this contract, or breach thereof" to be settled by binding arbitration. A recent US Court of Appeals decision has revealed that this language can in certain situations be insufficient to bring into the arbitration obligation's scope intellectual property-related disputes that may arise between the parties.

The London Agreement is Now in Effect, Reducing Patent Prosecution Costs in Europe

The London Agreement is a treaty under which the signatory countries agree to waive, for the most part, the requirement that patents be translated into the national language of each European Patent Convention country.

Software Patenting in the UK Moves Closer to the Liberalised EU Approach

Article 52(2) of the European Patent Convention (reflected in section 1(2) of the UK Patents Act of 1977, as amended) includes in a list of unpatentable inventions "programs for computers … as such". The European Patent Office (EPO) has construed this exclusion to allow software to be patented if the operation of the program produces a further technical effect going beyond mere physical interactions between software and the computer.

Could the MedImmune Decision Justify Microsoft's Refusal to Specifically List its Patents Believed to be Infringed by Linux?

Microsoft has in the past claimed that various open source software infringes no fewer than 235 patents Microsoft owns, including 42 patents Microsoft claims are infringed by the Linux kernel; 65 that are allegedly infringed by various Linux graphical user interface solutions; and 45 by the Open Office suite of productivity software. (See "Microsoft Takes on the Free World").

What Happens if the IP Asset You've Licensed is Transferred to a Third Party?

It is not uncommon for a company licensing in technology to spend much time and legal resources on ensuring that the licensor of that technology cannot assign or transfer the operative license agreement to a third party without the licensee's knowledge and consent. However, less common is attention to the risk of a licensor transferring the actual intellectual property that is the subject of the license in question. This situation arose in a recent US Court of Appeals decision within the US Federal Circuit, the courts responsible for patent appeals.

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