Volume XI - December 2024
Firm Updates
UIDP Interview
Catlan McCurdy recently had a great conversation with UIDP about collaborative research, contracting law, and IP rights—all critical areas shaping the future of university-industry partnerships. McCurdy Laud is UIDP’s Community Partner and looks forward to connecting with other UIDP members on navigating sponsored research agreements at events throughout 2025 including in Basel, Switzerland next summer.
Firm Spotlight
WBENC Certification
We're proud to announce our renewed certification as a Women's Business Enterprise (WBE) through the Women's Business Enterprise National Council (WBENC)!
This certification validates that McCurdy Laud is majority woman-owned, operated, and controlled, reflecting our commitment to bringing diverse perspectives to intellectual property and tech transactions and disputes.
As a certified WBE, we're honored to help our corporate and government clients advance their supplier diversity initiatives while delivering the nimble, personalized intellectual property services that define our practice.
Please contact us to obtain a copy of our certification and improve your diverse business reporting numbers.
Circuit Split or Clarification? Recent Federal Decisions Shape Patent Licensing Strategy
Recent decisions from the Third and Ninth Circuits provided updated guidance on the application of the Supreme Court's Brulotte ruling to patent licensing agreements. The contrasting approaches in Ares Trading S.A. v. Dyax Corp. and C.R. Bard, Inc. v. Atrium Medical Corporation offer valuable insights for practitioners structuring patent licenses.
Ares Trading S.A. v. Dyax Corp.
The Third Circuit focused on whether royalties were for post-expiration use of patented inventions. Significantly, the court interpreted "post-expiration use" narrowly, specifically referring to practicing the formerly patented inventions rather than continuing to exploit a pre-expiration use. The decision also clarified that Brulotte applies only to attempts to extend a patent's duration, not its scope.
C.R. Bard, Inc. v. Atrium Medical Corporation
The Ninth Circuit's analysis centered on whether royalties were tied to an expired patent, taking a somewhat different analytical approach. This case highlighted the importance of clearly distinguishing between expired and unexpired patent rights in licensing agreements.
With this background in mind and the goal of drafting enforceable patent license royalties, we’ve described what we view as practical implications for licensing patents:
Royalty Structure Considerations: Carefully structure royalty calculations to avoid direct ties to post-expiration patent use. Define what activities trigger royalty payments, and consider implementing separate royalty streams for different patents based on their expiration dates.
Clear Delineation of Rights: Distinguish between patent and non-patent rights in the license. Separately address scope expansion and duration provisions, and document ongoing consideration beyond patent rights.
Alternative Payment Approaches: Consider deferred payments for pre-expiration use, and implement stepped royalty rates that decrease after patent expiration. Following up on your clear delineation of rights by structuring separate payments for non-patent rights or know-how.
Given the Third Circuit's emphasis on "use," agreements should precisely define terms related to patent practice and post-expiration activities. This precision helps avoid ambiguity about what constitutes patent use versus general benefit from the agreement. Additionally, following the Third Circuit's clarification about Brulotte's application to duration rather than scope, carefully separate provisions expanding patent scope from those affecting duration. This separation helps maintain enforceability of scope-related provisions. Finally, in an effort to future-proof your agreement, consider including provisions that anticipate patent expiration and clearly outline the parties' rights and obligations at each stage of the agreement. This foresight helps maintain valuable aspects of the relationship even after patent expiration.
These decisions provide important guideposts for structuring patent licenses that respect Brulotte while meeting business objectives. While the circuits may emphasize different aspects of the analysis, both decisions underscore the importance of careful drafting and clear documentation of rights and obligations.
By incorporating these lessons into licensing practices, practitioners can help clients navigate the complex intersection of patent rights, business needs, and legal requirements. The key lies in creating agreements that clearly delineate rights, precisely define terms, and properly document consideration for ongoing obligations.
Dear Paralegal Perry
Q: My company is interested in working with a university lab to research the properties of a synthetic bacon flavor for vegan dog cookies. What should we do first?
A: Before you start making me drool, let's make sure your intellectual property and business interests are guard dogged. Working with university labs (not to be confused with labradors) can be incredibly valuable, but these collaborations require careful herding on the front end. Here's what I recommend as your first steps:
First, we should put a solid non-disclosure agreement (NDA) in place. University labs often have their own standard forms, but these typically favor the university's interests. We'll want to review and likely negotiate those terms to ensure your company's confidential information and potential innovations (those sweet sweet cookies) are adequately protected.
Next, we'll need to draft and negotiate a research collaboration agreement. This agreement should clearly address several key points: ownership of any new intellectual property developed during the research, rights to use the research results, publication rights (universities typically want to publish their findings), and any commercialization rights. We'll also want to ensure the agreement includes clear deliverables and timelines, so we get bacon and not beggin’!
If you already have existing intellectual property related to your synthetic bacon flavor or dog treat formulations, we should review those assets before starting the collaboration. And not just because I would love to taste test. This will help us better structure the agreement to protect your existing IP, while maximizing the benefits of the university research. We can also help you navigate the “who” in this arrangement, leveraging our industry and university contacts to put you in touch with the right people to start this conversation and get those dog treats on shelves and in my belly asap!
Upcoming Events
UIDP Events
Catlan will be attending UIDP HBCU Engage at Charleston Gaillard Center in Charleston, SC March 25th - March 26th.
12/25 - 12/27 | McCurdy Laud Closed for Christmas
01/01 | McCurdy Laud Closed for New Year’s Day
01/20 | McCurdy Laud Closed for Dr Martin Luther King Jr Day
02/01 | First Day of Black History Month
02/17 | McCurdy Laud Closed for President’s Day
03/26 - 03/28 | McCurdy Laud Closed for Firm Retreat
Note from Catlan
As I write this final newsletter of 2024, I'm watching my oldest child attempt to master the art of tying a knot. After days of frustration (and pants falling down), he's finally discovering that sometimes you need to unlearn an approach before you can master a new one. It's a lesson that resonates deeply with our journey at McCurdy Laud this year.
2024 has been our year of learning, unlearning, and relearning. When we unveiled our rebranding early in the year, it wasn't just about a new visual identity – it was about embracing who we had become while honoring who we were. Like swapping elastic waists for draw strings, we've had to let go of familiar habits to embrace more effective ones.
This mindset of continuous learning has served us well throughout the year. Melissa Nelson joined our team, bringing fresh perspectives that have challenged and enhanced our approach to business development. Tom Vitt's litigation practice has continued to flourish, pushing us all to think beyond traditional boundaries of patent litigation. And just last month, I had the privilege of working with Sanjiv to tag-team a complex software licensing project in a way that would have been impossible in our early days as a purely transactional firm.
Our commitment to learning extends beyond our office (or rather, our various remote workspaces). This year, we've initiated client education sessions, sharing our knowledge about everything from software licensing to attorney-client privilege during in-person presentations. These sessions have become a two-way street of learning – our clients' questions and challenges continue to push us to grow.
But perhaps the most valuable lesson of 2024 has been understanding when to hold firm. While we've embraced change in many areas, our core values of honesty, candor, professionalism, curiosity, and enthusiasm remain firm. They're the constant in our equation of growth, the foundation that allows us to experiment and evolve while maintaining the trust our clients place in us.
As we look toward 2025, I'm excited about the new lessons awaiting us. And yes, I'm happy to report that both my son's pants and our firm's foundations are more secure than ever.
From all of us at McCurdy Laud, we wish you the warmest of holiday seasons and a new year filled with your own valuable lessons.