2011 August

The copyright act provides the authors of transferred or licensed works the opportunity to recapture his or her rights.  This means that after waiting a specific period of time, an author, or an author’s estate, can terminate a prior transfer or license.  Such terminations can have a dramatic impact on a company’s rights to use certain intellectual property or the rights to revenue from certain copyrighted works.  Terminating transfers and licenses also gives authors an opportunity to make additional revenue by retransferring or relicensing their work.

The rules surrounding the terminations of transfers and licenses are quite complicated, and the opportunity to recapture one’s rights is only available for a limited period of time.  A new window is opening in 2013 for the recapture of works subject to post-1978 grants.  For works transferred or licensed after 1978, the five-year termination period can begin at one of three times: (1) the end of thirty-five years from the date of execution of the grant; (2) thirty-five years from the date of publication of the work; or (3) forty years from the date of the execution of the grant.

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If you are an author, assignee, or licensee of a work that may soon enter a termination window and have questions, feel free to contact our experienced patent, trademark, and copyright attorneys here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.

Woodard, Emhardt associate Bill McKenna was selected for the Indianapolis Bar Association’s Bar Leader Series.  The IndyBar’s Bar Leader Series is designed to develop lawyers for future opportunities in leadership roles in business and legal communities.  Through the series, selected lawyers will learn how to communicate, motivate, inspire, and succeed not only in their law career, but also in service to professional, political, judicial, civic, and community organizations.

Topics covered in this month’s trademark presentation included:

- Trademark applicants’ websites being used for rejections

- Involuntary waiver of sovereign immunity to trademark infringement

- New test for likelihood of confusion and dilution by blurring

- Update on Google AdWords litigation in the European Union

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Law firms and in-house attorneys are always asking inventors to keep lab notebooks.  There are a number of reasons to keep such documentation, including seeking patent protection, but there is another reason that is often overlooked, substantial tax credits.  

Lab notebooks are the exact type of information required to benefit from federal and state research and development (R&D) tax credits.  In some cases, taxpayers may be able to receive a tax credit upwards of 7-10% of the R&D expenditures as defined by the government.  More significantly, from an IP perspective, these tax breaks will likely enable taxpayers to offset a portion of the fees incurred in preparing and filing initial patent applications in the United States and abroad.

 If you have any questions, feel free to contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP.  Please note that this is not tax advice and we are not tax attorneys, but we can refer you to an expert that can assist you in quickly determining whether you can benefit from the R&D tax credits.

Topics covered in this month’s patent prosecution presentation included:

- Discussion of inequitable conduct cases post-Therasense

- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction

- The business method patent review section of the HR 1249-America Invents Act

- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.

Click here to download a copy of the presentation.