Now more than ever, technology is influencing the way we do business, communicate, move through and around the world, access and manage our homes, receive and administer healthcare, make purchases, secure information, and protect our most valuable property. Morrison Foerster keeps pace with this rapidly evolving landscape across our internationally recognized corporate, finance, intellectual property, and litigation practices. MoFo Tech brings together our insights relating to fields such as blockchain and distributed ledger, cloud and as-a-service technologies, driverless cars, drones, fintech, computer hardware and software, the Internet of Things, semiconductors, and telecommunications. The MoFo Tech blog offers real-time, in-depth analyses of the trends and complex issues shaping the global technology industry.<h2>ABOUT MORRISON FOERSTER</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

Social

Search

testimage.jpg

MoFo Tech

Scott Llewellyn’s practice focuses on complex litigation in federal and state courts around the country, with an emphasis on patent and trade secret disputes. Over the past decade, he has worked on some of the most significant, high–profile IP cases involving technology for televisions, smartphones, and self–driving cars, relying on 40 years of experience with computer hardware and software. Scott also has significant experience with business divorce cases before courts and arbitrators, involving a mix of trade secret, patent, tort, and contract claims relating to technology development and implementation.Scott also has successfully tried general commercial arbitration and agency matters, briefed and argued various appeals in federal appellate court, and tried more than 20 cases for the Denver City Attorney’s office, most of them jury trials.Scott also has an active pro bono practice, having worked on a variety of criminal and immigration appeals, and having represented Colorado criminal defense and mental health organizations in high–profile suits against the state of Colorado for violations of the constitutional rights of defendants.At MoFo, Scott serves on the board of the Morrison & Foerster Foundation. In the broader legal community, he serves on the boards of the Colorado Lawyers Committee and Drop in the Bucket (a charity that builds wells and sanitation systems in sub–Saharan Africa).After law school, Scott clerked for the Honorable Clarence A. Brimmer, District of Wyoming, and the Honorable Diarmuid F. O’Scannlain, Ninth Circuit. He was also previously an adjunct professor at the Georgetown University Law Center.

llewellyn_scott_blog_150x150.png

llewellyn_scott_common_640x280.jpg

llewellyn_scott_heroretina_2700x1160.jpg

llewellyn_scott_mobileretina_750x1040.jpg

llewellyn_scott_social_600x600.jpg

Partner

Scott Llewellyn’s practice involves complex litigation before state and federal courts around the country, with an emphasis on patent and trade secret disputes for high-tech companies, to which he brings more than 35 years of experience with computer hardware and software, in particular relating to the processing and transmission of audio, video, voice, and other types of data. Mr. Llewellyn has also tried commercial arbitration and agency matters; briefed and argued various appeals in federal appellate court; and tried more than 20 cases for the Denver city attorney’s office, most of them jury trials.

Scott F. Llewellyn

favicon.ico

favicon-16x16.png

favicon-32x32.png

apple-touch-icon.png

MoFo Favicons

MoFo Tech brings together legal insights and in-depth analyses on trends and complex issues shaping the global technology industry, covering fields such as blockchain and distributed ledger, cloud and SaaS technologies, driverless cars, drones, FinTech, computer hardware and software, the IoT, semiconductors, and telecommunications.

Mofo Tech testimage

Announcements

Welcome to the MoFo Tech Blog

Blog - Blog Disclaimer

Blog - Terms of Use

Blog - Privacy Policy

Blog - Attorney Advertising

morrison-foerster-blog-logo.png

Provides insights and reports on the most current class actions lawsuits and product liability issues that affect consumer-facing companies.

Class Dismissed Blog

Class Dismissed

In-depth analysis of developments and trends impacting government contracting.

Government Contract Insights Blog

Government Contract Insights

Government Contracts Insights Blog

Govcon

News and thought leadership from lawyers who are adding value to the legal profession and the communities we call home.

  External-Link

MoFo + Blog

MoFo+ Together

MoFo Tech brings together legal insights and in-depth analyses on trends and complex issues shaping the global technology industry, covering fields such as blockchain and distributed ledger, cloud and SaaS technologies, driverless cars, drones, FinTech, computer hardware and software, the IoT, semiconductors, and telecommunications.

MoFo Tech

  Linkedin

MoFo LinkedIN

MoFo Tech Blog - RSS

Stay Connected

At the Intersection of Technology, Law, and Business

At the Intersection of Technology, Law, and Business

Morrison Foerster - Footer

Blogs -  Home Button

Home

Blog - Topics

Telecommunications

Artificial Intelligence

Asia

Cloud Services + SaaS

European Union

Financings

Fintech

Hardware

Intellectual Property

Internet of Things

Litigation

Mergers + Acquisitions

Privacy + Data Security

Regulatory

Software

Tech Talks

Topics

Blog - Editors

Editors

Blog - About

About

Blog - Subscribe

Subscribe

More

Recentive: Federal Circuit’s Patent-Eligibility Guideposts for Machine-Learning Inventions

Japan’s Approach to AI Regulation in 2025

Federal Circuit Clarifies Requirements for Prior Art Under Pre-AIA 35 U.S.C. § 102(e)

AI Agent as a Service in Medtech - Key Considerations for Commercial Contracts

D.C. Circuit Holds that Works Created Solely by AI are Not Copyrightable

LinkedIN

Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings.  It is important to keep abreast of changes to the rules, especially if the Federal Circuit weighs in. On March 24, 2025, the Federal Circuit issued a precedential decision in In Re Riggs, Case No: 22-1945 (Fed. Cir. Mar. 24, 2025) clarifying the standard for determining whether a published patent application can be considered prior art as of its provisional filing date. Although this case was decided under pre-AIA law, the standard elucidated by the Federal Circuit reinforces the importance of drafting detailed provisional applications and knowing the requirements for establishing prior art under both pre-AIA and AIA law.Pre-AIA 35 U.S.C. § 102(e) and AIA 35 U.S.C. § 102(a)(2) deal with what many in the field refer to as “submarining prior art.” Even when armed with a bullet-proof prosecution strategy, “submarining prior art” can still take patent applicants and inventors by surprise. “Submarining prior art” is based on the principle that a patent application remains “secret” for typically 18 months from its filing date, until the USPTO publishes the patent application or the corresponding patent. During this period of “secrecy,” a competing inventor is unaware of the existence of the unpublished, pending patent application (hence the term, “submarining prior art”). As such, the inventor may prepare and file a patent application directed to what he or she believes is a patentable invention but that happens to cover the same or similar technology as that disclosed in the earlier-filed, as-yet-unpublished patent application. Only after the earlier-filed patent application publishes (like a submarine surfacing from underwater) does it become prior art as of its filing date. As one could imagine, this is potentially problematic for the competing inventor; the earlier-filed, now-published patent application might be prior art to the inventor’s later-filed patent application. In Re Riggs addresses when a patent or patent application qualifies as prior art under this type of situation.The Riggs patent application—U.S. Patent Application No. 11/005,678 (hereafter, “the ’678 application”)—had a priority date of July 28, 2000. During prosecution, the Examiner rejected the ’678 application under pre-AIA § 102(e) as anticipated by a patent publication, Lettich et al. (hereafter, “Lettich”). Lettich was filed on April 26, 2001 and claimed priority to a provisional application filed on April 27, 2000. In order to qualify as prior art under § 102(e), Lettich needed to be entitled to its April 27, 2000 priority date, which pre-dated the ’678 application’s July 28, 2000 priority date. Riggs addressed whether Lettich is entitled to the April 27, 2000 filing date of its provisional application for the purposes of qualifying as prior art to the ’678 application under § 102(e).The Examiner and the Patent Trial and Appeal Board (PTAB) relied on Dynamic Drinkware[1], Amgen[2], and MPEP § 2136.03 in determining whether Lettich qualifies as prior art under § 102(e). Specifically, they considered whether Lettich’s provisional application provided written description support for at least one claim in Lettich. Without any such written description support in the provisional, Lettich’s priority date for the purposes of 35 U.S.C. § 102(e) would be the April 26, 2001 non-provisional filing date, which would be insufficient to render Lettich prior art to the ‘678 application. The PTAB found that Lettich satisfied the aforementioned written description test identifying support in the provisional application for each limitation of claim 1 in Lettich. The PTAB concluded on this basis that Lettich was available as prior art under 35 U.S.C. § 102(e).The Federal Circuit agreed with the PTAB “that a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for a claim of the patent or published application”[3] However, the Federal Circuit held that this finding alone is insufficient to determine whether a patent or published application qualifies as prior art under § 102(e).[4] As a second step of the analysis, “the provisional application must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection.”[5] The Federal Circuit noted that neither Dynamic Drinkware nor Amgen addressed the problem at issue here, as the appellants in those cases failed to satisfy the initial requirement that the provisional provide support for at least one claim. As such, there was no need in those cases to address the subsequent question of whether the specific text in the patent document relied on by the Examiner in the rejection also had written description support in the provisional application.The Federal Circuit clarified that even if a provisional application provides written description support for at least one claim of the patent document cited in a rejection, the provisional application must also provide written description support for the specific portions of the specification identified and relied on by the Examiner in the rejection. As the Federal Circuit reasoned, “[i]t makes no sense to suggest that if a single claim is supported by the provisional application, then everything in the later filed application gets the benefit of the provisional date whether supported or not.”[6] The Federal Circuit vacated and remanded the PTAB’s decision because the PTAB did not address the second step of the analysis.The Riggs decision aligns with MPEP § 2136.03 (III). It explains that two elements must be satisfied in order for a published patent application or patent to have the benefit of its provisional filing date under § 102(e):<blockquote>[A]t least one of the claims in the reference patent, patent application publication, or international application publication is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a) . . . [and] . . . [t]he provisional application must also describe, in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a), the subject matter relied upon in the reference patent or publication to make the rejection.[7]</blockquote>When it comes to AIA law, the MPEP, like that for pre-AIA law, requires that a provisional application to which a reference patent document claims a right of priority “describe[] the subject matter” relied upon in the reference patent document in a prior art rejection.[8] Although Riggs is applicable only to pre-AIA law, given the related guidance in the MPEP regarding the treatment of prior art under pre-AIA 35 U.S.C. § 102(e) and AIA 35 U.S.C. § 102(a)(2), as well as the Federal Circuit’s stated rationale in its decision, one may reasonably expect that a similar outcome may apply in the AIA context too.What does all of this mean for patent practitioners going forward?As the Federal Circuit emphasized, “it is best to treat a published provisional application—like a published non-provisional application or patent—as prior art for all that it teaches as of its filing date.”[9] Taking this into account, patent practitioners should draft provisional applications with as complete a disclosure as possible.  A cursory provisional application may be necessary when circumstances do not permit a more fulsome drafting process. However, filing a fully fleshed-out provisional application will have benefits not only in ensuring entitlement to an earlier priority date for the eventual non-provisional filing, but also in ensuring entitlement to the earliest priority date for the purposes of qualifying as prior art against later patent applicants.  Although In Re Riggs has not made it any easier to predict “submarining prior art,” it has provided additional means for patent applicants and patent owners in post-grant proceedings to challenge the availability of a patent or patent publication as prior art as of its provisional filing date. Indeed, while “submarining prior art” may still bring an element of surprise, patent practitioners now have more tools in their arsenal when confronting such art during prosecution and post-grant proceedings. [1] Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).[2] Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017).[3] In Re Riggs, Case No: 22-1945, 12 (Fed. Cir. Mar. 24, 2025).[4] Id.[5] Id.[6] Id.[7] MPEP § 2136.03, supra, note 3.[8] MPEP § 2154.01(b).[9] In Re Riggs, supra, at 13.

silverman_lisa_blog_150x150.png

silverman_lisa_common_640x280.jpg

silverman_lisa_heroretina_2700x1160.jpg

silverman_lisa_mobileretina_750x1040.jpg

silverman_lisa_social_600x600.jpg

Lisa N. Silverman focuses on patent portfolio management and strategic patent counseling in the areas of chemistry and life sciences. She has extensive experience in securing U.S. and foreign patent p

Lisa N. Silverman Ph.D.

Lisa Silverman

arjomand_mehran_blog_150x150.png

arjomand_mehran_common_640x280.jpg

arjomand_mehran_heroretina_2700x1160.jpg

arjomand_mehran_mobileretina_750x1040.jpg

arjomand_mehran_social_600x600.jpg

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he 

Mehran Arjomand

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.

Associate

Marisa B. Sanders

Marisa Sanders

mofotechblog-ip-600x295-lightbulb.jpg

Supreme Court Restricts the Extraterritorial Reach of U.S. Patent Law for Exported Goods

121901743

Discovering and developing new drugs is extremely expensive. Bringing a new drug to market can cost over $1 billion and may take many years. To improve the efficiency of drug discovery and development, approaches in artificial intelligence (AI) are proving particularly useful. As AI tools become ever more powerful, they are being used to identify new biological targets for treating disease, predict drug efficacy and toxicity, discover novel compounds using structure and ligand-based drug design, screen datasets for drug repurposing, and more.Read the full <a href="https://lifesciences.mofo.com/topics/250304-navigating-inventorship" target="_blank">blog post</a>.

Navigating Inventorship in the Era of AI-Assisted Drug Discovery

tsai_caressa_blog_150x150.png

tsai_caressa_common_640x280.jpg

tsai_caressa_heroretina_2700x1160.jpg

tsai_caressa_mobileretina_750x1040.jpg

tsai_caressa_social_600x600.jpg

Caressa Tsai Ph.D.

Caressa Tsai

crawford_joshua_blog_150x150.png

crawford_joshua_common_640x280.jpg

crawford_joshua_heroretina_2700x1160.jpg

crawford_joshua_mobileretina_750x1040.jpg

crawford_joshua_social_600x600.jpg

Of Counsel

Josh Crawford's practice focuses on domestic patent prosecution, international patent portfolio management, patent infringement and validity determinations, inter partes review proceedings, and IP lit

Joshua A. Crawford

Joshua Crawford

poon_meghan_blog_150x150.png

poon_meghan_common_640x280.jpg

poon_meghan_heroretina_2700x1160.jpg

poon_meghan_mobileretina_750x1040.jpg

poon_meghan_social_600x600.jpg

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. 

Meghan McLean Poon Ph.D.

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants.

Meghan Poon

mofo-tech-blog-image-16.jpg

Navigating Inventorship in the Era of AI-Assisted Drug Discovery

Japan: Privacy Updates on Handling Personal Information in the “Digital Market”

mofo-tech-blog-image-16

A core strategic question facing life sciences companies developing novel AI-implemented methods is whether to file for patent protection or to keep the methods as trade secret.One successful approach is to develop a hybrid strategy for patents and trade secrets based on current and future company goals, following the considerations outlined in this blog post.Read the <a href="https://lifesciences.mofo.com/topics/patents-and-trade-secrets-in-ai-and-life-sciences" target="_blank">full blog post</a>.

mittleman_briana_blog_150x150.png

mittleman_briana_common_640x280.jpg

mittleman_briana_heroretina_2700x1160.jpg

mittleman_briana_mobileretina_750x1040.jpg

mittleman_briana_social_600x600.jpg

Briana’s practice focuses on patent preparation, prosecution, and counseling in the areas of biotechnology, pharmaceuticals, and artificial intelligence.

Briana Erin Mittleman Ph.D.

Briana Mittleman

Patents and Trade Secrets in AI and Life Sciences

IntroductionSpurred by both planetary and economic needs, the industry commonly referred to as “cleantech”—short for “clean technology”—has been on the rise. Current estimates predict clean energy technologies could dominate oil and gas by as early as 2030 (<a href="https://www.statista.com/statistics/1409852/global-cleantech-market-size-country-region/#:~:text=The%20global%20market%20size%20for,billion%20U.S.%20dollars%20per%20year." target="_blank" dir="ltr">Global cleantech market size by country 2030 | Statista</a>). <a href="https://www.mckinsey.com/industries/public-sector/our-insights/the-inflation-reduction-act-heres-whats-in-it" target="_blank">The Inflation Reduction Act of 2022</a> provided for up to 400 billion dollars in clean energy infrastructure and subsidies. And clean energy is just one aspect of clean technology. Other examples include recycling waste products that would otherwise fill landfills, carbon sequestration, and low-carbon footprint industrial solutions.Established companies and new startups alike seek to navigate and contribute to this expanding market. Like most expanding markets, success in this industry is closely tied to the strength of the company’s intellectual property (IP) and the terms of its licensing programs. We present here the top 10 IP and commercial contract issues in licensing cleantech innovations.1. CHOOSE THE RIGHT IP PROTECTION TO MAXIMIZE THE VALUE OF YOUR IPIn this rapidly changing industry, cleantech companies need to understand the various options available to protect their innovations and how to strategically devise an appropriate IP strategy that aligns with their research and business needs.  Depending on the nature of the technology, one must consider whether the technology is best protected using patents, trade secrets, or a combination of the two.  Patent protection is for a limited duration—typically about 20 years—and is in exchange for the substantial disclosure of the technology to the public.  In contrast, trade secret protection is potentially perpetual in term and generally only ceases when the technology no longer derives economic value from not being generally known or is no longer subject to reasonable efforts to maintain its secrecy.  One has to consider whether the technology can be easily reversed engineered and whether the company can take appropriate measures to keep aspects of the technology a trade secret. Strategic use of both forms of IP and careful navigation of the requirements of each can provide a cleantech company with both valuable assets and a competitive edge.2. STRATEGICALLY PROTECT INNOVATIVE ASPECTS OF YOUR IPPatent protection may be suitable to protect various aspects of cleantech innovations. For example, let’s say a company invented a new material for capturing carbon dioxide from the atmosphere. Such a technology can be patented from various angles, including the composition of the new material itself, the process of producing the new material, and the ways in which the material may be used.  A claim covering the composition of the new material can block others from making (including by using any process), using, selling, importing, or offering for sale the new material.  In contrast, a claim covering the new process of producing the new material only prevents others from performing the steps of the claimed process. In other words, if a competitor figures out an alternative method to produce the material, the manufacturing process claim may not block that competitor’s process.  As such, it is important in a robust patent portfolio to think about the different types of coverage that can create an exclusivity fence around the technology.3. EVALUATE EXPEDITED EXAMINATION OF PATENT APPLICATIONS DIRECTED TO MITIGATING CLIMATE CHANGECleantech companies filing patents containing at least one product or process claim directed to mitigating climate change by reducing, removing, preventing, and/or monitoring greenhouse gas emissions may consider submitting a petition under the <a href="https://www.uspto.gov/patents/laws/patent-related-notices/climate-change-mitigation-pilot-program" target="_blank">Climate Change Mitigation Pilot Program (CCMPP)</a>, which expedites the issuance of a first Office Action or allowance. The CCMPP is of limited duration—applicants can submit a free petition until the earlier of June 7, 2027, or the date upon which 4,000 petitions for the CCMPP program have been accepted by the United States Patent & Trademark Office (USPTO). As of October 3, 2023, the USPTO has granted 422 applications out of 572 filed applications for examination under the CCMPP. As with any accelerated filings, it will be important for the applicant to develop a strategic claim set to pursue so as to set up the case for success.4. CONSIDER TERMS AND CONDITIONS ASSOCIATED WITH GOVERNMENT FUNDINGGovernment funding has played a key role in accelerating the innovation of clean technologies. The Bayh-Dole Act allocates rights, including patent rights, for inventions developed with federal funding under contracts, grants, and other government funding agreements. Contractors and grant recipients can generally take title to any such inventions, subject to certain terms and conditions. One notable term and condition is that non-exclusive licensees must substantially manufacture any products embodying the subject invention or produced through the use of the subject invention in the United States. A new <a href="https://www.whitehouse.gov/briefing-room/presidential-actions/2023/07/28/executive-order-on-federal-research-and-development-in-support-of-domestic-manufacturing-and-united-states-jobs/" target="_blank">Executive Order</a> suggests that application of the U.S. manufacturing requirement could also be extended to non-exclusive licensees, particularly with respect to inventions related to “<a href="https://www.whitehouse.gov/wp-content/uploads/2022/02/02-2022-Critical-and-Emerging-Technologies-List-Update.pdf" target="_blank">critical and emerging technologies</a>,” which has been defined by the Biden administration to include various renewable energy generation and storage technologies.5. MINIMIZE RISK AND STRENGTHEN YOUR IP BY PERFORMING FREEDOM-TO-OPERATE (FTO) SEARCHESPatent rights give the patent holder the ability to preclude others from operating within the scope of that patent. In other words, patents afford an exclusion right. They do not guarantee that the patent holder can actually practice the patent or commercialize the claimed invention. Another party may have patent rights that block another from practicing or commercializing its own invention. At the appropriate time, cleantech companies may want to assess their FTO risk, whether by monitoring key competitor’s IP and/or performing FTO searches at key stages of the innovation cycle. If a potential FTO risk is identified, the company should devise a strategy to address such risk. This may involve establishing a non-infringement position, an invalidity position, licensing considerations, and other offensive strategies based on the company’s own patent portfolio.6. TAILOR THE SCOPE OF THE LICENSE GRANTIP rights can be the lifeblood of a cleantech startup, and both licensors and licensees must carefully consider the scope of any license grant. The licensor will want to ensure it provides what the licensee needs, but nothing more. Anything beyond the intended use may be considered an unnecessary encumbrance on the licensor’s IP, which is often its most valuable asset.Licensees will want to make sure they have full freedom to use the licensed technology as intended. Otherwise, their activities may accidently infringe the very IP rights they are licensing.Both licensors and licensees alike should carefully consider the variables at issue in nearly every license grant: (1) the specific IP rights that are granted (such as whether the license is under all of the licensor’s patents or a specific portfolio), (2) the field of use, (3) whether the grant is exclusive (even as to licensor) or non-exclusive, (4) the territory, (5) the duration and termination conditions, (6) whether the license is royalty-free, fully paid-up, or royalty-bearing, and (7) whether the licensee has the right to grant sublicenses to affiliates or third parties. If the licensee does have the right to grant sublicenses, both parties should carefully consider under what conditions sublicenses may be granted and for what activities.7.  CONSIDER WHETHER THE LICENSEE NEEDS ACCESS TO KNOW-HOW OR TECHNOLOGY AND TAILOR CONFIDENTIALITY APPROPRIATELYA license provides the grant of authority for a licensee to conduct activities that would otherwise be an infringement or misappropriation of the licensor’s intellectual property rights, but it does not necessarily enable the licensee to act. A licensee may need, in addition to the legal right to act, possession of the know-how or technology to properly exercise the license as intended. This is especially true in the cleantech space where much of the technology may be protected by trade secrets rather than by patents.Both licensors and licensees will want to ensure the scope of any tech transfer is tailored appropriately. The licensor may be incentivized to provide some technology to ensure the licensee’s success, but it should be careful that it does not give away too much information that can be competitively sensitive. The licensee will want access to technology needed to proceed with the license, but it may be better off without getting more than that. If a licensor later accuses the licensee of misappropriating trade secrets, the licensee’s best defense may be that it never had access to the technology to begin with. Thus, both parties should consider carefully what is needed and how to keep track of it.Nearly every commercial agreement in the cleantech space involves sharing non-public information, and appropriate confidentiality terms are a must. Each party should ensure that at least the three core provisions are present: (1) maintain in confidence, (2) non-disclosure to third parties, and (3) non-use except for permitted purposes. Depending on the nature of the technology, the licensor may need to provide highly confidential technical information. Additional administrative and technical safeguards may be appropriate in those circumstances, as well as a confidentiality duration lasting for as long as the information is not publicly known.8. CAREFULLY NEGOTIATE OWNERSHIP OF AND RIGHT TO USE TECHNICAL IMPROVEMENTSUse of an existing technology in a new setting, or the ability to tinker around with a technology, carries with it the possibility of new innovations. By default in the United States, ownership of patentable inventions rests with the inventor unless the agreement assigns ownership otherwise.Parties negotiating a commercial agreement have a plethora of options. The licensor could require the licensee to assign all new improvements to the licensor, which would then be licensed back to the licensee. Another option would be for the licensee to grant a license back to the licensor for any new IP, which the licensor could then sublicense to its other licensees. Yet another option could be a “community license,” where a licensee can “opt in” to sharing its improvement technology with the licensor in exchange for access to the licensor’s and to other licensees’ improvements.Depending on the duration of the license, an evergreen obligation to share improvements may not be appropriate. The parties should carefully consider whether there should be a time limit for sharing improvements.9. ALIGN RISK ALLOCATION WITH THE TECHNOLOGY AND ITS USECleantech is a relatively new field, and so are the bulk of the specific technologies. When licensing technology in this space, both parties should carefully allocate risks regarding (1) the ability of the technology to perform as intended, and (2) third-party liabilities arising from certain uses of the technology, such IP infringement. The parties can accomplish this with carefully tailored representations regarding the licensed technology and an indemnity for third-party claims caused by certain negotiated triggers.  But beware: not all risk allocations mechanisms are the same. Representations and warranties carry with them the additional risk of termination for breach and financial damages for breach of contract. Indemnities typically do not.Some parties may choose to apply a waiver of consequential and indirect damages and an aggregate liability cap as a method to avoid risk. But having this apply across the agreement to all kinds of breaches can be a trap for the unwary. Some breaches by their nature may only have nominal direct damages, but the real recovery would be in the form of consequential or indirect damages, such as breaches of confidentiality or improper use of trade secrets. Companies should take care to carve these out from the waiver and potentially from the liability cap.10. TAILOR TERMINATION TO THE SPECIFIC DEALA common construct in commercial agreements is to allow the licensee to terminate for its own convenience and to allow each party to terminate for the other’s material breach. But this may not be appropriate in all circumstances. In some deals where the licensee would suffer massive harm if the agreement terminates, even termination for material breach may be too low of a threshold. It may be more appropriate to have a narrower class of termination rights that are particularly nefarious or cause irreparable harm to the licensor, such as willful misappropriation of the licensor’s material trade secrets.In other deals, the licensor may need broader termination rights. Regulations rarely keep up with science and technology, and the clean technology space is no exception.  As export regulations continue to evolve, companies in this space can hedge risk by building flexibility into their commercial agreements. If, for example, new regulations materially alter the main commercial benefit of the agreement, the licensor may want to be able to terminate the contract or at least renegotiate the financial terms.In either case, parties should carefully structure the post-termination obligations. Some licensors may require the licensee’s assistance in transitioning use of the technology back to the licensor or to a new licensee. Where regulatory approvals are involved, the licensee may need to transfer government authorizations to a new party. Similarly, the licensee may need a reasonable period of time to wind down operations and to sell of any existing inventory of product that it would not be able to sell once the rights in the agreement terminate.

Top 10 Considerations in Licensing Cleantech Innovations

ferry_matt_blog_150x150.png

ferry_matt_common_640x280.jpg

ferry_matt_heroretina_2700x1160.jpg

ferry_matt_mobileretina_750x1040.jpg

ferry_matt_social_600x600.jpg

Matt Ferry is a partner in the San Diego office and a member of the firm’s Technology Transactions Group.
Matt’s practice focuses on strategic transactions involving intellectual property (IP), techno

Matthew Ferry

choi_anita_blog_150x150.png

choi_anita_common_640x280.jpg

choi_anita_heroretina_2700x1160.jpg

choi_anita_mobileretina_750x1040.jpg

choi_anita_social_600x600.jpg

Anita Choi has decades of experience providing strategic advice to companies and investors in the Life Sciences and Food + Agriculture industries. She has helped start-up companies build IP portfolios around their core technologies, and counseled them on issues related to patents versus trade secrets.

Anita Choi

Anita Choi’s practice focuses on patent prosecution, portfolio management, IP due diligence, and IP litigation support. Her clients range from early-stage start-up enterprises to established domestic and international companies. She is well-versed in building and managing worldwide patent portfolios across many sectors and technologies, including small-molecule pharmaceuticals, medical devices, diagnostics, industrial chemicals and advanced materials, food and agtech.

roberts_emily_blog_150x150.png

roberts_emily_common_640x280.jpg

roberts_emily_heroretina_2700x1160.jpg

roberts_emily_mobileretina_750x1040.jpg

roberts_emily_social_600x600.jpg

Emily’s practice focuses on patent preparation, prosecution, and counseling.

Emily Jane Roberts Ph.D.

Emily Roberts

221205-pvp-blog-image.jpg

Top 10 Considerations in Licensing Cleantech Innovations

221205-pvp-blog-image

Spurred by both planetary and economic needs, the industry commonly referred to as “cleantech”—short for “clean technology”—has been on the rise.

Although the European, U.S., and UK Patent Offices have denied patent applications on the grounds that an AI system cannot be listed as an inventor, not every country seems to be following that approach and some may be set to buck the trend.Last year, we <a href="https://mofotech.mofo.com/topics/can-ai-be-an-inventor.html">reported</a> on the first European Patent Office (EPO) ruling on its approach to patent applications that designate artificial intelligence (AI) systems as inventors. Both the UK Intellectual Property Office (UKIPO) and the EPO reasoned that AI systems cannot be inventors. However, South Africa and Australia did not follow suit this year.What did DABUS “invent”?The “Artificial Inventor Project,” an international group of patent attorneys, filed patent applications directed to inventions that were supposedly “invented” by DABUS, an AI system developed by Dr. Stephen Thaler. The applications are directed to a light-emitting device that could be used as an emergency signal beacon and a food container.Success in South Africa could be prematureA patent application was granted in South Africa by the Companies and Intellectual Property Commission, listing DABUS as the inventor and Dr. Thaler as the owner of the patent.A contributing factor to the grant is the lack of definition of “inventor” in South African patent law and the structure of the local patent system. Patent applications are not formally examined prior to their grant – they will be granted if they meet the required formalities as a minimum.Thus, the local patent office did not undertake a substantive examination of the patent application ahead of its grant.Now the patent is vulnerable to applications made against it that are filed in the South African court. Any third party may apply to the Court of the Commissioner of Patents to revoke the patent. The patent could be revoked for a number of grounds, including lack of inventiveness, lack of novelty, and most pertinently, because Dr. Thaler, who is not the inventor, was not entitled to apply for it.The Federal Court of Australia’s decisionIn Thaler v Commissioner of Patents [2021] FCA 879, the Australian court reasoned that the ordinary meaning of “inventor” does not exclude non-humans. It also found that in patent law, unlike copyright law, there is no requirement for a human inventor.Dr. Thaler argued that the objectives of the relevant legislation supported AI systems being recognized as inventors because it is intended to promote technological innovation and the dissemination of technology.The court also considered that various persons can contribute to the output of an AI system, and that recognizing the AI system as the inventor would avoid uncertainty as to who should be recognized for the inventive process.While the court was only faced with deciding whether DABUS could be an inventor, it also discussed whether Dr. Thaler could be the patent grantee. The court found in favor of Dr. Thaler by determining that he could be a grantee since he derived title to the invention. Dr. Thaler owns and controls DABUS, therefore its inventions are in Dr. Thaler’s possession.Status of global DABUS applications<ul><li>In the UK, Dr. Thaler appealed to the UK Court of Appeal in July 2021, after rejections from the UKIPO and the UK High Court. </li><li>A hearing date has been set for a European appeal in December 2021. </li><li>The Deputy Commissioner of Patents in Australia has four weeks to appeal the July 30, 2021 decision. </li></ul>Further similar patent applications involving issues of AI inventorship have been unsuccessful in Canada, China, Taiwan, Germany, and the United States. There are still pending applications in India, Israel, Japan, and South Korea. Given the fate of the DABUS applications thus far, it is advisable to continue listing the individuals, not the AI systems, as the inventors on patent applications.

Autodesk

HM Revenue and Customs

Home Office, Department for Communities and Local Government, Department of Health

Intel

ITworx

lastminute.com

NYSE-listed health tech company

One of UK's largest public EV charging networks

Phoenix Group

Telenor

UK Border Agency

maughan_alistair_blog_150x150.png

maughan_alistair_common_640x280.jpg

maughan_alistair_heroretina_2700x1160.jpg

maughan_alistair_mobileretina_750x1040.jpg

maughan_alistair_social_600x600.jpg

Senior Counsel

Alistair Maughan co-leads Morrison & Foerster's European Technology & Commercial Practice.

Alistair Maughan

Alistair advises on the deployment of new technology platforms involving, for example, the internet of things, AI and machine-learning, and blockchain and distributed ledger technology.