President's Message Inside

Inside 3Q2013 2 . Five Tips for Preparing Effective Intellectual Property Assignments 3 . ACC News 4 . FOCUS on Pro Bono 4 ... FedEx Ground Impacts the Community with its Pro Bono Efforts 5 ... MSA’s Law Department Partners with “Wills for Heroes” for Pro Bono Works 6 . Contract Negotiations — Terms and Conditions 7 . Upcoming Events 8 . Welcome New Members! 8 . Board Members and Contacts FOCUS President’s Message Kevin Whyte, Carmeuse Lime & Stone For this edition of Focus, I wanted to say “no”, but rather try to strive to perform at a higher address the noble calling of the legal determine the underlying standard. $is does not profession. So I “Googled” “law profession goal and fashion a solution. mean, however, that we need and quotes” hoping to !nd a good lead in to simply accept interpreta- Just two examples (there are to this article. Try it yourself. Su"ce it to tions or positions taken by many more and probably say – not a pretty site. We lawyers get a bad the regulatory agencies. better ones) are set forth rap, maybe sometimes deserved. However, In some cases, we need to below. whether serving in house or in private challenge such positions. practice, I still believe, a#er all these years, I am sure that many of us At times, the agencies seem that lawyers serve a valuable purpose in have had business people to give too little weight (or our society. Perhaps, there are too many of come to us and say - how even no weight) to economic us, but I would still be proud if one of my can we get out of this contract? I still considerations. While we would all like to kids were to pursue the legal profession. involuntarily %inch whenever I hear this. live in a pollution free world, we also enjoy Contracts mean something. $e concept the modern conveniences of our advanced $e Declaration of Independence and the that contracts are meant to be performed civilization. Sometimes trade-o&s are Constitution were written primarily by and can be enforced is central to our free required and di&ering interests must be lawyers. Gandhi and Mandela were both enterprise system. But I have learned balanced. Lawyers are good at negotiat- lawyers. Turow and Grisham have written over the years to be more patient (at least ing reasonable solutions in these complex some pretty good books. We may not go I try). By digging a bit deeper, we can areas where the law, public policy and down in history as famous lawyers, but sometimes help to !nd a business solu- science intersect. we can help to ensure that our compa- tion. First question – is the other side in nies operate within the system, a system Securities disclosure, settling complex breach. If not, what don’t we like about based upon laws, written and interpreted litigation, compliance and governance, the contract? Is there something that the by lawyers. employment and labor and business trans- other side might not like or would want actions are just a few more areas in which One of the major criticisms of lawyers is to change that we would be willing to lawyers can bring their special skills and that we can argue “both sides of a case”. consider? For example, can we trade a knowledge to help solve business issues, in Personally, I do not see any problem with longer term (to give the customer security an ethical and legal manner. this, as the consideration of most complex of supply) for some better pricing in the issues involves merits on both sides of the short term? Sometimes, it is really just Oh by the way – I am no literary expert – argument. In some cases, there may be a matter of enforcing rights already set but the Shakespeare quote “let’s kill all the more than two sides and multiple possible forth in the current document. You never lawyers” needs to be taken in context. If outcomes. We are trained to see the shades know how the issue might be resolved the goal were to create a communist dicta- of gray and to try to fashion solutions that until you do some digging. torship, then killing all of the lawyers (or solve business problems while complying at least tossing them in jail) would make Sustainability is another area where we with legal and ethical requirements. $is perfect sense. can serve. Environmental compliance is is what it means to “think like a lawyer”. no longer enough. All companies need to When we are at our best, we do not simply Five Tips for Preparing Effective Intellectual Property Assignments By Brienne S. Terril1, Fox Rothschild LLP Intellectual property assignment agree- Tip 2 - Specify the Scope of the Convey- In light of this, parties to an assignment ments are commonly used to transfer own- ance - An intellectual property assign- should cautiously cra# and carefully ership of intellectual property, registered ment may not only grant ownership review conveyance language in order to or unregistered, from one party to another. rights in the transferred items of intellec- guarantee a contemporaneous transfer of Whether an assignment is executed as part tual property, but also to rights relating to the relevant intellectual property. of an employment or consulting arrange- the transferred intellectual property. For Tip 4 - Record the Assignment - Assign- ment, a sale or acquisition, or another example, an assignment may specify that ments involving the transfer of registered transaction, the following !ve tips will help the assignee is the owner of any patents intellectual property are o#en recorded ensure that the assignment documents the that ultimately issue from a transferred with the appropriate patent, trademark or parties’ intent regarding the nature of the patent application. Similarly, an assign- copyright o"ce in the governing jurisdic- assignment, and provides adequate notice ment may expressly provide that rights in tion. Recording an assignment provides of the transfer to third parties. and to continuations, continuations-in- the public with legal notice of the transfer. part, divisional applications, and foreign Tip 1 - Identify the IP Being Conveyed - In addition, in the United States, an counterpart applications are transferred An assignment should clearly identify the assignment that is not recorded within along with a patent application. Assign- intellectual property being conveyed. $e three months of execution is void against ments of trademarks or copyrights should premise is simple enough, yet due to a vari- any subsequent purchaser for valuable address whether renewal rights are con- ety of factors, parties o#en neglect to suf- consideration who is without notice of veyed as part of the assignment. !ciently identify the intellectual property the assignment. Accordingly, it is in an being conveyed. $is can lead to ambigu- It is important to expressly document the assignee’s best interests to ensure that an ity as to the parties’ intent and can cause scope of the rights being transferred pur- assignment is recorded in the U.S. within headaches for assignees who subsequently suant to an assignment. Failure to do so three months from execution in order transfer the acquired intellectual property. may result in an assignee obtaining fewer to prevent a subsequent purchaser from rights than may be intended or expected. acquiring any rights to the intellectual Clearly identifying transferred intellectual property. property is especially important for reg- Tip 3 - Use the Correct Conveyance istered items of intellectual property such Language - To properly e&ect transfer of Assignments may also be recorded in as patents, patent applications, trademark intellectual property through an assign- countries outside of the U.S. for appli- registrations and copyright registrations. ment, the parties should pay particular cable intellectual property, which may To avoid confusion, an assignment should attention to the conveyance language provide an assignee with certain bene!ts. identify the transferred intellectual that is used. Courts have consistently For example, in some countries, patent property with as much detail as possible. found that assignments that include infringement damages begin to accrue For example, an assignment conveying present tense conveyance language, such from the date that an assignment is actu- a patent should identify the patent by at as “hereby assigns,” e&ect contempora- ally recorded in the relevant patent o"ce. least the serial or patent number. If this neous transfer of the underlying intel- As such, an assignee should consider information is unknown or unavailable, lectual property. However, courts have recording an assignment soon a#er exe- then an item should be identi!ed by as also consistently found that agreements cution in order to maximize the amount much information as is known, such as by that include future tense conveyance of infringement damages that may be title, inventors, !ling date, issue date and language, such as “shall assign”, “agrees available to the assignee in an infringe- applicable country. to assign” and “will assign” are not suf- ment action. However, many countries !cient to e&ect contemporaneous transfer outside of the United States consider Similarly, a trademark assignment should of intellectual property. Instead, these assignment of intellectual property to be include, for example, the serial number, agreements are o#en considered to be a taxable transfer. Such countries o#en registration number, country of registration, mere agreements to assign that require charge a Value Added Tax (VAT) on !ling date, registration date, and classes of execution of a subsequent agreement in the estimated value of the intellectual corresponding goods or services. Including order to perfect transfer of the intellec- property. $erefore, an assignee may wish as much identifying information as possible tual property that was the subject of the to evaluate the value of the intellectual will lessen any ambiguity that might exist original agreement.

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