Court Decision Serves as Warning for Inventors
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In a wink to comic book fans, a US Supreme Court justice has tucked several superhero references into a ruling involving a royalties for Spider-Man toy. "With great power there must also come – great responsibility," Justice Kagan |
The U.S. Supreme Court on Monday issued a ruling on patent royalties that the National Law Journal characterizes as a blow to inventors who may not know the intricacies of patent licensing agreements.
The court ruled against the inventor of a Spider-Man toy and in favor of Marvel Entertainment, which sells the toy.
Inventor Stephen Kimble owned a patent for a toy that shoots foam string from a glove. He and Marvel Entertainment had a licensing agreement, but it did not include an end date for royalties. Marvel attorneys later realized there was legal precedent for ending royalty payments when a patent expired, and they sought legal recourse to end Kimble’s royalties.
Patent attorneys told the Law Journal that the ruling highlights how important it is for inventors to work with lawyers. They said inventors have options for extending payments after a patent expires, but royalties are not among them.
Intellectual property lawyer Jordan Sigale of Dunlap Codding’s Chicago office said the justices were “unsympathetic to the garage inventor who may not have the wherewithal” to hire patent lawyers.
The justices ruled 6-3 in favor of Marvel. Dissenters were Justice Samuel Alito, Chief Justice John Roberts and Justice Clarence Thomas.
Alito described the 1964 precedent as based on a now-discredited economic theory and said preserving it “interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent.”
The majority disagreed. S