Ten Common Mistakes In IP Valuation/ Damages Reports
David DrewsIPmetrics LLC As regularly occurs in business, Company A is considering acquiring Company B. The strategic perspective is very compelling: the target’s patent portfolio fills numerous holes and propels the R&D program in certain key areas several years ahead of Company A’s current position. A manager in Company A has been tasked with deciding […]
Trade Mark Filing Strategies In Europe
Dr. Frank RemmertzREMMERTZ SON Selected Aspects Of The EC Trade Mark ReformTrademarks are of substantial importance in an industrial and commercial sense and are closely associated with business image, goodwill and reputation. It is therefore very important to protect trade marks in those countries where they are to be used. The purpose of this article […]
Recent U.S. Court Decisions And Developments Affecting Licensing
John PaulFinnegan, Henderson, Farabow, Garrett & Dunner, LLP D. Brian KacedonFinnegan, Henderson, Farabow, Garrett & Dunner, LLP Warsaw Orthopedic, Inc. v. NuVasive, Inc.Patent Owner Cannot Recover Lost Profits Based on Lost Sales of Products Not Func-tionally Related to Patented Product, Lost Royalty Payments, or Lost Payments from Inter-Company Transfer-Pricing Agreements By statute, damages in a […]
The Scoop From Europe: The CJEU Offers Guidance In The Huawei/ZTE Judgment On The Proper Way To Conduct FRAND Negotiations
Patricia CappuynsCappuyns Intellectual Property Law On 16 July 2015 the European Court of Justice (“CJEU”), Europe’s highest court, rendered its much anticipated judgment in the widely publicized Huawei/ZTE saga regarding standards-essential patents.1 In this judgment, the CJEU confirms the ap-proach of the European Commission in the Samsung and Motorola decisions and the opinion of Advocate-General […]
Valuing Trade Secrets
David WanetickIncreMental Advantage How can you value your firm’s trade secrets?The first step is to define what trade secrets are so that you can isolate the right assets for review. So what are trade secrets? Trade secrets are proprietary information, knowledge, formulas, methods, designs or processes that confer commercial advantage to those who possess them. […]
Use Of Cluster Searching To Find Patents With Licensing Potential
Mike LloydGriffith Hack In an earlier LES paper (“Advanced Citation Analysis Can Help Identify Licensing Candidates,” published in September 2014) we had discussed how citation analysis can help licensing managers and others find commercialisation opportunities for their patents. As part of this, we demonstrated the use of two tools, one a graphic tool used for […]
Seven Somewhat Non-Standard Suggestions For Negotiating University IP Rights Agreements
Michael Alvarez CohenUniversity of California This year (2015), I completed my 100th intel-lectual property (IP) rights agreement for UC Berkeley (UCB). My most recent agreement is an exclusive license to a UCB spinout for three sensor-related technologies. That agreement was completed in about 30 days. About half of my UCB agreements were with startups; and […]
Patent Portfolio Valuation As Reflected By Market Transactions: Market Dynamics And The Impact Of AIA And Alice
Jack LuIP Market Advisory Partners (IPMAP), LLC. This essay presents the most recent results from an ongoing research project that collects and analyzes the market prices of patent portfolio transactions. The project was initially launched in 2012 as part of the efforts to better understand the pricing behavior of the rapidly growing patent market. Several […]
Improving The Technology Transfer Process By Going Back To The Basics: A Comprehensive Assessment and Reporting System
Kuok Teong OngWashington State University Aishwarya SathyanarayanUniversity of Minnesota The passage of the Bayh-Dole Act in 1980 has given universities and research institutes the right to retain titles to inventions resulting from federally sponsored research. As a result, many universities and research institutes have enhanced their capacity to effectively conduct patenting and licensing of technologies. […]
Assessing The Value Of Your Patents
Terry LudlowChipworks Michael SpenceChipworks What are the factors that influence patent value? They fall into three areas: legal, technical, and market.