les Nouvelles - 2010

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les Nouvelles - December 2010

  • Les Nouvelles - December 2010 - Full Issue
  • PDF, 3.13 MB
  • Commemorating The U.S. Bayh-Dole Act And Its Impact On Technology Transfer Around The World
  • Sun Kim
    This year marks the 30th anniversary of enactment of the Bayh-Dole Act (BDA) in the U.S., which has paved the way for technology transfer in universities and research institutes. The Act allows government funded agencies, such as universities, to retain intellectual property rights to innovation stemming from the government–funded research. (35 USC Sections 200-212) This has made innovations and discoveries from the government funded research projects more accessible to private industry. The passage of the BDA has accelerated technology growth in the U.S. and permitted the government to capitalize on research discoveries through commercial exploitation. The challenges faced by the U.S. in the pre- Bayh-Dole period are not unique to the United States. Governments world-wide spend billions of dollars every year funding national public research, yet the scientific knowledge created through such funding often encounter difficulties incorporating it into society.
    PDF, 54.88 KB
  • Bayh-Dole: Don’t Turn Back The Clock
  • Senator Birch Bayh
    (Speech of Birch Bayh at the Licensing Executives Society 2006 Annual Meeting, New York, New York, Tuesday, September 12, 2006.) After a quarter century of what by most objective standards has been an exceptional success, the Bayh-Dole law is under increasing attack today. Most of the attacks have come from individuals who have little experience with the comprehensive nature of how the law is implemented. They do not know what Bayh-Dole does and does not do, and why certain features were incorporated into the law. Equally important, these nay-sayers have no appreciation for the factors that motivated our efforts to develop this legislation in the first place. Most unfortunate of all, these modern- day experts in technology transfer apparently do not understand the basic factors upon which our nation’s free enterprise system is based.
    PDF, 190.66 KB
  • The Bayh-Dole Act Turns 30
  • Vicki Loise, CAE, and Ashley J. Stevens CLP
    So, what is all the hoopla about? What on earth is Bayh-Dole? Why is Senator Birch Bayh remembered not for his substantial role in fundamentally changing U.S. society—he authored the 25th and 26th amendments to the Constitution (respectively, changing the rules for the Presidential and Vice Presidential succession and lowering the voting age to 18) and Title IX, the law which, by changing how women are treated in college athletics, transformed women’s role in society—but instead, for an obscure law which changed the way universities manage their patents?
    PDF, 155.16 KB
  • The Collaborative Research House That Bayh-Dole Built: Perfectly Constructed Or In Need Of Repairs?
  • William H. Pratt
    In many ways, one might argue that we live in the golden age of collaborative research. As technological challenges continue to grow in complexity, we appear to depend more and more on the ability of governmental, non-profit, and for-profit entities to pool their intellectual resources to meet such challenges. Without a doubt there are numerous reasons for this increase in collaborative research, including the transformation from a manufacturing-driven society to a technology-driven one. The complexity of the technological challenges facing industry, the increase in government research, and the influx of venture capital have all helped to fuel this development. Last, and perhaps most important, the increased status of patents and their recognition as a valuable income-producing asset have helped justify the increased investment in collaborative research.
    PDF, 106.80 KB
  • Intellectual Property Based On Publicly Funded Research: Japanese Experience
  • Toshiya Watanabe - Prof. Dr., RCAST
    This paper focuses on how the system of intellectual property management of research results based on public funding have changed over time in Japan. The paper also aims to examine how outcomes of publicly funded research contributed to the national innovation system in Japan as a result of such a transition, and to describe the strengths and weaknesses of such contributions by publicly funded research. The system resembling that of the U.S. Bayh-Dole Act was introduced to Japan with the establishment of Technology Licensing Organizations (TLOs) at universities in 1998. At that time, many Japanese universities were not yet the major management bodies of their own intellectual property. A further five years were required since then for the actual completion of the Bayh-Dole system at the entire Japanese university level, until the incorporation of national universities in 2004. As a result of this change, Japanese universities currently receive approximately 10,000 cases of invention disclosures per year, file for approximately 7,000 patents applications per year, and conclude cumulatively more than 5,000 cases of technology transfer contracts. Such statistical records suggest that Japan managed to successfully introduce the U.S. type Bayh-Dole Act.
    PDF, 250.93 KB
  • German Law On Employees’ Inventions Regarding University Employees
  • Christian Czychowski and Klaus Dieter Langfinger - Boehmert & Boehmert
    The legal background concerning inventions made by university professors or other university staff is primarily governed by Sec. 42 German Employees Invention Act (Arbeitnehmererfindergesetz). This Act has been subject to some major changes in recent legislation. Because of some transitional provisions concerning inventions made by university staff before February 7th 2002, it is important to know the former legal provisions. The general structure of employees’ inventions is as follows: According to the general rule in Sec. 4—7 of the German Employees Invention Act, inventions made by an employee in connection with his employment are allocated to his employer. The employer can claim the invention (so called Inanspuchnahme) by stating so to the employee (Sec. 6 sub-section 1 German Employees Invention Act). The invention is deemed to be claimed if the employer does not release the invention to the employee within four months (Sec. 6 sub-section 2 German Employees Invention Act). In any case the respective inventor has to give notice (Erfindungsmeldung) to his employer about the invention (Sec. 5 German Employees Invention Act). An exemption is only made for such inventions that have not been made within business operations and do not build up on the experiences or results achieved in connection with the employment (free inventions) or such inventions for which the employer doesn’t want to file a patent. These free inventions are assigned to the inventing employee himself. If an invention is assigned to the employer, the inventing employee has to be adequately compensated for his invention according to Sec. 9, 10 German Employees Invention Act.
    PDF, 103.00 KB
  • Review Of The Legal Scheme And Practice Of Science & Technology Basic Law In Taiwan: Taiwanese Version Of Bayh-Dole Act
  • Paul C.B. Liu, Wei-Lin Wang and David Su
    To follow the experience of the United States, Taiwan mimicked the system of the Bayh-Dole Act and passed the Science and Technology Basic Law in 1999. As a result, this Law not only generates valuable patents to promote commercial development, but also saves the additional cost of the investment in technology transfer by the government. Ever since the passage of the Law, it has generally been recognized to have positive effects on society as a whole. However, there have been mounting criticisms claiming that this Law corrupts the university’s basic mission to educate and conduct research, and there are strong voices arguing that knowledge and research results should be freely and openly disseminated, especially when they are funded by the government.
    PDF, 96.02 KB
  • UK Perspective On The Bayh-Dole Act
  • Teri Willey, Richard Jennings
    The UK does not have legislation like the Bayh-Dole Act, but events in the mid-1980’s leading to university invention ownership and responsibility, resulted in comparable impact. This was reinforced by significant financial support for technology transfer from the UK Government leading to many similarities between UK and U.S. technology transfer and some subtle but important differences.
    PDF, 110.14 KB
  • Technology Transfer Landscape Since The Enactment Of The Technology Transfer Promotion Act Of 2000 In Korea
  • Sun R. Kim
    This article will address a brief history of technology policy and changes to the technology transfer landscape since the passage of the Korean Technology Transfer Promotion Act of 2000 (Enacted Act no. 6229, January 2000) Korea, as a “catch-up” economy based country, was more prone to imitate than innovate with technological innovations being led by a chaebol firm (a South Korean form of business conglomerate, powerful global multinationals owning numerous international enterprises) that benefited from large-scale investment in R&D and governmental support. Increased and structured investment has been viewed as improving economic performance and boosting productivity.
    PDF, 111.55 KB
  • Brazil After 5 Years Of Innovation Law
  • Rosana Ceron di Giorgio
    This report gives a brief summary of technology transfer landscape five years after the creation of Innovation Law, the Brazilian equivalent of the Bayh-Dole Act. The research presented here involved 84 institutions, among universities and research centers, private and governmental, distributed among the five existing regions of Brazil. Government institutions, where most of the country’s research is concentrated, represented 70 percent of the sample and federal government universities, 48.8 percent. Among the discussed subjects there are: Brazilian Laws concerned to ownership rights and benefit sharing, government incentives to innovation and progress obtained in patenting and licensing activities, after the Innovation Law was released
    PDF, 100.79 KB
  • Lost In Translation: A European Perspective Of Bayh-Dole
  • Thomas L. Bereuter and Peter Heimer
    The Bayh-Dole Act in the U.S. is seen as a role model for legislative bodies in many jurisdictions. European regulations have been improved and harmonized to a significant extent in the last decade. In particular the “professor’s privilege” or similar regulations have been substituted by institutional ownership. Nevertheless, the new regulations are not as effective as the Bayh- Dole Act. Funding guidelines in Europe are frequently lacking the commitment to principally attribute ownership of intellectual property (IP) to the institution creating the IP. Another layer of regulation is provided often resulting in fragmented ownership of IP rights. Therefore, further improvement of the regulations in combination with a more committed execution of already existing regulations is a future challenge in order to achieve a comparable positive impact on the innovation track record in Europe as in the U.S.
    PDF, 99.50 KB
  • Public Sector Research In Australia—IP Ownership And Commercialisation Issues
  • John Walker
    Before considering any “Bayh-Dole type issues” in the Australian IP protection/commercialization landscape, a brief overview of the Australian public sector R&D framework is helpful. First, “public sector” in the context of Australian R&D principally covers research undertaken in the university system and research by government owned research agencies, such as Commonwealth Scientific & Industrial Research Organisation (CSIRO). Government funding for these activities is provided through two principal mechanisms: research grants through the Australian Research Council (ARC) and the NHMRC which flow through principally to the university/medical research sector; and the funding of specific government owned research institutes including CSIRO, ANSTO, AIMS, DSTO (the largest of which is CSIRO).
    PDF, 80.92 KB
  • Public Funded Research In India—A Reckoner On Recent Legislative Actions
  • Rajashree Sharma
    Post independence India has seen rapid development of human resources and infrastructure for science and technology, growth of indigenous industries in diverse sectors apart from other socio-economic aspects. To compete in a global environment, wherein it is necessary to promote creativity and innovation, India realized the need to protect and utilize the intellectual property created out of public funded research and development. It is thus necessary to develop a framework in which the protection and utilization of intellectual property is put in place. With this intent the Government of India has introduced the “Protection and Utilization of Public Funded Intellectual Property Bill 2008” (hereinafter the Bill) in the Upper House of Parliament. The Bill will provide the protection and utilization of intellectual property originating from public-funded research. The Bill has been modeled on the United States Patent and Trademark Law Amendments Act, commonly known as Bayh-Dole Act (BDA). However, the Bill invited criticism from various stakeholders that a Bayh-Dole kind Act is not relevant in a developing nation such as India, as the environmental conditions that prefaced the adoption of Bayh-Dole in the U.S. are different from those prevailing in India. Furthermore, there had been much criticism of this Bill even before it was introduced in Parliament as it received the assent of the Union Cabinet without benefit of a public debate. Therefore, the Bill was referred to the Parliamentary Standing Committee for review, and recently the committee has come up with their comments after taking responses from various stakeholders. The Bill has been revised drastically relaxing patenting norms for inventions and giving the government more control over the institutions. A total of 52 amendments have been made to the original draft. In August 2010, the Bill was laid on the tables of upper and lower house of the Parliament.
    PDF, 80.55 KB
  • The Ownership Issues For Patentable Inventions Resulting From Publicly Funded Research In Turkey
  • Yucel Hamzaoglu and Omer Hiziroglu
    Under Turkish Patent Law, the Decree Law 551 (1995), the legislator has given the so called academic or professor’s privilege to inventions made by university researchers. Thus, inventions made by university researchers are considered to be free inventions. Researchers are free to contractually assign their inventions to third parties but may be required to reimburse the university for actual costs incurred (i.e.: lab space, material used, etc.) by the institution if the invention is commercialized. The 551 is silent regarding the issue of ownership of academic inventions that result from publicly funded research. Furthermore, there is no other legislation in force that purports to regulate the particular issue of ownership of intellectual property arising from publicly funded research.
    PDF, 83.10 KB
  • Legislation And Technology Transfer In Switzerland
  • Françoise Chardonnens
    Does Switzerland have its Bayh-Dole Act? The answer is “yes, but.” Indeed, due to the decentralized Swiss political and legal system, more than one Act governs technology transfer in Switzerland. Higher education institutions consist of: Two federal institutes of technology (namely ETH Zurich and EPFL, Lausanne), governed by federal legislation; Ten cantonal universities, mainly governed by cantonal legislation; Seven universities of applied science, mainly governed by cantonal legislation. Technology transfer was not addressed per se until 1991, although federal and cantonal law did contain provisions about ownership of inventions made by civil servants (ownership being allocated to the federal or cantonal state). The application of this legislation in the higher education institutions was not straightforward mainly because of the many different possible employment status of their staff, whereby it was generally very difficult to know which categories of university staff were subject to such provisions. Typically, it was not clear whether inventions generated by professors belonged to themselves or to the institution hiring them; without talking about the other aspects of technology transfer like patenting and licensing, which were not addressed at all.
    PDF, 84.90 KB

les Nouvelles - September 2010

  • Les Nouvelles - September 2010 - Full Issue
  • PDF, 2.74 MB
  • Royalty Rates And Licensing Strategies For Essential Patents On LTE (4G) Telecommunication Standards
  • Eric Stasik
    Long Term Evolution, or LTE, is the latest sequel to the successful GSM series of standards. A so-called fourth generation (4G) mobile communications technology, LTE is an upgrade to UMTS/WCDMA (3G) providing an enhanced radio interface and all-IP networking technology. Like a sequel to a successful movie, LTE includes many elements of the original release and offers a few new twists. This is especially true when it comes to the matter of licensing essential IPRs for the LTE standard. Audiences can expect to see the same licensing challenges that first appeared in GSM (2G) and which re-appeared in UMTS (3G) starring again in LTE (4G).2 The plot is essentially the same: lots of essential patents and many different patent holders. The LTE sequel begins in much the same way as UMTS did—with an announcement of an industry initiative on the matter of essential IPRs. In LTE this scene took place in April 2008 where a group of leading telecommunication companies committed themselves to a framework for “establishing predictable and more transparent maximum aggregate costs for licensing [patents] that relate to 3GPP Long Term Evolution and Service Architecture Evolution (LTE/SAE) standards.” In particular, these companies stated “support” for “a reasonable maximum aggregate royalty for LTE essential IPR in handsets is a single-digit percentage of the sales price.”
    PDF, 122.43 KB
  • Technology Royalty Rates In SEC Filings
  • Thomas R. Varner
    Previous studies of technology license agreements have been limited either to analyzing relatively small sets of agreements or to analyzing a mix of complete agreements and general descriptions of agreements from a variety of sources. This study is unique in that it considers a large number of complete, publicly available agreements from one source, agreements submitted to the U.S. Securities & Exchange Commission (SEC) from 1994 to 2009. The dataset used for this study is also unique in that it contains a large number of royalty-based agreements previously granted Confidential Treatment by the SEC and obtained in unredacted form under the Freedom of Information Act.
    PDF, 125.87 KB
  • When To Deal: Implications Of A Model For Optimal Timing
  • Gautam Aggarwal, Christopher Apolito and Ben Bonifant
    When licensing a pharmaceutical technology, there is no clear consensus on the best time to do the deal. With varying stakeholder interests and numerous factors to consider, the task of finding the optimal time to out-license a pharmaceutical technology is far from straightforward. To gather opinions on what stage of development is perceived as best for completing a licensing transaction, Campbell Alliance conducted a deal-making intentions survey of nearly one hundred licensing professionals in the pharmaceutical industry. Study results demonstrated variations between what in- and out-licensors stated was the ideal timing for a deal and when the historical record demonstrated the deals were actually getting done.
    PDF, 138.10 KB
  • Use Of Small Business Innovation (SBIR) Program In Support Of Technology Transfer
  • Clara Asmail
    The National Institute of Standards and Technology (NIST) has pioneered a new methodology for U.S. small businesses to spin-out commercially-viable technologies emerging from NIST’s focused research. Using its Small Business Innovation Research (SBIR) Program funds, NIST incentivizes small U.S. companies to create financially rewarding innovations by researching and developing NIST-originated technologies with the goal of transitioning NIST intramural research into the market. The goal of transitioning research to the commercial market is also the goal of federal technology transfer programs. The use of SBIR funds to achieve federal technology transfer is a novel systematic approach to merging these two complementary infrastructures in order to leverage the advantages of each program for synergistic growth.
    PDF, 121.89 KB
  • Mitigating Risks Of Patent Licensing After Forest Group vs Bon Tool Co
  • Keith R. Derrington and Jeffrey S. Whittle
    Whoever marks an article with a false patent number shall be fined “not more than $500” for every offense. The Federal Circuit redefined “an offense” in its Forest Group opinion to mean every time something is marked with a false patent number. Because the potential liability for false marking has been significantly expanded, both licensees and licensors should now implement proper product marking procedures so that appropriate patent numbers are identified on products and services. Moreover, the probability of false marking allegations can be reduced by assigning marking responsibilities, warranties, and indemnification in licensing agreements.
    PDF, 119.06 KB
  • Recent Trends And Developments in Italian Patent Law
  • Giulio Enrico Sironi
    Over the last few years a series of new laws have been introduced relating to the IP sector and specifically the patent sector. These laws have the dual purpose of strengthening measures to protect IP rights and ensuring that IP disputes are handled by Courts which are actually competent, in the sense that they have a specialist knowledge of the matter. The first of these laws was Legislative Decree 27 June 2003, no. 168, whereby Specialized Divisions exclusively competent for all IP cases were set up at twelve Courts and twelve Courts of Appeal. Since 2003, therefore, all patent disputes have been brought before these Divisions composed of judges who have, as the law provides, “specific skills” in the area. However, even before the institution of these Divisions, a de facto specialization had developed at the Courts of the cities in which IP cases were frequently held (Milan, Rome, Turin, Venice, Bologna and Naples), in the sense that it was common practice to always assign such cases to a certain division, the judges of which had—or, at any rate, had acquired over time through working in that division— a good level of knowledge of the matter. However, this was a situation in which specialization was the result of a common practice and in which, above all, the possibility that the case would be handled by a specialist judge depended on whether or not the case could be brought before a certain Court, according to the normal rules of competence laid down in the Code of Civil Procedure (CCP). If, on the contrary, for reasons of competence, a case had to be brought before another court, a particularly complex patent dispute involving substantial sums could be decided by judges who had never before in their careers dealt with such an issue. In addition to eliminating this kind of risk, concentrating patent cases before the twelve Courts and Courts of Appeal (the concentration is, in fact, even greater given that the majority of patent cases are held before the Specialized Divisions of the Courts of the six above-mentioned cities), has led to a series of other advantages.
    PDF, 121.47 KB
  • Monsanto Soy Bean Patent Cases - A Paradigm Shift Gathering In Case The ECJ Takes Over Patent Jurisdiction
  • Jlrich Storzu and Aloys Huettermann
    Recently, two patent disputes have attracted public interest not only due to the fact that Monsanto, one of the favourite evildoers of the anti-patent movement, was involved, but also because different jurisdictions in Europe, namely the Advocate General of the European Court of Justice (ECJ) and the UK High Court, have appraised the cases differently, although with similar outcome. The following article gives a short overview of the dilemma, and the paradigm shift which could arise should the opinion of the Advocate General prevail.
    PDF, 97.59 KB
  • Does Upfront Payment Reduce Running Royalty Rate? Theoretical Perspectives And Empirical Analysis
  • Jiaqing “Jack” Lu
    Running Royalty Rate and Upfront Payment: Theory and Reality This study continues the empirical approach of royalty rate study as set in a series of papers I authored or coauthored in recent years. In these previous studies, the research efforts were concentrated on the fundamental story of royalty rate determination, investigating the economic role played by major factors such as profitability, industry performance, and market structure. The focus of this paper is shifted to the structural side of licensing transaction and royalty payment, and devoted to one of the important structural issues, i.e., the interaction between upfront payment and running royalty rate. While the combination of upfront payment and running rate is one of the frequently-adopted payment methods, there is little research on the interaction between the two.
    PDF, 133.89 KB
  • LPO And The Great Recession
  • Alok Aggarwal
    Saragota, California, April 2010: The economic recession (the Great Recession) of 2008 and 2009 resulted in a sharp drop in international trade, impacting the entire global economy. Recent studies by BTI Consulting Group and Hildebrandt-Citi Private Bank reported that 2008 and 2009 were among the worst years for the legal market in the United States during the last 50 years with billable rates and realized rates dropping by almost 10 percent (after including inflation). On the other side of the Atlantic Ocean too, the Great Recession took its toll; the Clementi proposals in the United Kingdom are further expected to change the way the law firms operate, forcing them to become more efficient and competitive.
    PDF, 116.48 KB
  • Recommended Resources for Licensing Professionals
  • John T. Ramsay, Q.C.
    The Recommended Resources Subcommittee of the Licensing Executives Society (USA and Canada), Inc., Education Committee has completed this list of resources (books and articles) that they as business and legal practitioners with extensive experience in developing, managing, protecting and commercialization intellectual property have found useful. They offer this list of resources as guidance to others. Some years ago, the LES Foundation published a list of resources that is still in circulation and some of our subcommittee members participated in its preparation. It is time to update it and to add commentary as well as guidance as to the intended audience. Inevitably, good resources, not included, should be included. This resource list is somewhat U.S./Canadacentric and hopefully in time will be expanded to include resources from other countries; perhaps a LESI committee may do this in the future.
    PDF, 124.58 KB

les Nouvelles - June 2010

  • Les Nouvelles - June 2010 - Full Issue
  • Volume XLV No. 2
    PDF, 3.74 MB
  • How Sun Tzu Would Outflank Patent Trolls
  • David Wanetick
    Much has been written about strategies employed by patent trolls. Many have opined about the tax they represent to operating companies. Others have lauded trolls for providing markets where inventors can sell their patents for reasonable returns. This article will focus on strategies—many from Sun Tzu, the ancient Chinese military strategist—that operating companies can utilize to outflank patent trolls.
    PDF, 142.91 KB
  • Establishing An Effective International Withholding Tax Program For Patent Licensing
  • Victoria Tai
    International withholding tax poses a unique challenge for innovators who desire broad global distribution of patented technologies. Different types of licensing arrangements, from cross licensing to direct licensing to patent pools, call for different approaches to international tax withholding requirements and these must be taken into consideration when determining the most suitable way to license patents. This article explores the challenges and benefits presented by the various approaches, from reporting requirements, timing, to compliance with local laws and other external business issues, and will serve as a resource to patent holders as they decide how best to undertake licensing activities.
    PDF, 114.46 KB
  • Heightened Due Diligence By Licensees? A Misconception About A Licensed Patent May Not Nullify The License Agreement
  • Kei Konishi
    Many companies are well aware of the value of patent licensing. The exclusivity of patents requires companies that want to produce or sell their products which are covered by another's patent to obtain patent licenses from the patentees. It is, however, not surprising for a licensed patent to later be found to be irrelevant to the licensee's product, which raises a dispute between the licensee and the licensor. What if a licensed patent is invalidated or a licensee's product is found to be outside the scope of the licensed patent in later years? May a licensee seek monetary relief when a licensed patent is later found useless for operating its business? The Intellectual Property High Court (IP High Court) recently rendered a landmark decision addressing these issues in favor of not licensees but licensors in the "Pebble Bed Bath" Case, 2008 (Ne) No. 10070 (decided on January 28, 2009).
    PDF, 52.90 KB
  • Patent Dispute Resolution System In India
  • Balwant Rawat
    New Delhi, India, November/December 2009: After opening its economy for foreign direct investment in the early 1990s, India has become an important destination for multinational companies (MNCs). The population of over 1.2 billion not only makes India an attractive market, but also provides a vast educated talent pool. Consequently, many companies have set up their
    PDF, 147.80 KB
  • Software Valuation Of Open Source Software (OSS) — It’s Not All Free Beer!
  • Dwight Olson
    How do you put a value on free? That's the question facing investors in and business owners of open source software today. Few doubt that open source and open collaboration are reshaping the business landscape. Many believe there is only one open source landscape and it is "free beer" for everyone. However, those who believe that there is only one model called free beer, miss some very important aspects of value in the open source movement. It is very important to remember OSS (open source software) is not FOSS (free open source software) and they should not be confused with each other. For any information on FOSS, the reader may wish to surf the Internet with the keyword "FOSS" and "free open source software."
    PDF, 140.82 KB
  • The Research-Oriented Approach To University IP: A Reinvention Of University IP Management Away From A Focus On Licensing To A Focus On Research
  • Michael A. Cohen
    Offices that manage intellectual property (IP) at universities are scorned by some companies, venture capitalists, and even faculty at an IP office's own university. These disapproving companies and investors criticize university IP offices as overly focused on licensing, and correspondingly extracting money from ventures that could otherwise use that money for the virtuous but challenging endeavor of trying to commercialize university innovations. These companies and investors are further irritated because many university innovations result from research funded by industry or public taxpayer dollars (via federal and state governments). To exemplify the extent of this criticism, one R&D VP at a leading U.S. technology company has characterized the "synergistic" relationship between U.S. universities and industry as "under siege" due to a "focus on licensing" and the resulting "antagonism." The VP even relates the licensing focus of U.S. universities to issues with U.S. innovation and competitiveness in the global economy!
    PDF, 175.75 KB
  • Compulsory Licensing For Pharmaceutical Patents In Ecuador: A Primer
  • Sasha Mandakovic Falconi
    Following a public announcement on TV a few weeks ago by Ecuadorian President Rafael Correa,1 an executive decree was issued on October 23, 2009.2 The decree establishes access to medicines that are used for the treatment of priority diseases that affect the Ecuadorian population as a matter of public interest. More specifically, it enables access by compulsory licenses that will be issued when pharmaceuticals needed for treatment are protected by a patent.
    PDF, 107.47 KB
  • Evaluating The Value Of A Patent
  • Ned Barlas, Richard Dunham, Mark Horsburgh and Alan Lewis
    There are various models available to help establish the value of intellectual property; but do they truly evaluate the IP's value, or do they merely provide a somewhat arbitrary dollar value? This article examines the parallels between the development of IP transaction models and real estate transaction models.
    PDF, 118.17 KB
  • Recent U.S. Decisions And Developments Affecting Licensing
  • Brian Brunsvold and John C. Paul
    As a remedy for infringement, U.S. patent law allows patentees to receive damages that are not less than a reasonable royalty for the use of the invention by the infringer. Courts derive the reasonable royalty from a hypothetical negotiation between the patentee and the infringer at a time when the infringement began. Many factors, called Georgia-Pacific factors after a case of the same name, apply to the hypothetical negotiation. The first factor requires considering past and present royalties that the patentee received from licensing the patent in suit. In ResQNet.com Inc. v. Lansa Inc., Nos. 2008-1365, -1366, 2009- 1030 (Fed. Cir. Feb. 5, 2010), the United States Court of Appeals for the Federal Circuit held that it is improper for courts to consider licenses with no relationship to the patented invention to determine the reasonable royalty.
    PDF, 126.71 KB

les Nouvelles - March 2010

  • les_Nouvelles_03-2010
  • Volume XLV No. 1
    PDF, 2.73 MB
  • Licensing And Commercialization Issues For Geographic Data
  • Edward A. Pisacreta and Jonathan P. Mollod
    Most commercial entities that collect data and assemble it into databases would not readily disseminate such proprietary information, and if they did, they would most likely require the payment of a fee and the execution of a license agreement setting forth the scope of allowable use of the licensed database. Many state and local governments in the United States collect and manipulate data that is, in some way, tied to geographical features. Such data is often called "geodata."1 The issue of a state agency treating its data, and particularly its geodata, as if they were the owners of such data for licensing purposes is complicated by several factors. This article will explore these factors, including whether a state agency can be the owner of a copyright in the geodata it creates, the effect of a state's Freedom of Information Act or FOIA on the ability of a state to claim such copyright ownership or require the execution of a restrictive license agreement as a condition to access the geodata, and what the terms of such license should address and what the license fee can and should be..
    PDF, 108.00 KB
  • What Makes For Good Patent Due Diligence?
  • Jeff Miller, Mickey Minhas, Natasha Radovsky and Michael Thumm
    Today's dynamic and unpredictable economic climate has accelerated the need for companies to shore up performance by leveraging IP, including the buying and selling of patents. Patents are being purchased to strengthen licensing programs, create counter-claims in litigation, and support strategic business decisions. They are also being sold as a way for companies to gain quick revenue, reduce maintenance fees, and streamline patent portfolios to align with their core business. Depending on the deal value and transaction purpose, investing in legal and technical due diligence helps assess the overall value of the portfolio and minimizes the risk of the transaction.
    PDF, 108.38 KB
  • Patent Auctions: How Far Have We Come?
  • John Jarosz, Robin Heider, Coleman Bazelon, Christine Bieri and Peter Hess
    In April 2006, Ocean Tomo, LLC held what it described as the "world's first ever live patent auction."2 Since then, it has held nine more, each of which has been widely publicized. As with all auctions, the purpose of the Ocean Tomo auctions has been to facilitate the expeditious and fair transfer of patent rights. The frequent and regular collection of interested buyers and sellers is expected to convey speed, and the sheer magnitude of parties bidding, with ultimate prices tending toward "true value," is expected to result in fairness.
    PDF, 216.70 KB
  • Intellectual Property Acquisitions: Unprecedented Opportunities
  • Brian Sagi
    The crisis in global financial markets created unprecedented opportunities for buyers of intellectual property. Sophisticated buyers are taking advantage of these opportunities to bolster their intellectual property portfolios, as well as to add new products and technologies to their companies. This article discusses the origin of these opportunities, and shows why conditions giving rise to them are forecasted to persist. To assist readers in understanding the unique market for intellectual property and technology, we offer an analysis of the different processes companies employ in selling these assets, and a discussion of critical success factors for buyers.
    PDF, 112.33 KB
  • Tell Me Again–Why Should I Spend Money On Filing Patents?
  • Mike Lloyd
    Academic studies of the median value of registered patents have shown very broad variations, ranging from U.S.$5,000 to A$800,000 (U.S.$720,0001), depending on how these values are determined. A possible reason for this broad range in median values is that the value of patents to their owners of patents can comprise a number of intangible benefits that may affect the perceived value of these patents. These benefits include the ability to broadcast a presence in the market place, to confuse a commercial market place with excessively broad or 'ambit' claims, to enable arrangements between competitors, tax optimisation and insolvency protection, and even the synergistic effects of a portfolio of rights. Some of these benefits may last longer than the life of the underlying IP right. IP specialists need to consider the full range of possible benefits and their context when advising clients on patent protection
    PDF, 105.71 KB
  • Do We See The Emergence Of “Patent Left”?
  • Guillaume Ménage and Yann Dietrich
    Mark Chandler,1 General Counsel of Cisco, indicated in his recent testimony to the United States Congress that "a recent survey of leading technology companies shows that since 2004, licensing requests have increased approximately 650 percent." He added further that "prior to 1990 there had only been one patent damages award in history larger than $100 million: in the past seven years, there have been at least fifteen judgments and settlements in that category, and at least five that topped $500 million."
    PDF, 113.55 KB
  • How Much Should You Invest In Patents?
  • Kelce Wilson and Claudia Tapia Garcia
    Setting a budget for intellectual property (IP) protection, including patent prosecution, enforcement and acquisition, can be a complex task, full of uncertainty and often subject to random criteria. Should you spend more, spend less, or keep things constant? How much confidence do you have in your decision process? Only a few organizations have a system for objectively evaluating whether they are allocating the right amount of funding. Unfortunately, most seem to be at risk for spending either too much or too little on IP protection.
    PDF, 334.11 KB
  • Dior vs. Copad: When Does The Breach Of The License Agreement Also Constitute A Trademark Infringement?
  • María González-Gordon and Mónica Esteve Sanz
    While in previous years luxury-brand owners were convinced that their products should be accessible for everyone, the new economic situation has changed that tendency. Luxury brands are putting their best efforts into the retail experience, offering superior “packaging” of their services and products.
    PDF, 116.18 KB
  • Valuation Of Software Based Trade Secrets Part 5: TSV (ICS)
  • Dwight Olson
    Wikipedia defines computer software as "anything but hardware, meaning that the "hard" are the parts that are tangible while the "soft" parts are the intangible objects inside the computer. Software encompasses an extremely wide array of products and technologies… Software is [also] involved in video games and the logic systems of modern consumer devices such as automobiles, televisions, and toasters."1 With such diversity how can one ever begin to understand software value? Thus, Total Software Values (TSV)2 came into existence.
    PDF, 106.97 KB
  • Recent U.S. Decisions And Developments Affecting Licensing
  • Brian Brunsvold and John C. Paul
    In order to assert patent infringement claims, a plaintiff must have standing to sue entitling it to have the court decide the merits of the dispute. In a patent infringement case, all co-owners normally must join as plaintiffs to establish standing and have a district court to reach the merits. If a plaintiff has received an assignment from each and every inventor who is the co-owner, then the plaintiff is the sole-owner and can file suit without joining the inventors as co-plaintiffs. In Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832 (Fed. Cir. 2009), the U.S. Court of Appeals for the Federal Circuit held Stanford did not have standing to sue Roche because Stanford did not have an assignment from one of the inventors, who was not joined as a plaintiff.
    PDF, 87.64 KB
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