les Nouvelles - March 2014

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  • les Nouvelles - March 2014 - Full Issue
  • PDF, 3.17 MB
  • The Nash Bargaining Solution
  • Doug Kidder and Vince O’Brien
    In patent litigation, the ruling against the 25% Rule has led some plaintiff's experts to search for a methodology to replace it. Some of these experts are putting forward claims based on a 50/50 split of profits by claiming that it is the result of the Nash Bargaining Solution. This is not only a misreading of Nash's work; the economic community has not accepted that Nash Bargaining is a good predictor of outcomes in the real world. The 50/50 split posited by Nash requires a set of assumptions that are not true in actual negotiations. One valuable insight in Nash Bargaining is that the parties are negotiating over a surplus that is equal to the benefits achievable from cooperating minus the sum of the payoffs each side is able to get without cooperating.
    PDF, 108.62 KB
  • Survey Results Confirm Growing Trend In Favor Of ADR
  • Judith Schallnau, comments by Russell Levine
    To gain a better understanding of technology-related dispute resolution strategies and practices, the WIPO Arbitration and Mediation Center (WIPO Center) recently conducted the international WIPO International Survey on Dispute Resolution in Technology Transactions (Survey) to obtain statistical information on the current use of alternative dispute resolution (ADR) mechanisms, such as mediation and arbitration, as compared to court litigation when it comes to resolving such disputes.
    PDF, 167.10 KB
  • Patent Technology Landscapes For Assessing Intellectual Property In Academic Environments
  • Joe Wyse, Ken Zinda, Greg Gerhardt, Peter Huettl, Bob Gregory and Eric A. Grulke
    The patent technology landscape is an analytical tool widely used in industry to assess the value of and guide the development of intellectual property (IP) into commercial products and processes. Although academia increasingly faces the similar need to assess commercial potential of university-created IP, the tool has not been used in university settings because it requires third party data inputs and experienced analysts who are more typically used by industry.
    PDF, 294.04 KB
  • Venture Capital 101: Financing Mentality, Jargon, Term Sheets, And Documents
  • Louis P. Berneman and Christopher F. Wright
    With the heightened attention of senior academic administrators to promoting economic development and fostering innovation ecosystems, academic technology transfer organizations are increasingly focusing their commercialization activities on identifying, qualifying, incubating, accelerating, and financing start-up ventures. This top down pressure is aligned with bottom up pressure from faculty researchers who, albeit for different reasons, are likewise increasingly interested in the impact of their discoveries and seeking to commercialize them through start-ups.
    PDF, 133.68 KB
  • The Exhaustion Theory Is Not Yet Exhausted Part 3
  • Erik Verbraeken
    2013 has been rich in the issuance of various court decisions, from the Supreme Court to the District Courts, that provide further guidance on the application of the intellectual property exhaustion doctrine (a.k.a. the "first sale" doctrine) to sales of products made by unauthorized third parties.Without giving an exhaustive overview of all judicial cases that may have been tried in 2013, this article will focus on the following six decisions: (1) Kirtsaeng vs. John Wiley Inc. (Supreme Court March 19, 2013), (2) Bowman vs. Monsanto (Supreme Court May 13, 2013), (3) Capitol Records vs. Redigi (NY District Court March 30, 2013, (4) Keurig vs. Sturm Foods (Federal Circuit October 17, 2013), (5) Lifescan Scotland vs. Shasta Technologies (Federal Circuit November 4, 2013), and (6) Tessera vs. ITC (Federal Circuit May 23, 2011). In addition, this article will comment these decisions from a EU perspective, where in some instances similar, but in other cases radically different decisions have been given.
    PDF, 98.51 KB
  • Maximizing The Value Of License Agreements
  • Louis P. Berneman, Todd C. Davis, D. Patrick O’Reilley and Matthew Raymond
    Biopharmaceutical companies and not-for-profit (academic) research institutions have become increasingly adept at structuring license and related collaboration agreements. In recent years, there has been a gradual increase in research collaborations, co-promotion and marketing agreements and royalty monetizations.
    PDF, 120.68 KB
  • What’s Happening With Semiconductor IP Deals?
  • David R. Jarczyk
    For the purpose of this study, licensing and patenting information in the semiconductor industry was studied with the goal of identifying key trends within the industry. The study analyzed executed licensing deals as well as published patent information. Specific attention was paid to the types of IP licensed, royalty/payment structures, exclusivity, territory, and sublicensing, as well as the purchase/sale of patents.
    PDF, 66.08 KB
  • Valuation Discussion Factors In Early Stage Software
  • Dwight Olson
    This article will review factors that help contribute in early stage software valuation discussions. For example, pre-investment money discussions and pre-money scenarios typically center on investors prior investment deals. For example, what equity did they get for what investment. This, in some way, establishes the value of the early stage software and company, but what factors might change this scenario for our future? History has shown that value of early stage software increases as market, technological and financial feasibility factors valorize.1 As LES members, we know that intellectual property and freedom to operate factors also contribute. Monetary forecasting (probability) really begins to take shape when management has obtained the resources or investments to produce and sales of the software product begins. Some of these factors have become so established that the U.S. Federal Accounting Standards Board (FASB) adopted them. These are not monetary or earnings factors, they are factors that reveal the inherent value of early stage technology; here our focus is early stage software.
    PDF, 88.71 KB
  • Biomedical Patent Securitization In Taiwan
  • Mei-Hsin Wang
    Patent securitization is a form of intellectual property-based assets securitization which started in United States in the 1970s. The earliest cases of intellectual property securitization involved copyrights in the musical and digital-rights fields by entertainers, such as David Bowie, James Brown, Ashford & Simpson, the Isely Brothers, and Iron Maiden. Other examples include the Italian film maker- Cecchi Gori (securitization of future movie income in 1999), fashion designer Bill Blass (trademark securitization) and Formula 1 (securitization of trade mark, copyright and royalties).
    PDF, 199.04 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
  • John Paul and Brian Kacedon
    The exhaustion doctrine in patent law precludes a patent owner from asserting patent rights to control the use of an apparatus after an authorized sale. In Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a patent owner's rights to a patented method are exhausted when the patent owner sells an apparatus with a normal and intended use of practicing the method. The Federal Circuit also stated that exhaustion is determined on a patent-by-patent basis, not a claim-by-claim basis. This latter portion of the Keurig decision is significant for patent owners because it could have additional ramifications for those whose patents cover both method and apparatus claims.
    PDF, 105.57 KB
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