les Nouvelles -March 2019

Previous issues are available on the links on the left.  This is a member only benefit, please login to access the articles.

  • les Nouvelles - March 2019 - Full Issue
  • PDF, 4.58 MB
  • Blockchain And Intellectual Property
  • Trevor Krajewski and Rich Lettiere
    Undeniably one of the most anticipated and potentially revolutionary technologies since the invention of the internet, blockchain promises to usher in a new era of how we do business and handle information. Although a cryptographically secured chain of digital files was described in work* dated as early as 1991, the invention of blockchain in its current, most popular form, as a distributed ledger for transactions on a network, is credited to the pseudonymous Satoshi Nakamoto, the inventor(s) of Bitcoin, in 2008. Cryptography has been around for centuries, but the cryptocurrency & blockchain community as a whole largely considers Satoshi Nakamoto’s Bitcoin as the first blockchain. Although initially intended as the supporting technology behind a digital form of money, blockchain is beginning to show it’s potential to expand to numerous applications with real world use-cases in preexisting industries.
    PDF, 118.84 KB
  • Key Financial Building Blocks Of Licensing Agreements To Maximize Revenue And Protect Intellectual Properties
  • Lewis Stark
    In the retail marketplace, the cachet of licensed brand merchandise has consistently buoyed consumer sales. In fact, a survey by the International Licensing Industry Merchandisers’ Association (LIMA) showed that global sales of licensed goods rose 4.4 percent from 2015 to 2016, significantly higher than the 2.9 percent growth rate for overall global retail sales.However, a more pertinent issue to brand owners and licensors is royalty revenue, which showed a year-over-year increase of just 1.3 percent. In its survey, LIMA noted that actual year-over-over royalty rates declined slightly (from 8.5 to 8.2 percent),2 largely because the continued growth of online shopping among consumers is forcing retailers to be more aggressive about preserving gross margins. More specifically, it’s wise to understand that when royalty revenue rises at a time when average royalty rates are falling, that trend almost always indicates strong demand for licensed brand merchandise.
    PDF, 97.02 KB
  • China Specialized IP Courts: Substance Or Theater? Part I
  • Jieru Jiang
    Since 2008, the Chinese government has undergone great efforts to enhance its nationwide IPR protection system. A significant milestone in this undertaking is the establishment of three Specialized IP Courts, the Beijing Specialized IP Court (BIPC), the Shanghai Specialized IP Court (SIPC) and the Guangzhou Specialized IP Court (GIPC). On August 31, 2014, the SCNPC issued the Decision of the Standing Committee of the National People’s Congress on Establishing Intellectual Property Right Courts in Beijing, Shanghai and Guangzhou (“Decision”).1 This Decision officially announced the establishment of Specialized IP Courts under the Constitution and the Organic Law of the People’s Courts of the People’s Republic of China. The BIPC was established on November 6, 2014, followed by GIPC, which was established on December 16, 2014, and the SIPC was established on December 28, 2014. There are several reasons for these three venues. First, these three regions received the largest volume of IP disputes. In 2017, the IP cases received by the courts in Beijing, Shanghai, Guangdong Province, Jiangsu Province and Zhejiang Province constituted 70.65 percent of the total IP cases filed in the PRC courts.2 Second, these three regions are the most developed regions in China and host many high-tech companies. Third, these three regions have sophisticated legal and IP communities. Finally, these three regions have considerable foreign interactions.
    PDF, 250.80 KB
  • China Specialized IP Courts: Substance Or Theater? Part II
  • Jieru Jiang
    As stated in PART I, the China Specialized IP Courts have been running for more than three years. According to the report from SPC, these newly established IP courts work well and can be the models for other traditional IP tribunals in intermediate people’s courts or the any regional IP courts established in the near future. However, the foreign government and private companies still view the judicial protection of IPR in China negatively these years.
    PDF, 231.56 KB
  • The Four Classes Of Patent Licensing
  • Kelce S. Wilson
    Not all patent licensing programs are the same; their impacts on innovation and technology progress can vary widely. This essay introduces four representative (and hopefully iconic) classes: (1) Tech Transfer licensing, (2) Industry Practice licensing,; (3) Independent Invention licensing, and (4) Landmine licensing. The idyllic representation of the patent system, in which patents are directly responsible for the innovative technology progress in the public marketplace, typically fits within the Tech Transfer licensing model, whereas the widely-scorned abuse of the legal system by some patent assertion entities (PAEs) often qualifies as Landmine licensing. PAEs are defined by the U.S. Federal Trade Commission (FTC) as firms whose business model primarily focuses on purchasing and asserting patents. See [1] for comments by the FTC regarding abuses of the patent system by some PAEs.
    PDF, 96.45 KB
  • Patent Obscura: The Use Of Obscure Patent Doctrine In Biomedical Science Cases
  • Charles Salahuddin
    The vast majority of patent law doctrine has been established through judicial interpretation and establishment of precedents that serve to guide the decisions of future courts. Despite the fact that many of these doctrines have fallen out of consistent use by courts, obscure patent doctrine can yield tremendous benefits to attorneys with the foresight to assert them. Patent law and the biotechnology, biomedical engineering, and pharmaceutical sectors in particular represent fertile grounds for utilizing rare doctrines because these disciplines are continuously evolving and require new legal constructs to accommodate such rapid change. This paper analyzes four obscure patent doctrines; obviousness-type double patenting (OTDP), the Kessler doctrine, the printed matter doctrine, and the ensnaring the prior art defense; and discusses the impact that these doctrines have had in specific court cases involving biomedical sciences. The paper also advocates for use of obscure patent doctrine by attorneys and describes why such an approach is appealing.
    PDF, 118.62 KB
  • Immuno-Oncology Alliances Command Big Deal Premiums
  • Mark G. Edwards
    Everyone knows that immune-oncology (“IO”) is the hottest ticket in biopharma alliances. With almost 100 announced deals involving PD-1, and more than half as many with PD-L1, it seems that everyone is jumping onto the IO dancefloor. However, as with all things alliance-related, the devil is in the details. What IO molecular target(s) should one bring to the dance? CD20, HER1 or HER2, TNF-alpha, CTLA4… and the list goes on. And when is the optimal time to seek & strike a deal: preclinical data, Phase I safety data, Phase II clinical proof of concept, or Phase III pivotal trials as a monotherapy? In other words, with such a crowded dancefloor, when is the best time to join the IO dance?
    PDF, 346.69 KB
  • Efforts Integrating Blockchain With Intellectual Property
  • Trevor Krajewski and Rich Lettiere
    Intellectual property-centric businesses have been increasing their involvement with blockchain companies and technologies in recent years. The incorporation of this technology into numerous industries could lead to exceptional opportunities for valuation, litigation, and licensing of new patents and intellectual property. Perhaps the most interesting application of blockchain technology for IP professionals, though, will be within the IP space itself. Numerous organizations and efforts supporting the development and integration of blockchain in the IP world are emerging. This article intends to describe the limited number of organizations that are active, or are publicly promoting plans to become active, in this space as well as what they plan to accomplish.
    PDF, 84.97 KB
  • Does Asymmetry Cause Anti-Competitive Practices?
  • William Bird and Ioana Stefan
    Typically the licensing of IP such as patents or trademarks is controlled by a license agreement. Although in Western Democracies there is great freedom to determine the clauses of such a contract, basic contract law and Anti-trust or Unfair Competition law may restrict the details of such a contract. There is however a concern that Anti-trust or Unfair Competition law is complex and inadequate to deal with certain business practices, particularly, relating to the negotiation and enforcement of terms of licensing contracts resulting from a gross economic imbalance between contractual partners. This can happen particularly in asymmetric partnerships/negotiations involving small and/or young firms (e.g. spin-offs, spin-outs, start-ups, SME’s), and larger organizations (e.g. multinationals). In such interorganisational interactions tensions to co-create and capture value are interlinked between players of greatly different resources and market power. And though more often the smaller, younger firms are at disadvantage in such interactions, larger incumbents are not always ones to profit. The latter situation can occur for two possible reasons: either the larger incumbents’ smaller contract partners do not reveal anything related to their IP due to fear of misappropriation, or large incumbents interact with even larger organizations that hold the upper hand in terms of bargaining power. The present paper attempts an overview of such issues with some suggestions for improvements.
    PDF, 138.03 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
  • John Paul and D. Brian Kacedon
    I. Ability to Sue and be Sued for Patent Infringement 1. Avoiding suit in a venue where you are only doing clinical testing 2. Avoiding suit in a venue despite having a corporate relationship and collaboration with another company that can be sued in that venueII. PTO Validity Challenges 3. Using a forum selection clause to prevent a patent licensee from challenging patent validity at the U.S. Patent OfficeIII. Who Benefits From a License Agreement 4. Using the context of negotiations to determine the meaning of a license agreement and who may enforce the agreement IV. Enjoining Foreign Patent Enforcement 5. Using U.S. Courts to prevent owners of standard essential patents from enforcing foreign injunctions against implementers.
    PDF, 169.83 KB
les Nouvelles