les Nouvelles - September 2014

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  • les Nouvelles - September 2014 - Full Issue
  • PDF, 7.51 MB
  • Determining An Appropriate Royalty Rate For Reasonable Royalty Trademark Damages
  • David Drews
    When a plaintiff believes that its trademark has been infringed, an important element is oftentimes the determination of damages suffered by the plaintiff. At the federal level, the calculation of damages is dictated by the Lanham Act. Once liability has been proven, the Lanham Act provides for the recovery of defendant's profits, actual damages sustained by the plaintiff and the costs of the action, subject to principles of equity.
    PDF, 122.48 KB
  • Advanced Citation Analysis Can Help Identify Licensing Candidates
  • Mike Lloyd
    Citation analysis is used by many patent owners to search for potential licensing candidates, with many licensing managers reviewing forward citations for their patents to help find these candidates. In this paper we suggest some additional approaches that may also be useful. These include a statistical review of the forward citation patents, the Forward Rejection analysis available from Patent River, and the similarity and importance filters available in the AmberScope patent citation searching tool.
    PDF, 551.52 KB
  • Customs Value, Licensing And Royalties— The Russian Perspective
  • Sergey Medvedev
    Cross-border trade is a driver of the global economy and the world's better financial condition.According to the World Trade Report 2013, the rise of a world economy, the spread of investment and technology, the growth of international specialization, the ascent of new economic powers, and the dramatic surge in growth and population would not have been possible without a massive expansion of global trade over the past 200 years. Being a constantly developing BRICS region, Russia persistently fights to conquer first place by vying with its competitors and improving its commercial status.
    PDF, 118.43 KB
  • Radioisotope Pharmaceutical Licensing
  • Paul R. Betten
    This paper discusses radioisotope pharmaceutical licensing and provides background information on the manufacturing process, supply chain, and how royalties are developed, using the radioisotope Molybdenum- 99, which decays into technetium-99m, as an example. Technetium-99m is the world's leading isotope for medical imaging. Radioisotope pharmaceutical licensing involves "stacked" royalties, with royalties going to the isotope manufacturer, isotope separation, monoclonal antibody licensee, and final sale to end users at the hospital level on the supply chain, with the majority of the costs being charged by the hospital. This paper provides a literature review on licensing fees for the production of other isotopes and our experience with an otherwise rare isotope, copper-67, which holds promise as a Non-Hodgkin Lymphoma therapy. While Tc-99m is a diagnostic isotope and Cu-67 is a therapeutic, the business models for both are based on government subsidized isotope production. Currently, many isotopes are produced using research-scale nuclear reactors; however, this manufacturing method entails a large capital cost. In addition, these research reactors are aging and have maintenance issues. New approaches to radioisotope production using particle accelerators, which are less capital intensive, appear to provide a more efficient and economical method of isotope production.
    PDF, 126.66 KB
  • How Does Europe Deal With The Question Of How To Transfer Rights From The Author To The Exploiter? The European Perspective On The Work Made For Hire Doctrine
  • Julian Klagge and Christian Czychowski
    The claim that the legal framework concerning the work made for hire doctrine in U.S. copyright law needs reforming has consistently arisen in the recent past. Among others, Haviland46 argues for a fundamental revision of the current provisions with respect to works made for hire. In his article he posits in particular the legal recognition of the actual creator of the work as the "author" in a legal sense, combining this change with an automatic and exclusive assignment of the exploitation rights to the hiring party for a 56 year term.
    PDF, 129.51 KB
  • The Unitary Patent And The Unified Patent Court
  • Christoph Cordes
    In the European Union a major change in the existing patent system is underway. By the end of 2012 and in spring 2013, the so called Unitary Patent was created and 25 of the 28 Member States of the European Union have signed the Unified Patent Court Agreement (UPCA). This Agreement now needs to be ratified by at least 13 Member States. The European Commission hopes that the required number of ratifications will be reached in spring of 2015 and that the new patent system will then come into force. The Unitary Patent and the Unified Patent Court (UPC) will cause significant changes in the European patent landscape: For the first time, a uniform patent protection throughout the European Union is envisaged. The application and procurement procedure will be simplified. The enforcement will be concentrated on a few European courts. With the coming into force of the so-called Patent Package, the new Unified Patent Court will start working. The court will not only have jurisdiction over disputes arising out of Unitary Patents, but also arising out of already existing European patents. Therefore, already today applicants and owners of European patents have to consider whether to stay in the Unified Patent Court system with their European patents or to opt out.
    PDF, 126.09 KB
  • Protecting Traditional Knowledge As Cardinal Technology In The Philippines
  • Robert Nereo B. Samson and Gonzalo D.V. Go III
    Technology is an important tool for the sustainable development of society. Far from being known for robotics and high-level technologies, the Philippines has its own formidable technology to offer the world: the traditional knowledge (TK) of its indigenous peoples and communities ("Indigenous People"). TK originated from the intellectual creations of Indigenous People, and has been passed on from generations to generations. Its scope spans from agriculture, science, ecology, medicine, biodiversity, and such other fields of knowledge relevant to Indigenous People's continued existence. TK possesses global importance for its proven benefits to society in general. Blessed with 110 diverse groups of Indigenous People in its 7,107 islands, the Philippines' TK collection may be the key to economic development and the sustainability of the indigenous cultures and traditions of the Philippines, truly worth identifying, developing, and protecting. This paper explains the legal framework of TK, how the contemporary Philippine intellectual property system protects it, and the reservations of Indigenous People in availing of such protection.
    PDF, 181.24 KB
  • The Impact Of Australian Goods And Services Tax On Assignments And Licences Of Intellectual Property
  • Stephen Adrian
    As with many other countries, Australia imposes a tax on the supply of goods and services in certain situations. In some countries this will be called a goods and services tax and in others a value added tax. In Australia, the tax is to be found in the rather oddly named, "A New Tax System (Goods and Services Tax) Act 1999" (the "GST Act").
    PDF, 80.73 KB
  • EU State Aid Policy: A Model To Assess Intellectual Property Rights And Knowledge Dissemination In R&D Cooperation Part II
  • Mario Cisneros
    In Part 1 dynamic efficiency and potential distortion of competition caused by State aid and IPRs allocation in collaborative R&D projects has been discussed. It was shown how different IPR ownership schemes are connected to potentially distortive competition practices, the generation of market power, the distortion of dynamic incentives and the maintenance of inefficient market structures, all elements under assessment from the perspective of EU State aid law. In Part 2, an analysis on how State aid law should be applied to knowledge dissemination and licensing practices involved in publicly funded R&D cooperation is presented. Part 2 is structured in two sections. Firstly, the alternatives for the rules on knowledge dissemination are evaluated from the perspective of the benefits generated by knowledge spillovers, the problem of asymmetric information and coordination and network failures. Secondly, the alternative rules to define how parties regulate access rights to the resulting knowledge are weighted, focusing on potential effects to dynamic incentives and distortion of competition through the enforcement of IPRs.
    PDF, 145.37 KB
  • UniLink: A New Model For Increasing Academic And Industry Partnerships
  • Hester Tak and Bob Smailes
    Tech transfer models for university-industry licensing are essentially of three types. The classical model used by the majority of universities, the economic model and more recently, the Easy Access IP model, which is gaining popularity. The models are summarized with their advantages and disadvantages and an alternative model, UniLink, is presented which has been discussed with over 50 international companies with positive results. The views received from the international companies reflect their experiences worldwide. UniLink was developed in The Netherlands to overcome problems in the classical model. The problems described in the literature regarding the classical tech transfer offices primarily reflect the U.S. situation. However, the Dutch TTO's seem to be suffering from the same problems. The model seeks to optimize academic-industry interaction by allowing early stage insight into unpublished research results in a controlled way. Benefits include reduced transaction time and costs, lower patent costs, an expected increase in the volume of research collaboration with industry, and an expected increase in the value of research collaboration for the universities. The benefits for the companies include insight into research outputs, shorter transaction time and costs, potential ability to influence the direction of translational research programs in the institutions, use of the research for their own internal programs, free access to research tools; and the research is expected to have greater societal, commercial and economic benefit.
    PDF, 175.24 KB
  • New Age Intellectual Property: Emerging Global Benefits
  • Lawrence J. Udell
    I originally wrote this article in the year 2000, which was a hectic time, especially with the potential disruption of it being the start of a new century and how would "modern" technology survive in the dilemma of Y2K and the new millennium. Well it did and we all gained a better knowledge of the high-tech world.As I now look back at the exciting times that I have lived through over the past 83 years this article today has a significant new meaning. Since the introduction of the internet, intellectual property has not only found its special place in the world economic markets, but also is steadily establishing new values and new business opportunities. Hundreds of companies have been created over the last decade for the sole purpose of selling, licensing and transferring new technologies.
    PDF, 223.03 KB
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