les Nouvelles - September 2018

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

  • les Nouvelles - September 2018 - Full Issue
  • PDF, 4.14 MB
  • Recent Experiences In Policy Implementation Of Socially Responsible Licensing In Select Universities Across Europe And North America: Identifying Key Provisions To Promote Global Access To Health Technologies
  • Thi-Yen Nguyen, Mohammad Shahzad and Juliana Veras
    Intellectual property (IP) management at universities and public research institutions (PRIs) has the potential to enable or restrict access to university-derived health technologies in all countries, but most notably low-resource settings. Given their fundamental role in research, as well as their responsibility to prioritize public interests in research and innovation, several leading universities across the United States, Canada and Europe have adopted socially responsible licensing (SRL) policies for the industrial development of their biomedical research.
    PDF, 137.03 KB
  • Designing A Standard Essential Patent (SEP) Program
  • Kelce S. Wilson
    Standard Essential Patents (SEPs) are unique form of intellectual property rights (IPR), due to various considerations that can notably impact their value and usage options. Some of these considerations include: 1. Potentially simplified infringement case, when litigated [1,2]; 2. Easily-detectable potential infringement, to facilitate drafting claim charts prior to litigation discovery; 3. Readily-identifiable potential infringers, to facilitate identifying targets for an enforcement program; 4. Possibly global licensee pool, to financially incentivize multi-national prosecution; 5. Potentially limited enforcement options, such as a potential unavailability of an injunction [3]; 6. Potentially limited royalty rates, due to (fair) reasonable and non-discriminatory ((F)RAND) limitations [4,5]; and 7. Affirmative commitments to license SEPs on FRAND terms in some standards setting organizations (SSOs). 8. Disclosure obligations of related patents and applications in some SSOs. Some helpful, excellent articles explain advantages for organizations in certain industries pursuing SEPs as part of a patent portfolio [6,7]. Described herein are some issues to consider when designing a SEP program for patent portfolio growth.
    PDF, 84.23 KB
  • Confidentiality In FRAND Licensing After Huawei v ZTE: National Courts in Europe Searching For Balance
  • Dr. Spyros Makris, LL.M. and Dr. Claudia Tapia, LL.M.
    In a landmark decision in the matter Huawei v ZTE, the Court of Justice of the European Union (CJEU) established a well-balanced framework for the licensing of Standard Essential Patents (SEPs) on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. Following this judgement, national courts in Europe have been providing further guidance on several key questions related to the ruling, as illustrated in summary infographic starting on page 215. A significant portion of this case law has been developed in Germany. In their effort to interpret the Huawei v ZTE FRAND framework, German courts have repeatedly addressed an issue with significant practical relevance for the licensing of SEPs, which the CJEU did not expressly raise in its decision: The protection of confidentiality in the context of FRAND licensing negotiations and FRAND related litigation. The present paper examines whether the efforts of the German jurisprudence have produced viable solutions in this respect so far.
    PDF, 232.47 KB
  • Integrating Open Source Into De Jure Standardization: Beyond A Call For The Appropriate License
  • Carlos Muñoz Ferrandis, LL.M and Dr. Claudia Tapia, LL.M
    For many years the unprecedented innovation in the telecommunications technology has been possible thanks to the work done in standard development organizations (SDOs). Such success is mainly owed to the fact that SDOs have managed to attract many participants from different business models and to offer open access to interoperable high-performance technology in exchange for a fair return on investment. Looking forward, to achieve a well-functioning Internet of Things, where billions of devices from diverse industry sectors will be connected, some have advocated incorporating the perceived cheap, quick and efficient Open Source Software development into de jure standardization. This paper will analyze the potential synergies between Open Source and traditional open standards developed in SDOs and propose solutions to harmonize the different IPR Policies to attract as many stakeholders as possible.
    PDF, 218.17 KB
  • Get Your Hands Off My Patent: Adjudication Of Foreign Patents Under A Licence Agreement In The UK Court
  • Richard Binns, Nicholas Fox and James Agnew
    For various reasons, businesses and rights holders like to bring patent-related proceedings to the UK court. In addition to the normal situation of litigating UK patents, increasingly the UK court is willing to rule on infringement of foreign patents in the context of contractual disputes, given parties to licence agreements often agree via exclusive jurisdiction clauses to litigate in the UK court on infringement of a patent portfolio which includes both UK and foreign patents.
    PDF, 73.70 KB
  • Anchors Away! An Appeal For Reference Rates When Calculating Prejudgment Interest
  • Nisha Mody and Evan Schulz
    Under the Entire Market Value rule, judges prohibit attorneys and damages experts from introducing large, irrelevant numbers into IP litigation, because such numbers can anchor juries toward affording plaintiffs relatively larger awards. We suggest a similar anchoring problem emerges where attorneys introduce antiquated statutory rates when arguing for pre-judgment interest. We suggest judges should make recourse to a set of publicly available reference rates, grounded in economic and financial reality, when affording parties pre-judgment interest.
    PDF, 251.46 KB
  • Intellectual Property Valuations For License And Other Transfer Purposes Part 2
  • Robert F. Reilly and Casey D. Karlsen
    This discussion is part two of a two-part series of discussions. Part one described the licensing analyst (analyst) use of the market approach to value intellectual property for license, sale, financing, and other purposes. In particular, part one of this discussion described the analyst's use of intellectual property license agreement databases to extract market-derived royalty rate data for use in the relief from royalty (RFR) valuation method. This final installment of this discussion illustrates the analyst's use of the license agreement databases to select royalty rate data. And, this discussion illustrates the use of that data in an intellectual property valuation.
    PDF, 87.12 KB
  • The Availability Of Post-Sale Contractual Restrictions In The Wake Of Impression Products, Inc. v. Lexmark, 581 U.S. 1523 (2017)
  • Timothy T. Scott
    In Impression Products, Inc. v. Lexmark International Inc., 581 U.S. ___, 137 S. Ct. 1523 (2017), the United States Supreme Court reaffirmed the patent exhaustion rule; i.e., patent rights are exhausted upon the first sale of the patented item such that the patentee has no rights to impose any post-sale conditions or limitations on the use of the product, at least under the patent laws. Id. at 1529. In doing so, the Court left open the question of whether such conditions or limitations could be imposed as a matter of contract law. Thus, the "restrictions in Lexmark's contracts with its customers may have been clear and enforceable under contract law, but they do not entitle Lexmark to retain patent rights in an item that it has elected to sell." Id. at 1531 (emphasis added). In summarizing its decision in Quanta Computer, Inc. v. LG Electronics, Inc., 533 U.S. 617 (2008) ruling that the sale of computer components exhausted the plaintiffs patent rights in those components, the Court noted that it reached that conclusion "without so much as mentioning the lawfulness of the contract." Lexmark, 137 S. Ct. at 1533. And it later summarized its holding by stating that "whatever rights Lexmark retained are a matter of the contracts with its purchasers, not the patent law." Id. (emphasis added).
    PDF, 159.83 KB
  • Trademarks, Brands And Goodwill: Overlapping Sources of Economic Value
  • Glenn Perdue
    Businesses develop and acquire assets that are used to generate revenues and profits. These assets may be financial, tangible or intangible in nature. Collectively, these assets—and their profit generating potential—form the basis of business value. Financial assets such as cash and receivables are distinct and easy to understand. So too are tangible assets such as real estate and equipment. In contrast, intangible assets may not be identified on financial statements and often deal with more elusive concepts such as legal rights, proprietary technology and relationships.There is great consensus in the worlds of marketing, economics and accounting that intangible assets associated with trademarks, brands and goodwill create value­—value that arises from market awareness, relationships with customers and a good reputation. This article explores these sources of value.
    PDF, 97.68 KB
  • Fostering Innovation By Way Of Protecting Inventions The Inventive Loop
  • Roberto Dini
    Market globalization has transformed the business models of many players. The success of low-cost producers is forcing established businesses to rethink their strategies, leading to the conclusion that a company's real value lies with their existing and future intellectual property assets. Patents, trademarks, copyright and other IP rights have indeed become the key driver of corporate growth and must be protected and maximized in value to foster new innovation.
    PDF, 99.46 KB
  • What’s Mine Is Yours: A Brief Introduction To Open Access In The European Union
  • Patricia Cappuyns and Jozefien Vanherpe
    Over 300 years ago, Sir Isaac Newton astutely observed that if he had seen further than most, it was "by standing on the shoulders of giants." In one way or another, all scientific research builds on former work. Certainly on a scientific level therefore, sharing is caring. In the digital age, disseminating and exchanging content online has become child's play. In practice however, freely sharing academic papers is not as easy as one might think, as publication in a scientific journal more often than not entails a transfer of the copyright. As a result, the publisher obtains the right to exclude… and the scholar loses the right to share. Still, this is not the end of the story, at least not for the "open access" movement. Open access aims to provide users with free online access to scientific information and thereby facilitate further research. In this Scoop, we discuss the rise of open access and the relevant state of play in the European Union.
    PDF, 73.46 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 venue II. PTO Validity Challenges 3. Using a forum selection clause to prevent a patent licensee from challenging patent validity at the U.S. Patent Office III. 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, 96.71 KB
les Nouvelles