les Nouvelles - December 2020

Join LESI in its les Nouvelles LIVE online event to hear the “making-of” stories from the authors of articles included in the December 2020 edition.  Articles address timely issues important to your practice.

Watch the short session highlighting what you’ll find in this month’s edition!

  • les Nouvelles - December 2020 - Full Issue
  • PDF, 9.45 MB
  • Apportioning Value In Patent Portfolio License And Sale Agreements
  • Robert L. Vigil and Xiao Zhang
    In patent infringement cases, there is often a need to rely upon patent license agreements and patent sale agreements to determine the royalty that the alleged infringer should pay for using the patent-in-suit. When the payment in the license or sale agreement reflects compensation for more than the patent-in-suit, it may be necessary to apportion the royalty or price to account for the value attributed to the other patents in the portfolio. In order to account for the well-known disproportionality of patent values, we propose the use of information from various patent value distribution studies to aid in this apportionment. This paper summarizes the literature related to patent value distributions and provides a framework for how these distributions may be used in patent litigation to apportion patent value from license or sale agreements.
    PDF, 610.02 KB
  • Pitfalls And The Opportunities Of Commercializing And Managing Co-Created Intellectual Property
  • Madelein M. Kleyn
    Intellectual property rights bestow certain rights upon the creator thereof. In particular the right of ownership. In compliance with the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), minimum standards are set which allow members to provide more extensive protection of intellectual property if they so wish. Members are free to determine the appropriate method of implementing the provisions of TRIPS within their own legal system and practice.
    PDF, 92.02 KB
  • Intangible Asset Valuation: A Comprehensive Framework
  • Glenn Perdue
    Intangible assets—which include intellectual property (IP)—may involve marketing, customers, artistic works, contracts and technology that provide various economic benefits.
    PDF, 244.83 KB
  • Germany: Constitutional Court Requires Equal Arms In Preliminary Injunction Matters
  • Rudolf Böckenholt
    The parties' right to be heard in court is a central aspect of due process. It has been decades of routine practice that the defendant in preliminary injunction proceedings has been heard only in the oral hearing upon objection, i.e., after the preliminary injunction had already issued—and was to be observed. The German Constitutional Court already put paid to specific parts of this practice in 2018 and just recently reaffirmed and extended its wake-up call to the court practice in June and July 2020. The defendant has to be heard before a decision is made, and specifically about what is subject matter and line of argument in court. Both parties must be involved in the proceedings on an equal footing. Secret proceedings are not acceptable.
    PDF, 67.55 KB
  • Intellectual Property Valuation Within A Bankruptcy Context - Part Two
  • Robert F. Reilly
    Licensing executives and related professionals (hereinafter "analysts") are often called on to conduct intellectual property valuation analyses (or damages analyses or transfer price analyses) within a bankruptcy context. Part One of this three-part discussion examined the elements (or components) of the bankruptcy valuation assignment. This Part Two of the discussion describes—and illustrates—the generally accepted intellectual property valuation approaches. This discussion presents an illustrative example of the application of each of the three intellectual property valuation approaches—the cost approach, the market approach, and the income approach. Part Three of this discussion concludes with an explanation of the valuation synthesis and conclusion process. That discussion also presents guidance on the development of the intellectual property expert report for purposes of the bankruptcy controversy proceeding.
    PDF, 313.65 KB
  • Recent Trends In Oncology Alliances
  • Mark G. Edwards
    Innovative approaches to the diagnosis, treatment and prevention of cancer have been the cornerstone of biopharma alliances for decades. While efforts to combat the COVID-19 pandemic have eclipsed all other activity in recent months, there has been sustained interest by investors and partners in novel targets, technologies and compounds in this therapeutic area. For example, at the time this article was written, three oncology companies had recently completed IPOs (Forma Therapeutics, Fusion Pharmaceuticals & Repare Therapeutics) and several more IPO-hopefuls are currently in registration (Greenwich, Poseida, Nkarta, Relay and iTeos).
    PDF, 114.67 KB
  • Accelerating Economic Inversion In The Post COVID-19 Economy
  • James E. Malackowski and Yuliana Sameroynina
    For more than a decade, Ocean Tomo has published studies documenting the growth of intangible asset value as the major component of S&P 500 market capitalization. A quarter century of data establish that the United States has transitioned from a tangible-to-an-intangible economy—a literal economic inversion or innovation revolution no less significant than the industrial revolution more than a century before. We now conclude that the economic and social shocks of COVID-19 will further accelerate this trend globally.
    PDF, 89.70 KB
  • On The Obligation To License Standard Essential Patents In The Supply And Exploitation Chain: Selection Right Of The SEP Holder vs. FRAND Everyone’s Right
  • Axel Verhauwen and Joachim Gerstein
    With a landmark amicus curiae letter, the Bundeskartellamt has intervened in pending proceedings on the question of licensing essential standard patents (SEP) in the supply chain.1 The issue at stake is whether an SEP holder who has committed itself to a standardization organization to grant licenses on FRAND terms to any third party willing to license is abusing its dominant position in the sense of Art. 102 TFEU and Sections 18, 19 GWB if it refuses to license buyers (automotive suppliers) other than the level it has exclusively selected (car manufacturers) in the production chain and files infringement actions against the companies it has selected from another level of the same production chain (car manufacturers).
    PDF, 130.42 KB
  • Negotiating “What If”: Opt-In And Opt-Out Provisions In Biopharma Alliances
  • Mark Edwards
    The life cycle of successful biopharma alliances is long and complicated. Consider Remicade, the chimeric monoclonal antibody to TNF alpha, which has earned $100 billion over the past two decades. Remicade (infliximab) was developed by Centocor, with first human trials in sepsis in 1991. Sepsis trials were terminated in 1995, but Centocor found efficacy in Crohn's disease and an Ex-US & Far East partner in Schering-Plough in 1998. Over the next decade, Remicade was successfully developed for five additional indications, including rheumatoid arthritis, ankylosing spondylitis, psoriatic arthritis, ulcerative colitis and plaque psoriasis.
    PDF, 342.53 KB
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