les Nouvelles - March 2022

Join LESI in its les Nouvelles LIVE online event to hear the “making-of” stories from the authors of articles included in the March 2022 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 - March 2022- Full Issue
  • PDF, 6.31 MB
  • The Cost Approach To Intellectual Property Analysis—Practical Applications—Part 2
  • Robert F. Reilly
    Licensing executives often work with economists, forensic accountants, industry consultants, valuation analysts, damages analysts, and other third-party specialists (collectively referred to herein as “analysts”) to develop valuation, damages, or transfer price analyses related to an owner/operator’s intellectual property. For purposes of this discussion, intellectual property includes patents, copyrights, trademarks, and trade secrets. In such analyses, most analysts (and licensing executives) are experienced with the application of income approach and/or market approach methodologies. Many analysts (and licensing executives) are less experienced with the application of cost approach methodologies.
    PDF, 158.35 KB
  • The Goldilocks And Three Bears Dilemma: Adopting Reasonable Measures To Protect Trade Secrets In The New Work Environment
  • Steven R. Kursh and Pratike Patel
    The COVID-19 outbreak accelerated the growth of work from home at many enterprises. An important factor enabling collaborative work from home was the use of video conferencing, shared development project work tools, and other technology-driven resources for virtual enterprises. Given that many employees are choosing to remain working remotely from the office on at least a part-time basis, software companies need to reassess and update their policies and practices regarding the protection of intellectual property, particularly trade secrets. The phrase commonly used in the law regarding trade secrets is “reasonable measures.” While certainly under the umbrella of security practices to protect against hacking and malware, reasonable measures to protect trade secrets often involve different, albeit related objectives. There are numerous best practices and policies that warrant review and potentially adoption, but managers face the dilemma of choosing which policies and practices to adopt since such policies and practices can be costly and create unnecessary constraints for employees, customers, and other stakeholders. Obviously, no one wants their organization to devote the time, money, and other resources to working with legal counsel to litigate misappropriation of trade secrets. Prevention is the preferred alternative. Managers, however, need to decide, “how much is enough” regarding reasonable measures what we label the Goldilocks Dilemma. This paper provides a review of reasonable measures that can be considered and used by software companies when assessing and adopting measures to protect their intellectual property, particularly trade secrets.
    PDF, 134.01 KB
  • Relief From Royalty Method Of Intellectual Property Valuations
  • Robert F. Reilly
    Owner/operators often need to know the value of their intellectual property for transaction (sale or license), financing (sale/licenseback or collateralization), taxation (income or other), accounting (acquisition accounting or impairment testing), litigation (infringement or breach of contract), and many other purposes. To develop these valuations, the intellectual property owner/operators often retain or consult with valuation specialists—including licensing executives, forensic accountants, economists, industry consultants, valuation analysts, and other (collectively referred to herein as “specialists”).
    PDF, 241.16 KB
  • Patent Landscaping Studies And Essentiality Checks: Rigorous (And Less Rigorous) Approaches
  • Haris Tsilikas
    Determining which patents are essential to a particular standard (standard essential patents or SEPs) had long been an issue preoccupying almost exclusively technical experts directly involved in essentiality assessments. Recently, however, the topic of essentiality assessment has attracted the attention of policymakers, courts, and the press. This is unsurprising considering the importance of standards for innovation, competition, consumer welfare, and commercial success and competitiveness. In particular, parties involved in essential patent licensing either are keenly interested in how many patents are essential to a specific standard and what is the share of essential intellectual property rights (IPR) owned by each patent owner.
    PDF, 167.42 KB
  • Patent Pools: A Practical Perspective—Part II
  • Julia Brito and Hector Axel Contreras Alvarez
    Patent pools, i.e., the practice of one or more patent owners to come together to license their patents as a bundle, have played a relevant role in the Standard Essential Patents (“SEPs”) licensing scenario for many years now. Part I of this article2 exposes how the pools’ pro-competitive effects typically outweigh the antitrust concerns, such as the risk of price-fixing or unlawful tying agreements.3 Indeed, patent pools are very flexible in the formation phase and usually facilitate the SEP licensing process by offering higher transparency, more efficiency and a reduction of transaction costs. This allows participants to address certain challenges, such as in the Internet of Things (IoT), where increasingly new stakeholders incorporate standardized technologies in their products or services but lack experience in SEP licensing. One example, Avanci for the automotive and smart meters manufacturers, is analyzed in detail.
    PDF, 155.00 KB
  • Technology Transfer As A Key Factor In The Future Of Humanity
  • Mariana González Vargas and Karla Roxana Aispuro Castro
    It has been about two years since a novel coronavirus emerged in China. Since then, the disease known as COVID-19 has produced 308 million confirmed cases, including 5,492,595 deaths in the world as it was reported from the World Health Organization (WHO) on 11th January 2022.1 This pandemic was a global disruptor like no other seen in the last century, forcing radical changes in the way people live and work. During the first year of the pandemic there was no vaccine to protect against COVID-19, therefore control efforts worldwide were limited to isolation, quarantine, good personal hygiene, use of disinfectants, and limitations of public gatherings.
    PDF, 88.99 KB
  • The Phenomenon Of Anti-Suit Injunctions And Extraterritorial Implications
  • Valentina Piola
    Whilst the patent licensing market has become increasingly global, patents are still governed by national or regional laws. Accordingly, one of the major debates currently characterizing Standard Essential Patent (SEP) litigation is its ever-increasing extraterritorial implications.
    PDF, 70.50 KB
  • Co-Ownership And Cross-Border Assignment— Rather Safe Than Sorry!
  • Madelein Kleyn and Alan Lewis
    Intellectual property rights bestow certain rights upon the creator thereof. In particular, the right of ownership.
    PDF, 94.09 KB
  • Your Free Time Is Worth $200 Billion: A Look Into The Licensing Infrastructure Of Casual And Competitive Gaming
  • Paul Ashcraft
    MasterCard has joined with the North American League of Legends Championship Series (LCS) in a global, exclusive partnership.1 Perennial European championship-contender Team Fanatic partners with Gucci in a collaboration for a $1600 luxury diver’s watch.2 Even legendary comic book and media magnate Marvel Corporation has gotten in on the action with a partnership with Team Liquid for team jerseys inspired by the hit film The Avengers.
    PDF, 60.70 KB
les Nouvelles