les Nouvelles - March 2023

Join LESI in its les Nouvelles LIVE online event to hear the “making-of” stories from the authors of articles included in the March 2023 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 2023 - Full Issue
  • PDF, 14.03 MB
  • International Dispute Over ASI Of Standard Essential Patents (“Jin-Su-Ling”禁诉令) —Background And Implications For The Future Of Multiple ASIs In China
  • By Toshifumi Futamata and Kaname Matsumoto
    The essence of standard-essential patent (SEP) disputes boils down to how to distribute the new value created by SEPs in the newly emerging business ecosystem in various fields. To resolve this difficult issue, which oscillates between right holders and implementers, R&D incentives and market expansion, various attempts have been made by standard-setting organizations (SSOs), judicial authorities, competition authorities, arbitration bodies, and administrative bodies around the world to find a resolution mechanism. The number of lawsuits over SEPs in various countries has increased year by year, and efforts have been made to find a solution in the process.
    PDF, 782.32 KB
  • Promoting Global Access To Health Technologies: A Licensing Toolkit For Public Sector Institutions Part 2
  • By Mohammad Shahzad
    The growing shift among public-sector institutions and pharmaceutical companies towards equitable licensing of their health technologies is commonly termed Global Access Licensing 1 or Socially Responsible Licensing. This two-part article uses the term Global Access Licensing (GAL) to describe a set of licensing provisions and terms that can be utilized by public sector institutions, including funding agencies, universities, and research institutes, and included in license agreements with industry partners to ensure access and affordability of resulting health technologies in the developing world.2,3
    PDF, 742.89 KB
  • Trade Secret Economics And Value
  • By Glenn Perdue
    Like other forms of intellectual property (IP), trade secret value may arise from two primary sources. The first is proprietary competitive advantage gained through use of the IP coupled with the right to exclude others from such use. The second is by monetizing IP directly through licensing to others. While stand-alone trade secret licensing may not be as common as with other forms of IP, it does occur.1
    PDF, 775.54 KB
  • KYBC Obligations: Online Anonymity Must Stop
  • By Jesús Alonso Pérez
    During the Covid-19 pandemic, connectivity has been the engine of our lives.1 Thus, regulations such as the e-Commerce Directive (ECD) and EU Intellectual Property Laws have been at stake. Illegal activities such as piracy2 and substandard or falsified medicines3 have become profitable during the lockdowns as a result of those who would take advantage of the pandemic, thereby creating an unsafe and unreliable online environment to the detriment of the EU market and consumer society.
    PDF, 556.48 KB
  • Trade Marks And The Metaverse: A European Perspective
  • By Sofia Bernardini and Giulia Romanelli
    What is the metaverse is a question we have heard answered thousands of times recently, each of them with a more or less detailed and precise definition. What seems certain is the origin of the word, which has been coined by Neal Stephenson in his 1992 cyberpunk novel “Snow Crash,” to indicate a three-dimensional space within which individuals can move, share and interact through custom avatars. The difference with Stephenson’s novel is that today the metaverse has overwhelmingly become part of our lives and has become a reality and is no longer science fiction. Nowadays, even the most ordinary daily activities, which are part of our work or leisure, are somehow connected to the metaverse, whether we like it or not: have you ever attended a legal seminar on the metaverse? We had, and although in terms of access and content it did not seem to be particularly different from a normal webinar, the legal implications of the same are instead extraordinary. In this regard, the metaverse has been discussed under uncountable law profiles such as finance, tax, employment, real estate, data privacy, criminal law, etc., and, it must be said, intellectual property is no less. Therefore, assuming no one needs to hear a new definition of the metaverse, the goal of this article is to try to identify the legal issues the latter raises in particular in relation to the use of trade marks. Companies which have now entered the metaverse in the most different ways are well aware that the metaverse is a potential new market and have been very careful to register their trade marks also to deal with the virtual world. A report from Research and Market1 has named 50 of the most active companies in the metaverse, among which are Meta, Apple, Google, Microsoft, Alibaba, Sony, Binance, Walmart, Nike, Gap, Netflix, adidas and Atari.
    PDF, 555.07 KB
  • The Need To Improve How We Communicate The Value And Impact Of Academic Technology Transfer And Knowledge Exchange Activities*
  • By John A. Fraser
    In spite of widespread activities in U.S. universities since the mid-1980s, many of the key stakeholders in our activities do not yet have an appreciation of the positive impact of academic technology transfer (TT)1 and knowledge exchange (KE)2 on their institutions and the U.S. economy.
    PDF, 1.01 MB
  • Overview Of SEPs, FRAND Licensing And Patent Pools
  • By Gustav Brismark, Mattia Fogliacco, Carter Eltzroth, Matteo Sabattini and Richard Vary
    An SEP is a patent, necessarily infringed when implementing a technical standard adopted by a standards development organization (SDO), for example, IEEE, ISO/IEC MPEG or DVB. In order to eliminate the risk of hold-up by an SEP owner, SDOs generally include in their IPR policies a requirement that members declare whether they are prepared to offer licences to their SEPs on terms that are fair, reasonable and non-discriminatory (FRAND). A second obligation that selected SDOs implement is to require notification of patents that are or may become essential. If SEP owners identify a patent and say that they will not offer licences on FRAND terms, the SDO may remove the technology from the standard.
    PDF, 569.62 KB
  • The Once Thought Far-Off-In-The-Future Challenges To Copyright Law Posed By Artificial Intelligence Have Arrived: And I For One—Gulp—Welcome Our New Robot Overlords
  • By Michael J. Kasdan and Brian A. Pattengale
    While we are still not in the realm of sentient machines, current-day iterations of artificial intelligence (AI) are demonstrating themselves to be potential sources of creativity which are challenging our understanding of authorship in the context of intellectual property. If AI can create new content based upon its “perceptions,” how is that distinct from human authorship and furthermore, how does or how should AI fit into the current U.S. copyright landscape?
    PDF, 1.89 MB
  • LESI’s SDG-IP Index: Using Quality Of Life Aspects And Intellectual Property As An Indicator Of A Company’s Future Success (Part I)
  • By Ichiro Nakatomi, Andreas Zagos and Dana Robert Colarulli
    The world is obsessed with innovation. “Development” and “progress” have become watchwords, and we all expect things to continue to get more convenient, to be able to have what we want delivered to our doorstep more quickly, and to get wherever we need to go, faster. We describe it as wonderful, and various innovations have fundamentally changed and improved lives around the globe. But this drive towards progress— this drive to increase economic growth and life span—sometimes causes us to stop paying attention to aspects of new innovations that affect the quality of life.
    PDF, 783.78 KB
  • Addendum To The December Special Issue On The Role And Contribution Of Multi- Institutional Technology Transfer Offices
  • By Ashley J. Stevens, Alexandre Navarre and John A. Fraser
    December’s Special Issue of les Nouvelles was devoted to Multi-Institutional Technology Transfer Offices (MiTTOs). While we had hoped that our research had identified and covered all the MiTTOs that had existed, we correctly anticipated that there likely would be organizations we had missed, and we committed to trying to get articles written on these as we discovered them. This is the first such update.
    PDF, 519.37 KB
  • Bringing Biotech To Central Massachusetts — The Massachusetts Biotechnology Research Institute
  • By Ashley J. Stevens
    In 1980, Massachusetts was home to defense contractors and computer manufacturers, and what Governor Michael Dukakis later called “The Massachusetts Miracle” did not bring to mind the life sciences. What economic activity there was in life sciences consisted of a largely invisible medical device industry, while the future biotechnology industry was just starting to spin-out of the laboratories of Harvard, MIT, Tufts and Boston University. The only traditional pharmaceutical company in the state was the U.S. headquarters of a then-obscure Swedish company, Astra AB, which had just moved to a spectacular building inexplicably hidden and insulated from the burgeoning academic community in the center of the state. After Astra’s merger with Zeneca, PLC, the resultant AstraZeneca ignored that facility when it established an R&D center in Massachusetts in 2003 and selected a traditional “Route 128” location in Waltham.
    PDF, 549.55 KB
  • BioResearch Ireland: Pioneering The Irish Experience of Technology Transfer
  • By Colm Lawler and James G. Ryan
    BioResearch Ireland (BRI) was established in 1988 to support Irish economic development by commercializing Irish university-based research. This was achieved through a partnership between Ireland’s five largest universities and the Industry Ministry of the Irish Government.
    PDF, 543.80 KB
  • The Origins Of Organized Technology Transfer In India: The NRDC Story
  • By Premnath Venugopalan and Hanumanthu Purushotham
    Organized technology transfer in India traces its origins back to the creation of the National Research Development Corporation (NRDC) on 31 December 1953 (Ref. 1, 2). The Government of India registered a non-profit and fully-governmentowned company on the last day of 1953 with the primary objective of developing and exploiting inventions created by various publicly funded research laboratories, universities and even individuals. The development and exploitation of inventions, for profit or otherwise, was explicitly stated as an activity in the public interest. This pioneering initiative of the Government of India was the brainchild of Sir Shanti Swarup Bhatnagar, often referred to as the “Father of Indian Research Laboratories” and supported by Pt. Jawahar Lal Nehru, the first Prime Minister of India, both of whom are signatories to the Memorandum of Association of the company (Ref. 2).
    PDF, 556.17 KB
  • An Early TTO For U.S. Federal Labs— The National Technical Information Service
  • By Steven M. Ferguson
    Like universities, federal agencies conduct research and development (R&D) activities that result in the creation of new technologies. In many cases, these technologies are created to support the specific needs of an agency’s mission. In other cases, they are spontaneous creations of ongoing research. Regardless of how they are created, federal technologies may have significant commercial value that goes beyond an agency’s mission. It has become the role of an agency’s technology transfer office (TTO) to identify this value and provide the most effective means to transfer it outside of the agency. Over the past 40-some years U.S. legislation has provided a variety of vehicles through which federal technology transfer occurs. Now today these vehicles facilitate the potential licensing and commercialization of inventions, enable the use of federal laboratory facilities by non-federal entities, and allow for the establishment of research partnerships between federal laboratories and other entities—but this wasn’t always the case. The origin of today’s well-established federal technology transfer programs and infrastructure can largely be traced back to a small federal service agency located in Springfield, VA just outside the Washington, D.C. beltway.
    PDF, 553.81 KB
  • A For-Profit TTO Is Tried In Canada— University Technology Inc., Calgary, AB
  • By John A. Fraser and Ken Porter
    University Technology Inc. (UTI) was created in 1987 as Canada’s only for-profit technology transfer company, serving the University of Calgary (UC) and the adjacent, independently owned Foothills Hospital as initial clients. The retiring university president closed down the internal TTO and replaced it with UTI, a for-profit company. He appointed several prominent local businessmen to the board. Calgary at that time was Canada’s oil and gas capital and business was very entrepreneurial, so a for-profit UTI fit the local ecosystem. The board then advertised for a president to implement the plans and hired John Fraser in May 1989. In the first year, the company focus was expanded and directed, four staff hired, a business plan written and implemented, licensing and marketing activities launched, and $375,000 in gross revenues achieved by year end. An outreach program was implemented to seek new institutional clients on an Alberta-wide basis and to assist clients in creating new technology-based spinout companies.
    PDF, 532.95 KB
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