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les Nouvelles - June 2005


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  • les Nouvelles - June 2005 - Full Issue
    PDF, 2.48 MB
  • Value-Added Licensing: The Role Of Know-How And Research Material Transfers In License Development
    MICHAEL J. MARTIN, JAY SIMON, CHRISTOPHER BLOOM & CRAIG HEIM; EDITED BY GUS G. ORPHANIDES
    This article is a collection of insights drawn from the presenters of "Value Added Licensing: Know-How and Material Transfers," a mini-plenary sponsored by the Energy, Chemicals & Materials (E-104) Committee for the LES 2004 Annual Meeting in Boston. The E-104 Committee focuses on the chemical and associated industries which historically have created and extracted value through their inventions in new products and commercial processes that are protected by patents and proprietary know-how. These classes of intellectual assets typically defend substantial capital asset investments made in plant and equipment to produce and sell products. Globalization and access to information are transforming the energy/chemical and associated industries which present opportunities and challenges to the process of licensing. The licensing of trade secrets and proprietary know-how including novel research materials are becoming more essential value additions in licensing deals, offering success-critical information to the licensee for implementation and commercialization, and generating higher royalties to the licensor. In this context, the E-104 Committee examined and highlighted the various current licensing perspectives in the transfer of trade secrets, materials and know-how information in licensing deals.
    PDF, 342.49 KB
  • Considering Pharmaceutical Royalties
    HARMEN JOUSMA
    Deals with pharmaceutical companies constitute a major commercialization route for the biotechnology industry. Likewise, many agreements on IP from universities involve technology in the area of the life sciences, with applications that are ultimately aimed at the development of new pharmaceuticals. With potentially large markets and high profi t margins there is much at stake. Consequently, many tech transfer and licensing executives as well as many researchers in the life sciences, will at some point in time get involved in a pharmaceutical licensing deal and need to have a basic understanding of how pharmaceutical royalties can be determined.
    PDF, 393.39 KB
  • Designs In Indonesia— A New Law In Action
    SARA HOLDER
    In 2000, Indonesia enacted its fi rst sui generis law relating to protection of industrial designs, in line with its obligations under the TRIPs Agreement. The Designs Law was a long time in coming and a positive addition to the intellectual property legislative framework. In this article, we will examine the background leading up to the issuance of the law and review four years of the law in action.
    PDF, 189.69 KB
  • Patent And Technology Licensing In Latin America
    CLARISSE ESCOREL & JOHN PAUL
    In 2004-2005, the LESI Committee of the Americas and the LES (USA & Canada) International Committee conducted a survey of licensing activity in Latin America. Committee members, with experience in Latin American countries, researched available information to respond to a series of questions. In some countries, not much information was available to answer the questions; in others, information was available. Whenever possible, the Committee members supplemented the research with their personal experience, providing insight into the licensing landscape in the particular country.
    PDF, 242.49 KB
  • Issues Of The Know-How Licensing In The Republic Of Belarus
    ELENA BELIAEVA & MAXIM DORONIN
    Foreign companies face diffi culties in conclusion of the License Contracts in the Republic of Belarus due to the absence of their registered Industrial Property objects on the territory of the Republic of Belarus. It happens so because of the missing of terms of fi ling applications for an invention registration in the Republic of Belarus. Therefore, the foreign companies, that have technologies and have not protected them in the Republic of Belarus, are not able to sell the rights of their use on the territory of the Republic of Belarus in spite of customerʼs presence.
    PDF, 202.22 KB
  • Amendment To U.S. Patent Law Attempts To Simplify Research Collaboration Agreements
    D. PATRICK OʼREILLEY - COMMENTS BY HEINZ GODDAR
    In most patent regimes, a patent on an invention is only allowed if the claimed invention is novel and not obvious in view of so called "prior art," namely, evidence of what was in the public domain before the claimed invention. Various forms of prior art may be cited against a patent application claim. Under U.S. Patent Law,1 because the fi rst to invent is entitled to the patent, an earlier invention, even though made and used secretly, could be cited as prior art against a claim directed to a later invention. Oddzon Products, Inc. v. Just Toys, Inc.2 Prior to December 2004, the only way to avoid a rejection based on an earlier invention was to establish both inventions were owned by or assignable to the same entity at the time the later invention was made. The owner of the two inventions could use Section 103(c) of the U.S. Patent Law3 by fi ling a "terminal disclaimer" which made the term of any patent issuing on the later invention the same as the term of any patent on the earlier invention.
    PDF, 195.98 KB
  • Recent Changes To Charitable Contribution Rules For Patents And Other IP
    MICAH BLOOMFIELD, IAN SHAINBROWN & MARY CATHERINE DINUNZIO
    On October 22, 2004, President Bush signed into law the "American Jobs Creation Act of 2004" (the "Jobs Act"). This highly publicized legislation includes numerous tax law modifi cations, including signifi cant changes to the rules governing charitable contributions of patents and most other forms of intellectual property. This article discusses some of those changes and the issues they raise for donors and donees.
    PDF, 164.17 KB
  • University Patenting And Licensing: Recent Reform In Korea
    YUNJOO LEE
    Economic prosperity is one of the major factors for bringing universities and industry closer together. During the last few decades, in many industrially developed countries, there has been an increase in collaborative research activities. In line with this development, many OECD countries began to reform policies to promote university/industry cooperation to increase their international economic competitiveness. The focus of these reforms has been on key issues related to the exploitation of research results, such as the need for clear intellectual property policies that support the exploitation of publicly funded research. In 2000, Korea (Republic of Korea, hereinafter Korea) introduced a new law entitled "Law on Promoting Technology Transfer" (hereinafter LPTT)1 to promote technology transfer and ultimately commercialisation and to create a better infrastructure that will facilitate these processes. It is not always possible to foresee what the outcomes will be; however, there are initial concerns over several points in the new legislation. Although the new legislation applies to all public research organisations and intellectual property rights, this paper focuses on the initial concerns of the new law on universities and patenting.
    PDF, 231.87 KB
  • Recent Decisions In The United States
    Brian Brunsvold and John Paul
    A recurring feature highlighting recent decisions in the United States.
    PDF, 171.44 KB
  • Open Book
    John T. Ramsay, Q.C.
    A review of Drafting Patent License Agreements, Fifth Edition, by Brian G. Brunsvold and D. Patrick OʼReilley.
    PDF, 158.51 KB