les Nouvelles - December 2015


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  • les Nouvelles - December 2015 - Full Issue
    PDF, 2.66 MB
  • Quo Vadis—A Unique History Of The Evolution Of The Japanese Patent Invalidation Proceedings
    Yuzuki Nagakoshi
    For the past 20 years Japan has been continuously revising the patent revocation system, the last revision being enacted in April 2015. This whole process has been a huge endeavor aiming at obtaining the advantages of bifurcated and non-bifurcated systems while minimizing the disadvantages of both systems and maintaining the consistency of the systems. The reform could be understood as a part of the “pro-patent policy” of the Japanese government, aiming at enhanced protection of patent rights. In recent years,1 it evolved into a more goal-oriented “pro-innovation Policy,” which emphasizes more on the innovation generated as a result of adequate IP protection including patents.
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  • Valuation Of Intangibles And Trademarks— A Rehabilitation Of The Profit-Split Method After Uniloc
    Christof Binder and Anke Nestler
    A profit-split analysis for a trademark or other intangible asset attempts to quantify what share of the profit of the business is attributable to the subject asset. Based on this asset-specific profit, its value can be calculated. Despite the adverse Uniloc decision of the U.S. Court of Appeals for the Federal Circuit in 2011,1 profit-split is an important, if not essential, element in the valuation of intangibles. In the wake of Uniloc, the method needs not only a vindication, but also a refinement based on case-specific facts and data. Purchase accounting data reported in financial statements can provide both.
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  • Valuation Of Intangibles In The World Of BEPS
    Markus Greinert and Susann Metzner
    Intangibles play a significant and dual role in the determination of arm’s length transfer prices for cross-border transactions between related parties. On the one hand, the ownership of intangibles is one of the key determinants for the distribution of the total profit of the multinational group. If a related party owns intangibles that significantly contribute to the value creation of the group, this entity is generally entitled to receive (part of) the residual profits of the group, i.e. the remaining profits after compensating all routine activities. Otherwise, if a company does not hold any right in any intangibles, it would in general only be entitled to a low routine return for the functions performed and risks assumed. The ownership in an intangible is thus a crucial element when setting up an arm’s length transfer pricing system. This connection between ownership in intangibles and the entitlement to the residual profits of the group, however, has led to transfer pricing systems where a great share of the group’s total profit is allocated to a group company in a low-tax country which does not perform any functions except that it holds the legal ownership in the intangible.
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  • Lump Sums, Running Royalties And Real Options
    Douglas Kidder, Vincent O’Brien, John Holzwarth and Johnny Chau
    Lump sums or running royalties; at first glance, it seems like a simple and relatively insignificant choice about the method of payment, but the structure of the royalty matters profoundly to both the licensor and the licensee. A running royalty is a form of metered pricing; the more you use, the more you pay. Lump sum is the all-you-can-eat buffet; you pay the same amount no matter how much you consume. There are many examples of metered pricing (video-on-demand, automobile rental, long distance telephone service, day-passes at the health club) and lump-sum pricing (buying the DVD of a movie, personal automobile purchase, tiered long distance telephone service, health club membership).
    PDF, 101.52 KB
  • The Spike And The Long Tail: Impact, Income, And Collaboration In University IP License Negotiations
    Christopher Noble
    Yes, universities do care about making money on their IP licenses. But, making money is not a substitute for advancing the mission of the university. IP licensing should support the university’s mission, and the “how” has been frequently articulated.1 If you are an industrial research sponsor, startup entrepreneur, or investor who wants to “do business” with a university, you should be familiar with these principles. But what should you expect from the university’s technology licensing professional, when you are sitting across the table in a license negotiation?
    PDF, 69.41 KB
  • Valuation Along The Technology Pipeline: A Purposive Approach To The Valuation And Reporting Of Internally Generated Intangible Assets
    David Lambourne
    Commonwealth Scientific and Industrial Research Organisation (CSIRO) The valuation of technologies along the technology pipeline is a critical input into transactional negotiations, strategic decision making and resource allocations within innovative companies, and research organisations alike. Despite this, internally generated intangible assets are not consistently integrated into an organisation’s financial statements. As a result, there is a disconnection between the financial statements of an organisation and their underlying business models. This paper addresses this disconnection and proposes a valuation/ decision making framework which integrates the technology development lifecycle within the International Accounting Standards (IAS) framework.
    PDF, 198.99 KB
  • Terminating Patent Licences In Australia— Traps And Opportunities For Licensees And Licensors
    Peter Hallett
    Watermark IP Lawyers One of the challenges for practitioners involved in multi-jurisdiction licensing arrangements is ascertaining when a licence agreement might require modification in light of local laws. An example of such a law is section 145 of Australia’s Patents Act 1990, which confers on both the licensee and licensor a right to terminate a patent licence after expiry of the licensed patent.
    PDF, 58.81 KB
  • IP Australia’s Value-Adding Services
    Patricia Kelly
    IP Australia IP Australia is the government agency responsible for administering intellectual property (IP) rights and legislation relating to patents, trade marks, designs and plant breeder’s rights for Australia. IP Australia is sometimes characterised as a regulator and indeed our role has some regulatory aspects, however we see ourselves primarily as a service provider. In addition to IP rights management, IP Australia undertakes IP education and awareness, international engagement on IP issues, and the provision of relevant policy advice to government (often in conjunction with other agencies such as the Department of Industry, Innovation and Science).
    PDF, 102.95 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    John Paul and D. Brian Kacedon
    PDF, 129.02 KB
les Nouvelles