les Nouvelles - September 2015


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  • les Nouvelles - September 2015 - Full Issue
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  • Seven Somewhat Non-Standard Suggestions For Negotiating University IP Rights Agreements
    Michael Alvarez Cohen
    This year (2015), I completed my 100th intel-lectual property (IP) rights agreement for UC Berkeley (UCB). My most recent agreement is an exclusive license to a UCB spinout for three sensor-related technologies. That agreement was completed in about 30 days. About half of my UCB agreements were with startups; and the technologies that I’ve licensed include battery technologies, biofuels, medical devices, nano materials, photovoltaics, sensors, semiconductors, software, and biomimetic technologies. In reflecting on these agreements, I offer the following seven slightly non-standard suggestions for negotiating university IP rights agreements.
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  • Ten Common Mistakes In IP Valuation/ Damages Reports
    David Drews
    As regularly occurs in business, Company A is considering acquiring Company B. The strategic perspective is very compelling: the target’s patent portfolio fills numerous holes and propels the R&D program in certain key areas several years ahead of Company A’s current position. A manager in Company A has been tasked with deciding whether this particular acquisition makes sense from a financial perspective. Toward that end, the manager has hired outside consul-tants to perform a formal valuation analysis on Company B’s patent portfolio.
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  • Downgrade To “Neutral”: A Diminishing Role Of The Georgia-Pacific Factors In Reasonable Royalty Analyses
    Ryan Sullivan, DeForest McDuff and Justin Skinner
    More than 80% of damages awards in patent liti-gation include reasonable royalties. In these litigations, reasonable royalty analyses by economic experts often involve a linear and monotonous march through the fifteen economic factors listed in Georgia-Pacific v. United States Plywood (S.D.N.Y. 1970), commonly referred to as the Georgia-Pacific factors. For readers that are unfamiliar with the Georgia-Pacific factors, the factors include considerations relating to past technology agreements (factors 1, 2), the nature, scope, and duration of the license (factors 3, 7), licensing policy (factor 4), commercial relationship between the licensor and licensee (factor 5), sales of non-patented items (fac-tor 6), sales and profits (factors 8, 11), contribution of the patented technology (factors 9, 10, 12, 13), opinions of qualified experts (factor 14), and the amount that a licensor and licensee would have agreed to in a hypo-thetical negotiation for a license to the patent-in-suit (factor 15). Damages experts in patent litigation often perform an assessment of each of the fifteen factors as having an “upward,” “downward,” or “neutral” effect on the royalty in a hypothetical negotiation.
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  • Standing Of Licensees To Sue For IP Infringement In Australia
    Peter Hallett and Sean McGuire
    The Full Court of the Federal Court of Australia has handed down an important decision for those involved in patent licensing in Australia: Bristol-Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2.
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  • Improving The Technology Transfer Process By Going Back To The Basics: A Comprehensive Assessment and Reporting System
    Kuok Teong Ong and Aishwarya Sathyanarayan
    The passage of the Bayh-Dole Act in 1980 has given universities and research institutes the right to retain titles to inventions resulting from federally sponsored research. As a result, many universities and research institutes have enhanced their capacity to effectively conduct patenting and licensing of technologies. The acceleration of technology transfer activities (TTA) are reflected by the increase in the membership of the Association of University Technology managers (AUTM) from 113 in 1979 to more than 3,200 currently. According to the 2011 AUTM Licensing Survey, 591 new products and 670 startup companies were created in one year alone under Bayh-Dole while 3,927 university spinoffs are in operation across the U.S. today [1]. Since 1980, more than 8,788 new companies have been established to commercialize academic inventions and 3,927 startups are still in operation at the end of 2011, while university patent licensing has contributed approximately $836 billion to the U.S. gross domestic output and supported 3 million jobs between 1996 and 2010 [1, 2]. Apart from economic growth, TTA have given rise to the commercialization of numerous green-technologies and drugs to treat various chronic diseases including breast cancer and Crohn’s disease, thus highlighting the societal impact of TTA.
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  • Patent Portfolio Valuation As Reflected By Market Transactions: Market Dynamics And The Impact Of AIA And Alice
    Jack Lu
    This essay presents the most recent results from an ongoing research project that collects and analyzes the market prices of patent portfolio transactions. The project was initially launched in 2012 as part of the efforts to better understand the pricing behavior of the rapidly growing patent market. Several updates have been released since then, includ-ing an article published in les Nouvelles, March 2013, titled, “Decompose And Adjust Patent Sales Prices For Patent Portfolio Valuation” (“the les Nouvelles article”); and a presentation during the 2013 Annual Meeting of the Licensing Executives Society (USA & Canada) in Philadelphia (“the 2013 presentation”). This research note is based on the analysis of the data as of the end of 2014. As discussed in detail in the les Nouvelles article and the 2013 presentation, the ultimate purpose of the project is to decompose and adjust the market prices for patent portfolio valuation.
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  • Computer Assisted Generation Of IP Transaction Documents
    William Bird
    When advising a company about drafting IP trans-actions such as IP licensing agreements or assign-ments, one would normally recommend a qualified attorney—preferably (of course) an active and experienced member of LES. However, we know that computer software is being used to generate IP transaction documents and that raises the question of how safe such programs are.
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  • Assessing The Value Of Your Patents
    Terry Ludlow and Michael Spence
    What are the factors that influence patent value? They fall into three areas: legal, technical, and market.
    PDF, 377.55 KB
  • Use Of Cluster Searching To Find Patents With Licensing Potential
    Mike Lloyd
    In an earlier LES paper (“Advanced Citation Analysis Can Help Identify Licensing Candidates,” published in September 2014) we had discussed how citation analysis can help licensing managers and others find commercialisation opportunities for their patents. As part of this, we demonstrated the use of two tools, one a graphic tool used for citation analysis, and the concept of forward rejection analysis.
    PDF, 138.07 KB
  • Valuing Trade Secrets
    David Wanetick
    How can you value your firm's trade secrets? The first step is to define what trade secrets are so that you can isolate the right assets for review. So what are trade secrets? Trade secrets are proprietary information, knowledge, formulas, methods, designs or processes that confer commercial advantage to those who possess them. Trade secrets are not com-mercially known or readily ascertainable and are the subject of efforts to keep such knowledge secret.
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  • Trade Mark Filing Strategies In Europe
    Dr. Frank Remmertz
    Selected Aspects Of The EC Trade Mark Reform Trademarks are of substantial importance in an industrial and commercial sense and are closely associated with business image, goodwill and reputation. It is therefore very important to protect trade marks in those countries where they are to be used. The purpose of this article is to illustrate the differ-ent routes to efficient trade mark protection in Europe and to identify the basic principles, the advantages and disadvantages of each trade mark protection system in Europe which will be helpful for companies to find an efficient filing strategy. The main focus of this article is on pointing out the characteristics of the Community Trade Mark System (the I) as the most significant trade mark system in Europe compared to the Madrid System for the International Registration of marks.1 Also, the article points out the basic procedural aspects of the proposed reform of the new European Union trade mark system initiated by the EC Commission (the Reform Package) published in March 20132 and its possible effects on trade mark filing strategies in Europe. A good pre-filing strategy will have direct positive effects on post-filing strategies such as licensing.
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  • Recent U.S. Court Decisions And Developments Affecting Licensing
    John Paul and D. Brian Kacedon
    Warsaw Orthopedic, Inc. v. NuVasive, Inc. Patent Owner Cannot Recover Lost Profits Based on Lost Sales of Products Not Func-tionally Related to Patented Product, Lost Royalty Payments, or Lost Payments from Inter-Company Transfer-Pricing Agreements By statute, damages in a patent-infringement litigation consist of at least a reasonable royalty award, and in some cases, a patent owner can prove that it is entitled to a higher measure of damages, such as the profits lost because of lower sales due to the infringement. In a recent case, Warsaw Orthopedic, Inc. v. NuVasive, Inc., the U.S. Court of Appeals for the Federal Circuit re-versed a district court’s award of lost profits, finding that none of the revenue streams on which the patent holder relied was eligible as lost profits. Because, however, the patent holder was entitled to at least a reasonable royalty, the court remanded the action to the district court for a new damages trial to determine a reasonable royalty.
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  • The Scoop From Europe: The CJEU Offers Guidance In The Huawei/ZTE Judgment On The Proper Way To Conduct FRAND Negotiations
    Patricia Cappuyns
    On 16 July 2015 the European Court of Justice (“CJEU”), Europe’s highest court, rendered its much anticipated judgment in the widely publicized Huawei/ZTE saga regarding standards-essential patents.1 In this judgment, the CJEU confirms the ap-proach of the European Commission in the Samsung and Motorola decisions and the opinion of Advocate-General Wathelet of 2014.
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