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les Nouvelles - December 2016


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  • les Nouvelles - December 2016 - Full Issue
    Volume LI No. 4
    PDF, 2.79 MB
  • Writing Licenses And Other Agreements1—Some Tips2 Based On Over Fifty Years Of Mistakes And Confusion (Mostly Others’, But A Few Of Mine)
    By Robert S. Bramson
    The Skills Required for Negotiating and Drafting ContractsDrafting any sort of agreement requires three skillsets. Just being a smart lawyer isn’t enough. The skillsets are:• Drafting skills—Writing a clear, concise, accurate and comprehensive agreement.• Legal skills—understanding all of the legal principles which go into negotiating, drafting and enforcing a license agreement—contract law, patent law, labor law and bankruptcy law and, of course, much more.
    PDF, 391.23 KB
  • An Experience-Based Look At The Licensing Practices That Drive The Cellular Communications Industry: Whole Portfolio/Whole Device Licensing
    By Marvin Blecker, Tom Sanchez and Eric Stasik
    Cellular communications technologies have undergone dramatic changes during the last 25 years, as major technological improvements revolutionized the way the world communicates, and both consumes and creates digital content. Significant investments in research and development (“R&D”), combined with efficient standardization and patent licensing practices, brought about these changes and enabled successive generations of cellular communication standards to be implemented quickly and widely. The high data rates and lower prices achieved through third generation (3G) standards ushered in many of these changes, and created innumerable benefits at all levels of the industry, as mobile devices became viable platforms for internet browsing, sharing photographs, social networking, and even watching videos. The broad deployment of advanced devices and high-speed cellular communications networks has also supported the development of entirely new businesses—from Uber to ApplePay to mobile streaming video from Netflix, Amazon, DirecTV, CBS, NBC and others—based entirely on high-speed cellular communications infrastructure. With even faster data rates and more efficient use of wireless spectrum, the fourth generation (4G) ecosystem promises to be larger and even more successful than the 3G standard it is replacing. Those improvements will undoubtedly continue as fifth generation (5G) standards are developed, which will further increase performance and efficiency of cellular communications for the benefit of all.
    PDF, 213.69 KB
  • The Practicalities And Pitfalls Of The Smallest Saleable Patent Practicing Unit Doctrine: A Review Of Teece And Sherry
    By Anne Layne-Farrar
    In early 2016, David Teece and Edward Sherry released a new paper assessing the economics of the “Smallest Saleable Patent Practicing Unit” (SSPPU) doctrine.1 The doctrine was first espoused in 2009 by Judge Randall Rader in Cornell v. Hewlett Packard.2 In the simplest terms, the SSPPU doctrine calls for setting the revenue base for reasonable royalty patent infringement damages at the smallest possible product level that still reflects the patented invention. For example, if patented feature A is sold in two products, ABCDE and ABC, then product ABC (not including features D and E) would likely form the SSPPU (it is a rare instance that product A would be sold on a standalone basis).
    PDF, 83.68 KB
  • To What Extent Are University IP Policies Legally Binding? Part 2: Students
    By Philip Mendes
    In Part 1 the extent to which a university IP policy is legally binding upon a university’s staff was considered. In this part we consider that question in relation to students, both undergraduate, and postgraduate.The IP policies of universities and research organizations (for brevity, the term “university” is employed, and refers not just to a university, but to all forms of a non-for-profit research organization) seek, by force of the policy alone, to change where the ownership of IP lies. The university, by the force of its IP policy alone, seeks to expropriate the ownership of the IP.
    PDF, 86.67 KB
  • Application of Enterprise Risk Management (ERM) Principles To Patent Freedom To Operate (FTO) Analysis: A Novel “IP-RM” System
    By Gillian M. Fenton
    Intellectual property (IP) is an integral component of business strategy in many industries, and for many types of enterprises ranging from startups, to emerging companies in growth phase, to mature companies that may be considered an attractive target for IP litigation. Certainly this is true in life science fields, particularly for biotechnology and pharmaceutical innovator companies, where IP is often a significant component of corporate value. A robust IP strategy should encompass at least three dimensions of activity:
    PDF, 229.81 KB
  • NSFW: Naked Licensing And Uncontrolled Trademark Use
    By Luke S. Curran
    The nucleus of trademark owners’ post-registration operations centers on protecting and enforcing those rights against unauthorized use by third parties. Conversely, much less attention is afforded to addressing the potential for inadvertent loss of rights when employed by authorized third parties.
    PDF, 69.38 KB
  • Licensing In Cosmetics: A Practical Approach
    By Jean-Yves Legendre
    The worldwide cosmetic market is estimated around 180 billion € (sell-in price) and is dominated by historical, large international corporations (L’Oréal, Unilever, Coty, Procter & Gamble, Shiseido, Johnson & Johnson, Estee Lauder). However, despite a global, steady growth of about three percent per year, this market covers many diverse regional and local situations. Indeed, the rising of the middle-class category in the developing countries is leading to new consumer expectations and demands, as well as to the emergence of new players. Among the latter, many have gained sizeable market positions for certain categories of products or in specific channels of distribution. Furthermore, new consumer behaviors such as e-business, web-blog publishing, product personalization and digitalization or sustainable consumption have led to a fast changing market for which the cosmetic brands need to quickly adapt, yet keeping their genuine and historical roots.
    PDF, 145.08 KB
  • Opportunities And Challenges For Expanding Technology Transfer In United Arab Emirates (UAE)
    By Ahmed Alosi, Ph.D., John Fraser and Michael J. Martin
    The UAE is a relatively young country (established in 1971) with enormous per capita wealth and a strategic goal as expressed in their 2021 vision: “To translate from an economy based on fossil fuel to a Knowledge-Based Economy.” Universities can assist in strengthening the Innovation Infrastructure in the UAE by participating in Technology Transfer; i.e., partnering with the private sector to create and grow technology-based economic business opportunities, as part of a Knowledge-Based Economy.
    PDF, 155.69 KB
  • Allocating Risks And Rewards In Collaborative Agreements Using The Financial Structure
    By Matthew W. Sagal and Gene Slowinski
    Open Innovation (“OI”) is a well-accepted methodology that allows two or more firms to combine technical and other resources to achieve their marketplace objectives. The OI relationship is called an “alliance.” The firms are often referred to as “partners,” although use of that term does not imply a partnership in a legal sense. The purpose of this paper is to provide background in the principles of risk allocation, as guidance to those who must plan and negotiate these complex relationships. As we will show, alliances carry risks beyond those found in in-house programs. In our experience, a major portion of the energy devoted to alliance negotiations is developing a mutually acceptable allocation of those risks. Reaching a satisfactory solution is essential to completing any alliance negotiation.
    PDF, 122.79 KB
  • Bankruptcy-Related IP Valuations: Consider The Use Of Market Approach
    By Robert F. Reilly
    Licensing executives and other intellectual property (IP) professionals (for purposes of this discussion, called “analysts”) are sometimes asked to provide IP valuation and related analyses within the context of a commercial bankruptcy or other type of commercial litigation. Within the commercial bankruptcy environment, the analyst could serve as a transaction adviser, a consulting expert, or a testifying expert on behalf of one (or more) of the parties to the proceeding.
    PDF, 106.51 KB
  • Patent Royalties And Competition Law: The Genentech Judgment Of The Court Of Justice Of The European Union
    By Patricia Cappuyns and Jozefien Vanherpe
    On 7 July 2016, the Court of Justice of the European Union (“CJEU”), the highest court in Europe, held that a requirement to pay royalties for the licensed use of patented technology for the entire duration of the license is not contrary to competition rules in the event of the revocation or non-infringement of the patent at issue (Case C-567/14, Genentech v. Hoechst and Sanofi-Aventis).1 This ruling shifts the balance back in favour of the licensors, while recent case law as well as the Commission had emphasised that licensees must always remain free to challenge licensed IP rights. But what is the point of successfully challenging the licensed IP right if the royalties simply keep running?
    PDF, 75.97 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    By John Paul and D. Brian Kacedon
    U.S. Supreme Court Upholds Ban on Post-Expiration Royalties in Patent LicensesIn the 1964 decision Brulotte v. Thys Co., the U.S. Supreme Court held that a patent owner cannot receive royalty payments that “accrue” after a patent expires. Under this ruling, the patent owner cannot receive royalties for a licensee’s sales or other activities covered by the patent that occur after the patent expires. The Court viewed such royalties as improperly extending “the patent monopoly beyond the [patent] period.” Recently, in Kimble v. Marvel Entertainment, LLC, the Supreme Court declined to overturn this bright-line rule, instead emphasizing that the policy issues raised should be left to Congress. In addition, the Court noted that while the Brulotte rule prevents some parties from entering into contracts having some particular terms they may desire, it still leaves open ways for them to enter into other contracts with other terms that allocate risk and reward in commercializing inventions.
    PDF, 123.80 KB