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les Nouvelles - June 2018


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  • les Nouvelles - June 2018 - Full Issue
    PDF, 2.35 MB
  • Post-Signing Adjustment Of SEP/FRAND Licenses
    Peter Georg Picht
    The question of whether, when and how SEP/FRAND licenses ought to be “adjusted” in case of a post-signing alteration in the set of licensed patents is of increasing practical relevance. Adjustment may be necessary to keep a license FRAND in the event of far reaching portfolio alterations and several legal instruments could potentially provide the basis for performing such adjustments, amongst them “adjustment clauses” which are integrated ex ante into the license contract or general principles of patent or competition law. On the other hand, the risk to generate continuous conflict between the parties cautions against making adjustment available too easily. This article maps the present legal framework regarding license adjustment on the EU as well as on certain parts of the Member State level. It highlights a selection of fundamental aspects that ought to be taken into consideration for the development of appropriate solutions. Against this background, potential tools for and elements of such solutions are evaluated.
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  • Open As In Open Access
    William Bird and David Ball
    This paper examines the problems of access to non-patent literature and the development and implications of Open Access literature with comparisons to patent literature. It also provides a guide to enhancing the efficiency and cost-effectiveness of discovery and retrieval of Open Access literature. Significant strides have been made in, on the one hand, maintaining and developing the IP system worldwide and, on the other, in easing access to enormous amounts of scientific and engineering disclosures. Open Access is presented as a significant and healthy growth of accessible publishing. Although the business model for non-patent literature has been different traditionally from that of patents, recently there has been a move to favour Open Access. It appears that adequate income is still being generated for non-patent literature publishers who use an Open Access strategy.
    PDF, 142.75 KB
  • An Update On International Trends In Technology, Media And Telecoms Dispute Resolution, Including Intellectual Property Disputes
    Ignacio de Castro, Leandro Toscano and Andrzej Gadkowski
    Technology and intellectual property (IP) rights are key components of innovation and creative processes, and their efficient exploitation is fundamental to successful business. While the careful drafting of contracts will reduce the frequency of disputes, they may at times arise. Therefore, it is essential that disputes be managed and resolved efficiently. Parties to IP and technology transactions must anticipate appropriate mechanisms to prevent and resolve potential disputes in a time- and cost-effective manner in order to avoid lengthy and costly court proceedings. The Survey Report on Technology, Media and Telecommunications Disputes1 (TMT Survey), published by the School of International Arbitration (SIA) of Queen Mary University of London, highlights trends in the use of dispute resolution mechanisms in TMT matters, including IP.
    PDF, 167.48 KB
  • CRISPR Cas9–Licensing What Can’t Be Licensed
    Ulrich Storz
    A new gene engineering technology has recently made it through the media, not only because of its technical advantages, but also because it is in the focus of an epic patent battle between two academic institutions.
    PDF, 198.88 KB
  • Can A Technology Transfer Office Make A Difference In Increasing Licensing Numbers: Incorrect Assumptions And Inadequate Context?
    Mojdeh Bahar and Robert Griesbach
    Data suggests that an overwhelming majority of patented technologies remain unlicensed. It is generally believed that if access to technologies is provided or simplified, commercial partners will be more likely to come, license and commercialize the technologies. While access to technologies will facilitate commercialization, there are other factors that need to be considered. While some reasons for lack of licenses can be remedied or at least minimized by technology transfer offices (TTO), there are three factors on which TTOs have little or no impact. They are: economic viability issues; adoption/perception issues and scientific progress. The TTOs can however have impact by engaging in several activities, namely, information gathering, judicious patenting, skillful claim drafting, holistic view of the portfolio, mindful approach to incremental patenting, and marketing.
    PDF, 139.18 KB
  • International Technology Transfer Contracts In Egypt: Practical Considerations From The Perspective Of A Foreign Licensor In Relation To Arbitration And Applicable Law
    Raffaella Cavandoli and Hend Zaghloul
    In Egypt the parties’ autonomy in a technology transfer contract is subject to the restrictions imposed by the Egyptian Commercial Code, which contains a specific chapter on the transfer of technology. One of the most relevant restrictions is Article 87, according to which Egyptian law shall apply to the contract and arbitration is permitted only if held in Egypt and in accordance with Egyptian law. Nevertheless, it can be observed how part of the legal profession interpret the restrictions of the Egyptian Commercial Code not as mandatory but as permissive. For example, according to some law firms, it may be possible to agree to arbitration with seat in an arbitration-friendly third-country. This article examines the risks of a permissive interpretation and considers, in particular, the reasons why an Egyptian court would be unlikely to enforce an arbitration award rendered abroad in violation of Article 87. The recommended course of action is to adopt a pragmatic approach: a foreign licensor should assume at the outset that all technology transfer provisions of the Egyptian Commercial Code, including the restrictions on applicable law and arbitration, are mandatory, when structuring the commercial deal and drafting the contract.
    PDF, 164.38 KB
  • BEPS Project And Intangibles: Impact On IP Tax Structures
    Madelein M. Kleyn, PhD
    Intangible assets constitute a major value-driver for multi-national enterprises (MNEs). This is even more so for companies that rely on valuable intangibles rather than physical assets to generate financial returns. Intangibles such as patents, design, trademarks (or brands) and copyrights are generally easy to identify, value and transfer and as such attractive for multi-national tax planning structures especially as these rights usually does not have a fixed geographical basis and is highly mobile as a result can be relocated without significant costs.
    PDF, 93.71 KB
  • Intellectual Property Valuations For License And Other Transfer Purposes Part 1
    Robert F. Reilly and Casey D. Karlsen
    Intellectual property is often licensed in arm’s-length transactions between independent third parties. Intellectual property is often licensed as part of a joint venture, development, commercialization, manufacturing, distribution, or other agreement. And, intellectual property is often licensed as part of a litigation settlement agreement or as the result of a judicial order. These types of licenses can result from either tort litigation matters or breach of contract litigation matters.Intellectual property can be licensed as part of a corporate financing arrangement. This structure often occurs in a sale and licenseback financing facility. In addition, commercial intellectual property can serve as the collateral security interest in a secured corporate financing raise.
    PDF, 106.47 KB
  • How Technology And The Courts Are Changing IP Valuation
    Weston Anson
    Intellectual property valuation methodologies are constantly changing and adapting to the fast pace of technology. An increased level of scrutiny has recently been placed on intellectual property portfolios. The need for increased professionalism in valuation, oversight, and security continues to grow. In addition, as the court system, especially the Supreme Court, has become more active in IP law, and IP law and regulations continue to change with the pace of technology, there is a heightened need for more accurate and creative methods to value intellectual property.
    PDF, 85.74 KB
  • Intellectual Property Rights And Licensing In India
    Rajeshkumar Acharya and Girishchandra Tanna
    India is a member of the World Trade Organization and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. India has a TRIPS-compliant, robust, equitable and dynamic Intellectual Property Rights (IPRs) regime.1.1 Intellectual Property Rights Policy:India has announced ‘National Intellectual Property Rights Policy’ with a slogan “Creative India; Innovative India” on 12th May, 2016. The rationale behind National IPR Policy is to create awareness about the importance of IPRs as a marketable financial asset and economic tool.
    PDF, 78.26 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    John Paul and D. Brian Kacedon
    Agreements; Ability to Sue and Be Sued; Patent Enforcement and Enforceability; PTO Validity Challenges; Damages
    PDF, 192.54 KB
  • A Licence! And Quick! Recent Developments Concerning Compulsory Licences For Patented Pharmaceuticals In The European Union
    Patricia Cappuyns and Jozefien Vanherpe
    Almost sixty years ago, the renowned economist Edith Tilton Penrose described compulsory licensing as the most effective and flexible method to reduce the cost of the patent monopoly.1 Over half a century later, the examples of compulsory licences in practice are, globally speaking, still quite scarce, and in the European Union practically non-existent. However, the times might be changing. Last July, the German Federal Court of Justice confirmed a compulsory licence granted for the AIDS drug Isentress in preliminary injunction proceedings. In the fall of 2017, the Minister for Health of the Netherlands announced his intention to extensively explore the use of compulsory licencing of patents of highly expensive medicines. These evolutions seem to point towards a renewed interest in implementing the international, European and national legislative provisions on compulsory licencing, with real, practical consequences. Food for thought and, therefore, a Scoop of the theory and recent practice of compulsory licencing in the European Union, with a focus on pharmaceutical products.
    PDF, 121.71 KB