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les Nouvelles -March 2018

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  • les Nouvelles - March 2018 - Full Issue
    PDF, 8.99 MB
  • Defining Sublicense Income To Avoid Problems Down The Road
    Ashley J. Stevens
    This article looks at sublicense income payment provisions in academic licenses. A majority of academic licenses are granted to small companies which are likely at some point to grant a sublicense to a large company to take the product to market. The article examines the three structures that have evolved to share the payments received by the small company from its sublicensee with its academic licensor and then looks at problems that have risen over the issues of milestone payments and profit sharing arrangements.
    PDF, 189.50 KB
  • More Blurred Lines: On Downstream Infringement And The Disgorgement Of Profits
    Peter Rybolt
    In copyright, as well as trademark litigation, litigants and finders of fact face the often bewildering task of determining the extent to which downstream infringers—those companies one or more steps removed from the creative work at issue— may have benefited when someone upstream has usurped another's work. Often, the results at trial are contradictory. We first review the history and purpose of the disgorgement remedy, identifying tension in the case law and statutes when the subject turns from competitors to downstream infringers. We look at three well-known cases from the world of recorded music—including the recent Blurred Lines decision—highlighting unexplained differences in the treatment of record companies when songwriters are accused of infringement. We then review our understanding of how firms capture value, and illustrate how that understanding can lend guidance to juries in assessing the profits to be disgorged. Our intent is to help reconcile observed differences in the treatment of downstream infringers.
    PDF, 121.46 KB
  • Is the CRISPR Treat Worth Two Licenses?
    Adelaide Leitzel and Neal Roach
    Rivalries between universities do not always play out on football fields or basketball courts. Off the field, research scientists from the University of California at Berkeley are battling against scientists from Broad Institute of Harvard and MIT, with a multi-billion dollar industry at stake. This CRISPR high stakes drama is being played under the United States Patent and Trademark Office (USPTO) rules of engagement. Just as competitive athletes know you have to play the officials, the patent attorneys in the fight over what is referred to as CRISPR technology are doing the same. In the first round it appears the Harvard/MIT team has the edge with the USPTO officials. Luckily for Berkeley, this competition is not one and done. In this article, we look at several questions about this fight: What is CRISPR technology and why is it important? What happened in round 1 and what's next? What does this fight mean for life sciences businesses?
    PDF, 89.42 KB
  • Intellectual Property In The Fourth Industrial Revolution Era
    Dookyu Kim
    Intellectual property law creates exclusionary rights based on the results of human intellectual activities. Intellectual property exists in various forms. Technological innovations are essential to the development of industries and can be protected as intellectual property, specifically by patents. The patent system calls such technological innovations inventions and those who created such inventions inventors. Inventions include product inventions and method inventions and, either way, they must be new and involve an inventive step (meaning not easy to think of) to be patentable.
    PDF, 80.00 KB
  • Devising More Durable Deals Avoiding Common Pitfalls in Patent Licensing
    Brian P. O’Shaughnessy
    We've all seen a seemingly happy technology marriage end in acrimonious divorce. Often those things can be avoided by careful advance planning, and proper cultivation of the nascent and the resulting product, and a carefully articulated plan for alliance management. This paper focuses on problematic clauses that are often overlooked or given short shrift, the importance of clarity and thoroughness of communication, the necessity of building an effective relationship, and the proper cultivation of that relationship for the long term after the deal is "done." The first section deals with an essential foundation for licensing—a system of laws that recognize that intellectual property has all the attributes of other forms of property. The second section deals with select elements of a license agreement that are given short shrift, are difficult to draft, or are rife with risk. The third section deals with the importance of alliance management, and continuing engagement to ensure the relationship achieves its potential.
    PDF, 117.76 KB
  • Assessing Patent Strength Using Data-Driven Inputs: Characteristics Of Patents And Patent Owners That Drive Success In Inter Partes Review
    Christopher K. Larus, Miles A. Finn, Shelley R. Gilliss, Jared A. Berry and Congnan Zhan
    The environment for patent licensing and enforcement is rapidly transforming. Inter partes review and other post-grant proceedings under the America Invents Act, changes to legal standards governing patent eligibility, and increasingly stringent review of patent damage awards have all combined to alter substantially the risk profile associated with patent licensing and enforcement. In this highly dynamic environment, patent holders, capital investors, and potential licensees alike increasingly look for data-driven quantitative inputs to evaluate patent-related risk. This paper details our analysis of objective, publicly available patent data to evaluate the relative strength of patent portfolios. This type of data-driven analysis can provide valuable inputs to parties selecting patents for potential licensing, evaluating potential investments in patent-related enterprises, and evaluating potential risks associated with patent licensing and enforcement.
    PDF, 512.95 KB
  • IP Strategy: Empirical Research, Practical Training And Work-Floor Experience Since 2009
    Arnaud Gasnier and Marc Münzer
    This article reviews basic concepts of business strategy in general, and presents first learnings when these concepts are applied to IP. Based on empirical insights (from surveys), the article highlights what IP professionals need today regarding strategy, and compares it with the situation 10 years ago. To meet such needs, this article gives a possible solution developed and validated from practice; it voices what we (three trainers) have recurringly heard or observed during the practical seminars which we have been giving for years. In addition, it provides the voice of a course participant and the impact on his practice as IP consultant. Finally, this article is also a call for supporting a current initiative to help bring IP in European educational systems beyond law schools.
    PDF, 208.38 KB
  • Changing The Biopharma Deal: How Far Can You Go & How Often
    Mark Edwards
    The theme of the 2017 national meeting of the Licensing Executive Society was announced as "Harnessing the Winds of Change." While this theme may have been inspired by the meeting's venue in the Windy City, it seems apropos to investigate the role of change in biopharma alliances. Biopharma deals change a lot. Approximately 300 deal amendments are SEC-filed each year, with 3,800 deal amendments since 2005. That's without counting 600+ restated agreements that have been SECfiled over the past dozen years. Based on roughly 600 unique biopharma agreements being SEC-filed as material to one or both parties annually, this suggests that biopharma deals are amended, on average, once every two years, and one in 12 agreements is restated over its effective period.
    PDF, 121.97 KB
  • The Supreme Court Says Conditional And Foreign Sales Cannot Avoid IP Exhaustion And What Should IP Owners Do? An Analysis Of The Supreme Court’s IP-Exhaustion Jurisprudence
    Jiang Bian
    On May 30, 2017, the United States Supreme Court handed down its long-awaited decision of Impression Products, Inc. v. Lexmark International, Inc.,1 which carries profound implications for intellectual property (IP) owners, manufacturers, sellers, retailers, resellers, and consumers across the globe. In keeping with its precedents supporting exhaustion of IP rights after the initial sale of products embodying the IP, the Supreme Court effectively overruled the Court of Appeals for the Federal Circuit's patent-exhaustion jurisprudence (or what many commentators referred to as "patent non-exhaustion doctrine").
    PDF, 192.88 KB
  • Gender Analysis Of Invention Disclosures And Companies Founded By Stanford University Faculty From 2000-2014
    Serena Hanes, Katharine Ku, Lisa Primiano, and Ann M. Arvin
    This study examined gender differences in entrepreneurship by faculty at a major U.S. research university using data from the Stanford Office of Technology Licensing from 2000-2014 and relevant public data. Differences in participation by men and women faculty in reporting inventions were observed based on the total number of invention disclosures and the number of faculty who disclosed during the study period. As demonstrated through invention disclosures, women faculty increasingly engaged in offering their discoveries for possible commercial development to benefit the public. However, they remain much less likely than their men counterparts to be involved with start-up companies and in leadership roles among companies licensing university-generated intellectual property. Universities can track these activities through their licensing offices to devise strategies that encourage and facilitate the engagement of women faculty with technology transfer and formation of new companies.
    PDF, 204.66 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    John Paul and D. Brian Kacedon
    I. Forum for Asserting Patent Infringement Claims • Impact of employees and consultants in forum. • Impact of employees-for-hire in forum. • Impact of participation in Hatch-Waxman litigation in a forum. II. Ripeness of Case for Court Hearing • Prior resolution of patent ownership issues III. Arbitration Clause • Entities subject to arbitration and impact on litigation IV. Modification and Suspension Of Court and ITC Orders • Exhaustion of appeals V. Standing to Sue for Patent Infringement • Reforming patent assignment agreement • Suits by licensees
    PDF, 156.45 KB