Volume XXXV No. 4

Approaches used in successfully mining the technology portfolio of a large corporation.

Patents are rarely worth much if no one other than the patent owner is interested in practicing the covered invention. This is obvious if the objective of patenting is to maximize licensing revenue, but it also applies if an organization patents to exercise its exclusionary patent monopoly. In this case, too, if no one wants to copy a product or service, the "protection" provided by the patent is practically worthless.

The IP world in Europe, including licensing regulations, is rapidly changing. Some of the new laws and regulations have already come into force, other modifications are to follow shortly. The following is a brief overview of the most important drafts of regulations of this kind, which will dramatically affect the world of IP protection and licensing in Europe.

Cotton production is an important crop worldwide and has grown into one of Australia's biggest agricultural industries, contributing around $900 million a year in export income.

At the Licensing Executives Society International Conference 2000 in Amsterdam, a workshop was presented in which the allocation of ownership to inventions made in performance of joint development agreements was addressed. The format comprised a brief background statement regarding the nature of joint development agreements, the establishment of a hypothetical situation and the presentation of papers by several members from Canada, the Czech Republic, Japan, Malaysia, the United Kingdom and the United States. What follows is the background statement, the hypothetical statement and the individual papers from the LESI Conference 2000.

In the United States, inventions are owned by the inventors unless they are under some express or implied obligation to another. If several inventors jointly make an invention, the invention is owned jointly by each of them.

The position in the UK is broadly similar to that discussed for the US. In the UK however ownership of employee inventions is regulated by the Patents Act 1977. References to section numbers are to sections of this Act.

Unlike in the US, an invention made by an employee who had used data or means placed at his disposal by the employer accrues to the employer even if his contract of employment does not require him to engage in any inventive activity. The employee will be entitled to equitable remuneration that may be fixed by the Court.

To understand the current situation of the IP protection and joint patent ownership matters in the Czech Republic, it is necessary to look briefly into the history.

In Japan, if inventions are made by employees, the inventions are owned by the inventors unless an agreement exists between an employer and employees concerning ownership of the inventions.

Under the Canadian Patent Act, a person who believes he is the first inventor of an invention is entitled to apply for a patent on the invention. 1 If the inventor assigns his rights in the invention to another person, then the proper applicant will be the person to whom the invention was assigned.

Volume XXXV No. 3

Valuation methodologies offer a variety of approaches to estimating the value of a drug as it proceeds through governmental testing toward approval. This paper presents an example of the determination of value of a drug developed by a start-up pharmaceutical company. The value determined reflects the lost opportunity to license the drug in one country in which the company's law firm failed to obtain patent protection for the drug.

Basic terms are identified, answers to some of the fundamental questions are provided and information is provided about what leading companies are doing to realize value from their patent portfolios. Provides a basis for considering what your company or client could do and how to do it.

Although academics and industry have been working together for years, the frequency, breadth and intensity of these relationships has soared in the past decade. Fueled in part by a heated global economy, the forprofit community can no longer rely solely on its own laboratories to provide the needed technologies necessary to remain competitive. Likewise, shrinking federal budgets have caused the academic research community to look for alternative sources of funding. Moreover, specific legislation (to be described later), favorable towards licensing, has incentivised the universities to look for commercial outlets for their innovations. The sum total: never has there been a better or more appropriate time for the academic and for-profit communities to work together, for the benefit of each other and society as a whole. But the devil is in the details.

It would be difficult to conceive that any chief executive officer, investment banker, corporate counsel, accountant, financial adviser or consultant could or would ignore the unprecedented frequency and staggering proportions of recent merger and acquisition activity or the ramifications of such unions upon their company or clients. Proposed "mega-mergers" are being announced on a scale never seen before. In this age of electronic commerce, the marriage of corporate, media and industrial giants is hastening the realization of a so-called "global economy."

In the process of both evaluating a new technology and attempting to determine the most logical potential for success, various factors are required to ascertain what the true opportunity may be. Part of the process is to have the right questions to ask of the inventor or principal investigator. That is the purpose of this article.

Merchandising could be defined as the use of renowned names, devices, characters, images, etc., (marks) on products directed to the consumers. Normally such marks have reached a high popularity, whether temporary or long-term, and their evocative power can be used for attracting consumers to buy or use the goods on which they are reproduced.

This paper was presented at the LES European Conference held in Venice, Italy, in 1999 and is directed to the merchandising aspects of trademarks.

After centuries of uncertainty, tools are now available to standardize measures of both the value and risk of intangible assets. Today, buyers and licensees of intellectual property assets, just like investors in stocks, bonds, commodities, options and other liquid financial instruments, can weigh quantitatively the value and risk of assets they are considering acquiring because they have access to the tools of other disciplined financial markets. Today, intangible assets are starting to become liquid financial instruments in a global market made possible by the reach and bandwidth of the Internet.

The well known case of Georgia Pacific v. United States Plywood- Champion Papers, Inc., 446 F.2d 295, 296-97 (2d Cir.), cert. denied, 404 U.S. 870, 30 L.Ed.2d 114, 92 S.Ct. 105 (1971) ("Georgia Pacific") has been applied to patent damages since that decision was upheld at the circuit level a number of years ago. In Georgia Pacific, the trial court set forth a set of 15 factors, that have become known as the "Georgia Pacific factors" that courts use as a guideline to determine a reasonable royalty between the patentee and the licensee under a hypothetical negotiation at the time of first infringement.

Athena Diagnostics was founded in 1989 as a specialized immunological reference laboratory for muscular dystrophy testing, and has since become successful based upon the commercialization of genetic discoveries. One of the keys to Athena's success was making available novel advanced diagnostic services. In this article, the author outlines the benefits and challenges related to the company's strategies.

Volume XXXV No. 2

The classic case of product piracy is the counterfeiting of proprietary articles. Manufacturers, who spend a great deal of money on research and development in order to put their products on the market with the benefit of an established brand, suffer major disadvantages, in particular of an economic nature, as a result of fakes, imitations and the like.

This paper provides a brief overview of licensing and trace in the cosmetic industry to provide insight as to why large multi-nationals such as Unilever are involved in licensing in this area. As well as providing reasons and examples, the paper also addresses some important practical considerations and key terms that should not be overlooked when concluding licenses of this nature. Formalities and pitfalls to watch out for are also covered.

This paper draws on a survey conducted among 450 major French companies. It displays the main statistical results and compares them with previous studies performed by the French Ministry of Industry (SESSI), the French Patent Office (INPI) or academics. As compared to these previous studies, ours is based on quite a small sample, but it relies on very detailed information about contractual practices, while most of the others are based on very vague information on transferred resources, implemented contractual provisions, payment mechanisms , etc.

Although biomedical research in Alberta, Canada, has attained a very strong international reputation, this strength has not fully translated into commercial success, where commercialization was and is an attractive and feasible option. Case studies have shown that when commercialization has occurred, the coordinated efforts of municipal government, academic institutions and provincial/state government in the creation of incubator facilities has led to the growth of companies, with a resulting positive impact on local economic development.

In today's world and in business, knowledge and its transmission have become the key to social and economic development. Knowledge has become a way to understand and use the forces of nature; to design artifacts and, more generally, goods and products; to conceive, create and organize factories; and, in a wider sense, to understand and to know our environment. But only in the last 50 years has knowledge become the leading tool to succeed in our society and to gain social status. It is true and not excessive to say that our society has reached a stage in which knowledge, more than any other factor, has become the main key to social and economic development, to competitiveness, to military strength and, generally, to success.

This presentation by Simona Cazzaniga and Charles L. Casassa takes into consideration two principal elements: • the object of license contracts under consideration in the present workshop, namely foodstuffs and agrochemicals; • the Italian regulatory framework that, beyond that of the European Community or that which derives from the European Community regulatory framework, must be taken into consideration for licenses of trademarks, patents and know-how relative to foodstuffs and/or agrochemicals produced or sold in Italy. With respect to the Italian regulatory framework, therefore, two categories of laws relative to or applicable to license contracts will be examined:

The Brussels Convention of 1968 and subsequent similar conventions have made it possible to litigate before a judge of a member state the infringement of a patent registered in another state. If such litigation (litigation in country A concerning the infringement of a patent registered in country B) is pending, a judge subsequently seized in the country where the patent is registered does not have jurisdiction. In several European countries it is possible to start an action for declaration of non-infringement. If an action for declaration of non-infringement of a foreign patent is brought before a judge in a country where the judicial system is not particularly quick, this move may delay or even jeopardize the enforcement of industrial property in all Europe.

ABB Turbo Systems Ltd. is the world's market leader in the design and manufacture of exhaust gas turbochargers for diesel engines (>500 kw). The turbochargers are used to improve the performance of engines in the marine, railway and power generation industries. The company's turnover (1988) is some 370 million Swiss francs of which more than 12 percent is re-invested in the development of new technology. The cornerstones of the company's success have been, and still are, technical superiority (products and application engineering) top quality, worldwide after-sales networking and longterm business (license) relationships with carefully selected partners.

In order to reduce the judicial backlog of patent cases, and to make it easier and more dependable for the issuance of preliminary measures, the institution of a private body of advisers (Council of Industrial Property) is in force in Italy.

Under U.K. law, the doctrine of privity of contract means that, as a general rule, a contract only can confer rights or impose obligations on the parties to that contract. Even where a contract is made with the express purpose of conferring a benefit on someone who is not a party, that person (the third party) has no right to sue on the contract. The Contracts (Rights of Third Parties) Act 1999 ("the Act"), however, which came into force on November 11, 1999, has created a significant exception to the doctrine of privity of contract by providing that, in certain circumstances, a third party is now able to enforce the terms of an agreement in its own right. As such, it may have a dramatic effect on all types of contracts, including licences of intellectual property, entered into under English law. The implications for the licensing of intellectual property rights could be far-reaching.

Volume XXXV No. 1

Current uncertainties in law put young biotech companies in Europe at global disadvantage

A look at individual trademark licensing agreements in relation to EU antritrust law

Selected provisions of EC's proposal for a Directive on electronic commerce are examined

Insights into transitioning from pure licensing strategy to a portfolio of subsidiaries, joint ventures

Review of current status of software patentability as viewed in Europe

How using pattern of gap analyses can provide answers for CEO questions about corporation's intellectual assets

A simple and practical method for determining upfront fees for new technologies based on modified replacement cost

Licensing should be in corporate strategy; quality, well-managed portfolio is key

Today's competitive, global business atmosphere requires prior joint R&D agreement

Will the nascent BioChip Industry survive the Challenge of Licensing IP? Here are some ideas