les Nouvelles - December 2011

  • les Nouvelles - December 2011 - Full Issue
  • PDF, 4.26 MB
  • Simply Wrong: The 25% Rule Examined
  • Douglas G. Kidder and Vincent E. O'Brien
    While there have been numerous articles citing the 25% Rule, there are none that provide any sound empirical or theoretical basis for the rule. On the contrary, there are significant theoretical problems with the rule and attempts to justify it empirically fall flat. The normative arguments (that the 25% Rule is used by some licensing professionals) may be individually correct, but it does not raise the 25% Rule to the level of science or explain why the same patents licensed to multiple companies are generally licensed at the same royalty rates.
    PDF, 203.87 KB
  • Arbitration: A Quick and Effective Means For Patent Dispute Resolution
  • Anne St. Martin and J. Derek Mason
    Entering into a properly crafted agreement to arbitrate provides the parties to a license agreement or other contractual business relationship the assurance that any dispute arising out of the contract will be decided by a technologically knowledgeable neutral arbitrator (or panel of arbitrators) in a manner that will be relatively inexpensive, confidential, and final.
    PDF, 213.43 KB
  • Replacing The 25 Percent Rule With Fact-Based Evidence−A Guide To Finding and Analyzing Royalty Rates
  • David Jarczyk
    Finding and analyzing fact-based evidence may provide the most defensible method for approximating reasonable royalty rates in the wake of the Uniloc Ruling. There is a substantial repository of fact-based evidence available in the form of third-party license agreement data and documentation, and specialized royalty rate data providers can provide analysts with an efficient and reliable portal to finding representative transactions. As a result, when comparable transactions are identified and analyzed with a thorough methodology and comprehensive search process, fact-based evidence can support the resulting analysis with proof of thorough due diligence that can stand up in litigation matters.
    PDF, 290.04 KB
  • The Three Classes Of Patent Usage
  • Kelce S. Wilson and Claudia Tapia Garcia
    Regarding licensing (including refusal to license), there are three classes of patent usage: (1) product differentiation, (2) income, and (3) cost avoidance. Coincidentally, there are also three levels of litigation quality: (1) business necessity, (2) managed risk, and (3) nuisance.
    PDF, 205.53 KB
  • The Case For Admitting Settlement License Agreements In A Reasonable Royalty Analysis
  • Stephen J. Conroy, Robert Knudsen and Russell Mangum
    We conclude our analysis by providing a model to analyze the settlement process. We briefly examine how the model can be used to assess the influence that the cost of litigation may play in the outcome of negotiated licenses (either SLAs or NSLAs). In so doing we demonstrate that methods exist for taking into account one of the main objections to the use of SLAs (i.e. the cost of litigation) and that SLAs may indeed provide valuable and unique information important to reaching a reasonable royalty conclusion.
    PDF, 219.80 KB
  • Model Contracts and Supporting Initiatives In Europe Facilitating Collaboration Of Publicly-Funded Research Organizations (PROs) With Businesses — Part II
  • Thomas L. Bereuter, David Jerolitsch and Peter G. Heimerl
    Model contracts for collaborative R&D between universities or other publicly-funded research organizations and businesses have been developed nationally by platform- as well as by single-initiatives. They intend to facilitate negotiation of terms and conditions so that partners can enter into relationships enabling effective and efficient technology transfer. As these initiatives are on a national basis corresponding national legal regimes are reflected.
    PDF, 253.98 KB
  • The Role Of R&D Agreements Under German and EU Law– Practical Guidelines Under Contract, Tax, Anti-Trust & Subsidy Law — Part I
  • Christian Czychowski, Heinz Goddar, Annette Keller and Dirk Pohl
    The Role of R&D Agreements in BusinessTechnology Transfer in General and R&D nnovation is the driving force in a globalized world, securing growth and employment. The success of many businesses depends on their ability to present innovative products. As the cycles of innovation are getting shorter, the role of research and development is getting more important. A high level of dynamism is necessary to meet the challenges of the so called “knowledge society.”
    PDF, 273.32 KB
  • Patents and Licensing As Metrics Of Technology Transfer: An Example From Clean Technology
  • Mark V. Muller and Annemarie Meike
    Surely developing countries are called such because they are evolving and developing infrastructure. One would imagine that taking on a patent prosecution and protection infrastructure, which is required for a licensee and licensor to believe there is value in licensing, would be one of the longer-term, lower-priority issues for a developing country. Are patented technologies making a difference in the third world in any respect? Again, they are likely not.
    PDF, 207.11 KB
  • A New Era For Design And Copyright In Italy
  • Massimiliano Patrini
    Design is one of the most important industrial assets of the Italian modern economy. From fashion to furniture, the role played by the design is critical and creates occupation and richness in our country. Despite the huge relevance of the “design industry,” Italy has delayed for a very long time the implementation of one of the foremost instruments of protection of design works, that is copyright.
    PDF, 251.53 KB
  • Software IA In The Cloud — Part 2: Records and Databases
  • Dwight Olson
    Cloud computing “lets” the service provider mine data, but how do we deal with ownership, recovery, control and value propositions. Cloud computing only makes these issues more complex with loss of direct physical access over the data. We need to think clearly about the issues and perhaps include new terms in our “cloud licenses” just as ICANN did. Maybe we should think about data as “trade secrets” or provide provisions for third party audit (similar to a financial auditor) that monitors integrity. These would be a good start for LES licensing professionals. Welcome to the cloud!
    PDF, 239.06 KB
  • Patent Infringement Risk Exposure Analysis
  • Fadi Micaelian, Matt Huey, Richard Schank and Sanjay Prasad
    This paper analyses a company’s overall exposure to patent infringement actions. While companies currently assess their risk mainly by evaluating the strength of their portfolio in certain key class codes, often referred to as heat-mapping, this paper advocates an approach that considers a statistical perspective to patent infringement litigation outcome. The rationale behind this work is that, on an aggregate basis, litigation outcome encapsulates all the factors that affect the exposure of an entity. In order to characterize this exposure we have attempted to develop some metrics around the size of the company–expressed in annual revenue. Largely based on this determination, a web application has been developed to allow users to determine several key characteristics of risk by entering basic company information. This paper explains the assumptions, determinations and applications of this analysis and is focused mainly on patent litigation occurring within the software industry.
    PDF, 461.74 KB
  • Recent U.S. Decisions And Developments Affecting Licensing
  • Brian Brunsvold and John C. Paul
    BAYH-DOLE DOES NOT AUTOMATICALLY GRANT UNIVERSITIES OWNERSHIP OF FEDERALLY FUNDED INVENTIONS OF THEIR EMPLOYEESThe ownership of patents rights developed with federal funding at small businesses and universities is dictated by the Bayh-Dole Act of 1980, 35 U.S.C. § 202(a). Specifically, the Bayh-Dole Act gives universities the right to “elect to retain title” to patents on inventions generated through federal funding. Most universities draft employee contracts so that they automatically obtain patent rights to inventions created by their employee through federal funding.
    PDF, 263.97 KB
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