les Nouvelles - December 2019

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  • les Nouvelles - December 2019 - Full Issue
  • PDF, 6.22 MB
  • Patent Aggregation: More Than Patent Trolls
  • Dominique Christ, Niccolò Galli and Cornelia Peuser
    Patent trolls are just a small piece of the patent aggregation puzzle. A myriad of electronics companies, with and without production capabilities, pursues patent aggregation by building patent portfolios and monetising them beyond manufacturing. So far, it is unclear whether such patent aggregation activities have adverse effects on innovation. This article replaces the myopic discussion about patent trolls with a wider picture—that of patent aggregation. It analyses the rationales and evolution of this phenomenon, orders the domain of patent aggregators, and presents the effects patent aggregation activities can have on technological development. Only the interplay of patent and competition laws is considered apt to reconcile patent aggregation with innovation.
    PDF, 161.07 KB
  • Recent Trends In Effective Royalty Rates Of Biopharma Alliances
  • Mark G. Edwards
    The September 2017 issue of les Nouvelles published an article entitled “Effective Royalty Rates in Biopharma Alliances: What They Are and Why Use Them in Negotiations.” This article was based on an analysis of approximately 1,350 unredacted biopharma licenses and related agreements commenced between 1997 and 2016.
    PDF, 164.37 KB
  • Licensing Standards Essential Patents (SEPs) Round Two
  • Joseph A. (Joe) Alfred
    My first job in standards was also my first job in intellectual property. I worked for a district manager whose job was full-time standards. When I introduced the idea of FRAND to him, his reaction was, “What other way could there possibly be to license patents except in a fair and reasonable manner?” My response, of course was, “Why we could license patents in an unfair and unreasonable manner.” While there is some jest in this, there is a fundamental underlying assumption. Patents that are essential to a standard must be licensed in a fair, reasonable and non-discriminatory manner. If we truly understand the English and legal meaning of these words, there is no wiggle room for so-called super FRAND rates nor for charging a premium for a standards essential patent (SEP).
    PDF, 159.25 KB
  • Non-Discrimination Under FRAND Commitment: One Size Fits All, Or Does Not Fit At All?
  • Ruben Cano Perez
    This paper discusses the ‘Non-Discriminatory’ limb of FRAND in the standard development context. Initiatives, such as Avanci, or comparable licensing practices in the music sector, will be presented. The discussion will focus on the Internet of Things and 5G technology markets, assessing the importance of standardised technology, and potential reasons for competition law to be on alert.
    PDF, 217.54 KB
  • Why Digitalization Needs Value-Driven Intellectual Property Strategies
  • Beat Weibel and Rudolf Freytag
    Digitalization, with its enormous opportunities and risks, is the dominant game-changer of the moment for every company. In this context, many companies are wondering what the right intellectual property strategy (“IP strategy”) might be—because such a strategy must on the one hand effectively protect the business of the future. On the other hand, changing conditions make that same future very uncertain. One method has been tested in practice and can offer such protection: a value-driven IP strategy together with a value-driven business strategy. The authors show from their own experience how this approach works in both theory and practice. A value-driven IP strategy makes IP a unique strategic competitive tool for businesses.
    PDF, 297.97 KB
  • Evaluating Standards Essential Patents In Mobile Cellular
  • David Cooper
    Companies develop open standards at their own expense and make them public, so that anyone can build products that use them. This at first sight seems economically unsustainable: how can some companies afford to contribute time and effort into developing standards for public use, when competitors who do not contribute are able to use the results? The answer to this seeming contradiction is patent royalties. Companies that contribute novel ideas to the standards protect them by filing patents. Where a patent is used in the standard, it is called a “Standards Essential Patent” (SEP). Companies that own SEPs charge royalties for their use, and the stronger the portfolio of SEPs owned by a company the higher the potential royalties. This article examines how the size of a SEP portfolio can be estimated using the 4G/LTE cellular system as an example. It provides new results on the number of SEPs in an LTE phone and discusses previous studies.
    PDF, 317.90 KB
  • Patent Law Based Concepts For Promoting Creation And Sharing Of Innovations In The Age Of Artificial Intelligence And Internet Of Everything
  • Heinz Goddar and Lakshmi Kumaran
    When the Venetians created the first patent system in the 14th Century, the role thereof, as it is widely believed by scholars, lawyers and users of today’s patent systems, has been to encourage inventors not to keep their inventions secret anymore, rather to disclose them through a governmental channel to the public. That would, according to the intention of the creators of the first patent system and still believed to be applicable today, give “followers,” i.e. “improvers” of certain technologies that otherwise would have to be held secret to stand, as Isaac Newton has expressed it, on the shoulders of giants etc., thereby improving the speed of technological developments.
    PDF, 115.40 KB
  • Will Congress Stop Alice From Making Section 101 Any More Curious?
  • Steven M. Shape
    This June saw the fifth anniversary of the U.S. Supreme Court’s decision in Alice Corporation v. CLS Bank International, a major patent law case which has wreaked havoc on software patents, many of which are now invalidated because courts have deemed them to claim nothing more than abstract ideas. Along with spawning various Lewis Carroll references, Alice has also created an explosive rift in the patent community between those who feel that the case was disastrous in its outcome, and others who say that the decision protects true innovators from facing abusive litigation based on overly broad patent claims.
    PDF, 105.00 KB
  • Making The Make/Buy/Partner Decision In Open Innovation: The Simple Decision That’s Not So Simple
  • Gene Slowinski and Matthew W. Sagal
    Licensing executives are at the cutting edge of product commercialization when that commercialization requires the use of external technology. LES members lead the way as the firm replaces the “not invented here” syndrome with the “invented anywhere” approach. There are various terms used to describe this activity. The most common is Open Innovation.
    PDF, 177.52 KB
  • Compulsory Licensing Of Patents In India
  • Rajeshkumar Acharya and Girishchandra Tanna
    Compulsory licenses are authorizations given to a third-party by the Controller General of Patents to make, use or sell a particular product or use a particular process which has been patented, without the need of the permission of the patentee. 2. Compulsory License and TRIPS Agreement: Provisions of compulsory licensing are there in the Article-31 of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement. Compulsory license can be granted on certain conditions stipulated in the Agreement.
    PDF, 123.76 KB
  • Korean Supreme Court First Ruled That Scope Of Extended Patent May Cover A Different Salt Of Original Drug
  • Min Son
    In order to maximize profits, patent holders often license their inventions to a third party and generate considerable profit for the duration of the patent term since third party’s unauthorized use of the patent during this term may constitute patent infringement. Patent holders usually enjoy exclusive rights in their patented invention for a period of 20 years form the filing date. In many countries, this patent term may be extended further. Korea is one of such countries.
    PDF, 163.32 KB
  • Specifics Of Patent Litigation In Russia
  • Sergey Medvedev and Sergey Vasiliev
    Only Russian patents, which are granted by the Russian Patent Office (RU PTO) under the national procedure or PCT-application process, and Eurasian patents, which are granted by the Eurasian Patent Office (EAPO), are enforceable, and, therefore, subject to litigation in Russia. Foreign patents as well as patents pending cannot be litigated, although pending patents are granted a provisional (interim) protection.
    PDF, 126.29 KB
  • A Review Of A Decade Of Limitation And Revocation Procedures At The EPO
  • Frédéric Cavallo
    The limitation and revocation procedures were introduced, by Article 105a-c EPC, at the European Patent Office (EPO) with the revision of the European Patent Convention (EPC), which entered into force on 13 December 2007. In the history of the European Patent Office, the limitation and revocation procedures are the only new procedures introduced since the founding. They offer an additional possibility to patent proprietors to centrally limit or revoke their patents, without having to enter the corresponding national procedures. After more than a decade from their entry into force, this article will address the main procedural aspects of both procedures, providing practitioners better chances of success. This article will also shed light on statistical data relating to both procedures. For more details, refer to the EPC and to the Guidelines for Examination in the European Patent Office, Part D-X.
    PDF, 472.50 KB
  • 5G Licensing—Teamwork Makes The Dream Work
  • Patricia Cappuyns and Jean-Christophe Top
    Data is the new oil’1 is a sentence that gets thrown around a lot these days and for good reason. Data is the new kid in town. Where in the past, barely anyone seemed to care about its potential, its meteoric rise and the thousands of new companies using it as the foundation for their business models have definitively changed that. The amount of data that is being transferred on a daily basis continues to increase every year: data traffic is expected to increase tenfold between 2016 and 2022 and we will by then be looking at almost one zettabyte2 of mobile traffic.3 Add the ‘Internet of Things (IoT)’ into the mix, with its ever-growing number of interconnected devices, and it is not hard to see why the current 4G cellular network is in dire need of replacement. Enter 5G, the technology that is touted as the key to power us through this fourth industrial revolution. A true ‘gatekeeping’ technology that will allow for multiple new business opportunities, 5G sees its main players now lining up to lead the race. This race for our future communications will of course require compliance with FRAND rules, which remain almost as elusive as in days past of 3G and 4G technologies. In this SCOOP from Europe, we delve into the 5G guidelines for standards-essential patents (“SEPs”) and identify possible pitfalls when negotiating a license. The race is on!
    PDF, 117.41 KB
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