les Nouvelles - December 2021

Join LESI in its les Nouvelles LIVE online event to hear the “making-of” stories from the authors of articles included in the December 2021 edition.  Articles address timely issues important to your practice.

Watch the short session highlighting what you’ll find in this month’s edition!

  • les Nouvelles - December 2021 - Full Issue
  • PDF, 4.92 MB
  • Is The Current IP Framework Still Performing Well In Its Supporting Function Of Introducing New Technologies Into The Market?
  • Matthieu Dhenne, Antonio Di Bernardo, André Gorius, Mark Marfé, Dario Mohammadian and Pierre Ollivier
    The LESI Innovation Trends (LIT) Task Force is a horizontal task force within the structure of LESI Committees. It is responsible for monitoring the factors of change brought by innovation that have a significant impact on the current IP framework, identifying any shortcomings, and proposing corresponding solutions.
    PDF, 141.50 KB
  • Innovation Trends In Energy, Environment And Advanced Materials: Future Challenges For LES
  • André Gorius and Rinaldo Plebani
    The Intergovernmental Panel on Climate Change (IPCC) issued just a few weeks ago its sixth assessment report.1 The main conclusions are dramatically unambiguous: the climate is changing, with sometimes catastrophic consequences around the globe, and the impact of human activities on the change is univocal. As a consequence, drastic changes in societal, economic and simply everyday life models seem today the only possible action levers to reverse or at least mitigate in the long term the trends put forward by the models of the potential future consequence of these trends.
    PDF, 82.35 KB
  • Business Secrets Are At The Heart Of A Good Intangible Asset Strategy For Company Executives
  • Pierre Ollivier and Victor De Leon
    This paper is written by the co-chairs of the Trade Secrets Work Group under the LESI-LIT Task Force in coordination with all other task forces and committees of LES/LESI. It aims at defining the basis of a strategy for the Work Group, thereby attracting vocations and volunteers for future contributions during 2022-H1 as to why it is important to manage business secrets at the strategic level and how to execute in a practical manner such strategy to sustainably increase value creation for a company. We are addressing issues that concern any high-growth enterprise and its upper management.
    PDF, 81.72 KB
  • Why Every Company Should Have A Written IP Licensing Policy
  • Garrett Glover and Randall R. Rader
    While companies may operate under internal standards when it comes to in- or out-licensing intellectual property (IP), few have distilled their licensing strategies into written IP licensing policies. Even fewer companies have made such written policies public. However, documented IP licensing policies can offer a company numerous benefits—both in its real-world licensing initiatives as well as during “hypothetical negotiations” that are commonplace in IP litigation. Moreover, IP licensing policies made public can result in advantages beyond those realized if such policies are kept confidential. Given the advantages, it begs the question of why more companies have not committed their IP licensing policy to writing. This article explores the potential benefits of creating and publishing an IP licensing policy, the impediments companies may face in attempting to do so, and examples of companies that already have public IP licensing policies in place.
    PDF, 98.87 KB
  • Open Source And Formal Standardisation: How To Achieve A Win-Win Situation
  • Jesús Alonso Pérez
    The COVID-19 pandemic has reminded us of the importance of (highly efficient and reliable) connectivity. Despite not being able to travel, we have continued most of the activities related to education and work, while keeping in touch with our loving ones.1 Even in the face of lockdowns, we are free of physical boundaries thanks to standards. Standards allow products and services to be compatible and to inter- operate with each other. In particular formal (or de jure) standards are set and developed in a joint collaborative effort of companies willing to share with others cutting-edge technologies resulting from costly R&D investments under the umbrella of Standard Development Organisations (SDOs).2 In SDOs, stakeholders typically develop standards following principles established for international standardisation, i.e., transparency, openness, impartiality and consensus, effectiveness and relevance, coherence, and consideration to countries’ interest.3 In this context open stands for the accessibility of all interested parties to the standardisation process (including the decision-making).
    PDF, 102.42 KB
  • Key Elements Of Successful Medical Funding Applications For A Development Research Program: The CARB-X Experience
  • Duanghathai Pentrakoon and Ashley J. Stevens
    Despite the substantial and growing investments in medical and healthcare R&D being made globally, securing funding in the medical and health science fields remains very challenging. This paper examines the applications for R&D funding that have been received in three funding rounds by CARB-X since its launch in 2016. CARB-X is an internationally funded, global translational R&D program, which can fund projects to diagnose, prevent and treat antibiotic-resistant bacteria from discovery through Phase 1 clinical testing. We conducted the study via interviews with CARB-X’s project coordinators and analysis of CARB-X’s database of applications. The data available to us only allowed us to perform a qualitative analysis, rather than a statistical analysis. CARB-X uses a stage-gate assessment process1 with four stages—(1) an initial application, referred to internally as the Expression of Interest (EOI) form, (2) the Short form, (3) the Long form and (4) Board Review. For the initial, non-confidential EOI stage, it is vital that the applicant emphasize how the project will tackle the problem and provide sufficient scientific data to give reasonable assurance of technical success. For the second and third stages, program relevance and impact, team capabilities and experience, and overall scientific and technical merit of the program must be justified, since these three attributes are the main scoring criteria used by CARB-X in the assessment process. In the final stage, financial and intellectual property (IP) issues are evaluated prior to decisions on funding. We reach two primary conclusions: (1) CARB-X funding is highly attractive and so the program must be highly selective in the projects it funds; and (2) the success rate for public sector research institutions (PSRIs, which include universities, teaching hospitals, national laboratories, and not-for-profit research institutes) is only half that of corporations and we identify important factors in preparing applications for funding to such programs.
    PDF, 108.72 KB
  • Patent Pools: A Practical Perspective—Part I
  • Julia Brito and Hector Axel Contreras Alvarez
    In the patent law field, ‘pooling’ is defined as the practice by two or more parties to license their patents as a bundle. Patent pools are not a new concept. Registers of them date back to the 19th century, whereas prominent pools emerged for the automobile and aircraft industries in the early 20th century.2 Numerous patent pools have been formed since, evolving over the years on the way they operate. Nonetheless, despite being in the market for such a long time, pools continue to be closely monitored by regulators, academia, and industry, mainly due to their potential (positive and negative) impact on competition.
    PDF, 112.55 KB
  • Licensing Negotiation Groups For SEPs: Collusive Technology Buyers Arrangements? Their Pitfalls And Reasonable Alternatives
  • Igor Nikolic
    One of the experts within the European Commission’s Standard Essential Patents (SEP) Expert Group proposed the formation of licensing negotiations groups (LNGs) by implementers to collectively negotiate with SEP owners and patent pools. Accordingly, LNGs could be used for a more efficient SEP licensing process, particularly relevant in the Internet of Things (IoT) with increasingly new stakeholders entering the market. This article examines how LNGs could work in practice and raises concerns about LNGs turning into hidden buyers’ cartels creating an industry wide collective holdout. As a less restrictive alternative, this article explains how existing patent pools and other similar licensing platforms that aggregate complementary SEPs and provide a onestop shop for licensing already enable the efficiency and transaction costs savings in the IoT with no harmful anti-competitive effects. By gathering inputs from individual implementers before the formation of royalty programs, some licensing platforms can ensure that implementers are consulted and participate in royalty formulations without the risk of collusive outcomes.
    PDF, 115.89 KB
  • Freedom To Operate Conundrum
  • Madelein Kleyn
    A patent grants a negative right to its owner, i.e., the right to exclude others from making, using, exercising, disposing, or offering to dispose of, or importing the invention as claimed. A patent does NOT grant the right of use.
    PDF, 61.00 KB
  • Restoring Inadvertently-lapsed Patent Rights In Europe
  • Simon Keevey-Kothari
    Everything you wanted to know about patent restoration in Europe* (*But were afraid to ask) Attention to detail is of the upmost importance when it comes to managing intellectual property. The unintentional loss of valuable registered IP rights, whether patents, designs or other rights can be extremely distressing. The cost of trying to restore lost rights, from the perspective of time as well as money, can be huge. However, even when registered IP rights have been lost it is sometimes possible to rescue them.
    PDF, 75.62 KB
  • The Cost Approach To Intellectual Property Analysis—Methodology And Principles
  • Robert F. Reilly
    Licensing executives often prepare various types of economic analyses for intellectual property owners and operators. For purposes of this discussion, the term intellectual property includes patents, copyrights, trademarks, and trade secrets. And, for purposes of this discussion, intellectual property owner/operators include developers/inventors, fee simple interest owners, licensors and licensees, joint venture partners, and contract counterparties. Licensing executives prepare these economic analyses for owners/operators in matters related to pricing and structuring of sale or license transactions, financing and securitization transactions, taxation planning and compliance activities, strategic planning and commercialization decisions, fair value measurements and financial accounting issues tort-related and contract-related litigation claims, and other matters.
    PDF, 120.82 KB
les Nouvelles