les Nouvelles - December 2023

Join LESI for its next les Nouvelles LIVE! —December 14 at 10am EDT | 4pm CET via zoom (as always, we will record this session for those who can’t make it) for an online event featuring the “making-of” stories told by the authors in les Nouvelles. The December 2023 edition discuss artificial intelligence, SEPs and prospects for High-Growth Technology Businesses, among other topics.
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  • les Nouvelles - December 2023 - Full Issue
  • Volume LVIII No. 4
    PDF, 12.75 MB
  • Public And Private Initiatives To Accelerate The Development And Diffusion Of Green Tech Part II
  • Aileen M. Sanguir
    Environmental degradation has brought green technologies to the forefront as a much-needed means to a sustainable end. Part I of this article1 introduced the notion of green tech and how patents are instrumental for attaining a sustainable future. Cutting-edge technologies result from multi-year research and development (R&D) by companies that strive to come up with new ideas and turn them into useful inventions. This requires considerable investment in R&D. The cycle of innovation is relentless; the higher the investment, the higher the chances of ground-breaking and meaningful outcomes for consumers. The same applies to green technology. Different stakeholders from different industries have sustainable goals and aim towards green innovation. These objectives require capital and sufficient Intellectual Property Rights(IPR) protection.
    PDF, 596.82 KB
  • Regulatory And Legislative Trends Impacting Standard Essential Patents (SEPs) In The United States And Europe
  • Natalie Raffoul, John Donch Jr., Peter Toto and Stéphane Tronchon
    Standard Essential Patents (SEPs) are patents that cover technologies that are essential to the implementation of voluntary industry standards. These patents play a crucial role in promoting innovation and the writing of standards containing these innovations enables interoperability among different products and services competing on the market. However, the licensing and rate setting processes for SEPs, which are handled outside of the standard setting process, have been subject to significant scrutiny and debate. In addition to court decisions, regulatory and legislative trends are shaping the landscape for patent owners and implementers of SEPs. This article will explore recent and predicted regulatory and legislative developments impacting SEPs in the United States, Europe, and globally, while considering the perspectives of both patent owners and implementers of SEPs.
    PDF, 705.83 KB
  • Royalty Free vs. RAND Licensing Of Video Codecs: Hidden Costs And Uncertainties?
  • Igor Nikolic
    Video is ubiquitous. We watch video clips on YouTube, TikTok or Instagram, make videos on smartphones, have conference meetings on Zoom or Teams and stream movies and TV shows on Netflix or Amazon Prime. To do so, we use smartphones, tablets, laptops, or smart TVs. Behind the mass availability of videos of different quality lie video codecs. They compress the original size of the video into a much smaller format, allowing us to make and watch videos on countless numbers of devices. Compression is important because many video clips are consumed on connected mobile devices, and a majority of the content of the cellular network is video.
    PDF, 564.99 KB
  • Technology Transfer Agreements: Impacts Of New Transfer Pricing Rules, Exchange Rate Framework, And Registration With The Brazilian Patent And Trademark Office
  • Adriana Guimarães de Paula, Bruna Rego Lins, Bruno Habib Negreiros Barbosa, Gabriela Voss Chagas Lessa Villaca, Henrique Annicchino, Luiz Henrique Sued Leão and Rafael Fernandes
    For many years, the scenario for recording agreements for the license of trademarks, patents, utility models, industrial designs, technology transfer, technical assistance services and franchises remained unchanged in Brazil. However, recently, significant changes have emerged, bringing about substantial impacts. Among these transformations the following stand out: a) the New Exchange Rate Framework, which significantly altered the requirements for royalty remittance; b) the New Transfer Pricing Rules, which influenced tax deductibility; and c) the New Rules published by the Brazilian Patent and Trademark Office (BPTO), which modified the formal requirements and some technical aspects related to the recordation of contracts. In this article, we will explore these changes, analyze their impacts, and discuss relevant issues, such as the requirement or exemption of recordation of the agreement for the purpose of royalty remittance and tax deductibility.
    PDF, 553.94 KB
  • Prospects For High-Growth Technology Businesses
  • Adéla Dvořáková and Adam Jolly
    New funding and business models based on IP as an asset are creating the potential for Europe’s high-growth tech ventures to close the gap with their peers in the United States. At the High-growth Technology Business Conference in November 2022, some of the most promising developments were highlighted by those actively engaged in creating and retaining value in new industries and markets. This article features a selection of their views.
    PDF, 552.93 KB
  • Agricultural Biotechnology Commercialization In Iran: Challenges, Solutions And Benefits
  • Behrouz Fatehi Khouzani, John A. Fraser and Pejman Azadi, PhD
    Today, commercialization of biotechnology is of great importance with benefits that increase the national income of countries and their competitiveness in the global market. While Iran has a significant position in Asia and the Middle East through publishing biotechnology scientific articles, the existing potential for commercialization of agricultural biotechnology (hereinafter agbiotech) has not yet been fully realized. Here we review the challenges of agbiotech commercialization in Iran. The two terms are used interchangeably in this paper, and both include the activity of knowledge exchange (consulting, know-how, etc.) in addition to the transfer of rights to patented inventions. The results of our review in Iran showed that the five main challenges of commercialization of agbiotech in Iran are 1) management and policymaking; 2) communication, market needs and adoption uncertainty; 3) intellectual property regulations; 4) investment, infrastructure and facilities, and 5) characteristics of human resources. Also, we discuss as a case study based on our experiences in the Agricultural Biotechnology Research Institute of Iran (ABRII), the impact and benefits of the transferred and transferable ABRII research findings based on techniques such as plant tissue culture. Finally, we conclude with several solutions addressing the five challenges recommended for policymakers to improve and accelerate the commercialization of agbiotech in Iran.
    PDF, 1.06 MB
  • Profit Apportionment in Intellectual Property Infringement Cases—Part I: A Comparative Analysis Using Google Ads and Conversion Ratios
  • Doug Bania, Edgar Bustillos, and Joe Grekoski
    Intellectual Property (IP) infringement cases often require examining the financial impact of unauthorized IP use. In these cases, profit apportionment must be considered to determine the financial contribution related to the unauthorized use of the IP. Although experts use various approaches to determine profit apportionment, this article explores one objective and quantitative approach using Google Ads analytics. Specifically, we employ a comparative analysis to assess the additional profits, or incremental profits, related to paid keywords that incorporate a disputed trademark in online advertising compared to paid keywords that do not include the disputed trademark.
    PDF, 1.08 MB
  • Commercialising Trade Secrets And Know-How
  • Jake Marshall
    On 19th September 2023, LESI’s Patent & Technology Licensing Committee hosted a webinar that brought together industry experts to discuss their experiences of using undisclosed information (such as know-how and trade secrets), and how to protect and value this information during commercialisation. On the panel were Roberto Dini, Metroconsult; Subodh Kumar, Tata Consultancy Services; Matthieu Lebrun, Sanofi; Jennifer Pierce, McCarthy Denning; Federico Pogliani, Pirelli; Munish Sudan, Tata Steel; and Fernando Da Cruz Vasconcellos, Valuation Consulting. This article provides an overview of the key discussion points and insights shared during the webinar.
    PDF, 547.15 KB
  • Code In Law Or The Challenges Of Qualification On Software Licensing
  • Pierre Nieuwyaer and Karine Disdier-Mikus
    Three recent decisions from the French Supreme Court shed some light on protection regimes for computer programs and provide an opportunity to consider the consequences of these regimes in case of a breach of the license by the licensee.
    PDF, 546.16 KB
  • Small And Medium Enterprises (SMEs) And IP
  • Patrick Terroir,* revised by Dario Mohammadian 2023
    With the introduction of new technologies and the globalization and transformation of the value chain, the role of new and small firms in innovation and economic development has increased tremendously since the beginning of the 1980s to today.
    PDF, 1.17 MB
  • TTO Approach To Identifying Green Science Using AI For Technology Transfer
  • Magda Voltolini, Dr. Naceur Tounekti, and Steve Harris
    The goal of this article is to provide considerations for identifying “green academic patents” using artificial intelligence (AI) for technology transfer, while also acknowledging the challenges of ensuring an effective patent portfolio classification by green science.
    PDF, 1.48 MB
  • A Digital Technology Passport To Better Enable The Rapid And Safe Adoption Of Artificial Intelligence
  • Kristen Migliorini
    Our position on how Australia should tackle the challenges of AI has become more nuanced since we first wrote about these policy issues under the previous Australian government’s AI framework.
    PDF, 686.35 KB
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