les Nouvelles - September 2020

Join LESI in its 2nd les Nouvelles LIVE online event to hear the “making-of” stories from the authors of articles included in the September 2020 edition.  Articles address timely issues important to your practice -- including topics on patent exceptions in a time of a pandemic, automatic patent value estimation, and 5G royalty expectations. 

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

  • les Nouvelles - September 2020- Full Issue
  • PDF, 4.06 MB
  • Royalty Rates And Licensing Strategies For Essential Patents On 5G Telecommunication Standards: What To Expect
  • Eric Stasik and David L. Cohen
    In 2010, les Nouvelles published an article that discussed a number of publicly declared royalty rates for LTE (4G).2 A decade later, 5G is the new star walking down the red carpet. This fifth-generation (5G) mobile communications technology provides not only a new Radio Interface Technology (RIT) called New Radio (NR), but also a next-generation core-network.
    PDF, 177.73 KB
  • Copyright: A Historical And Economic Perspective
  • Glenn Perdue
    Patents relate to ideas that become protectable inventions. In contrast, copyrights provide protection for the expression of ideas but do not protect the idea itself. While ideas are at the heart of both, patents address inventive works while copyrights address expressive works. But getting to this current state with copyright law required adaptation to new technologies and societal circumstances. This paper explores this evolution and the means by which economic value for copyrights and other types of intangible assets can be assessed.
    PDF, 99.59 KB
  • Cultivating And Nurturing A Culture Of Innovation In Federal Agencies
  • Mojdeh Bahar and Robert Griesbach
    An entity with the following characteristics should be a vital player in the innovation ecosystem: It has a budget of over $141 billion per year for research. Its institutions consist of 14 research entities spanning all scientific disciplines, covering the entirety of the research and development (R&D) continuum from basic research to applied science. It operates in each of the 50 United States. It has Nobel Prize winners among its scientists, and it has funded prize-winning research (Stein, 2018). A large majority of its senior scientists are fellows in their respective scientific disciplines.
    PDF, 137.66 KB
  • Intellectual Property Valuation Within A Bankruptcy Context: Part One
  • Robert F. Reilly
    There are many reasons why a licensing executive or related professional (hereinafter, "analyst") may be asked to value debtor company intellectual property within a bankruptcy environment. While the focus of this discussion is on valuation, there are also many reasons why an analyst may be asked to conduct an intellectual property damages analysis or transfer price analysis within a bankruptcy environment. Before the analyst is retained, the party-in-interest (and, typically, the party's counsel) should carefully define the intellectual property valuation assignment. Based on that assignment definition, the analyst, the client, and the counsel can all agree on the objectives and the requirements of the valuation.
    PDF, 139.79 KB
  • Endeavouring To Escape From Under-Performing Licensees: The Meaning Of “Endeavour” Clauses
  • Mark Brown, Max Palmer and Sukanya Majumdar
    It is common practice in a wide variety of intellectual property licence agreements governed by English law for the licensee to be granted an exclusive licence to exploit IP within a defined territory for a defined period of time. One of the most common royalty payment mechanics in such licence agreements is for the payment of an annual royalty calculated as a fixed percentage of annual sales turnover or of the net sales price of each "Licenced Product" sold within the territory. Other variations include royalties calculated by reference to unit production or share of net profits. The effect of all such percentage-based royalties is to give the licensor a direct commercial interest in the successful exploitation of the licensed IP: higher sales resulting in higher percentage-based royalties. Due to the exclusive nature of the licence, it is equally important that the licensor is able to either (i) terminate the licence agreement; or (ii) claim for lost royalties, should the licensee be unable or unwilling to properly exploit the licensed IP. Otherwise, the licensor may find itself trapped in a licence agreement receiving significantly less royalties then the IP should be generating.
    PDF, 120.45 KB
  • Patent Exceptions In The Time Of A Pandemic
  • Jean E. Akl
    The blistering race and competition to find a COVID- 19 vaccine is ongoing at a very fast pace. Pharmaceutical companies are scurrying to secure a legal monopoly for the treatment, to control the largest market share, and to ensure a considerable return on their investment, since the demand thereon would be immediate, global, and possibly extending for years and decades to come.
    PDF, 66.18 KB
  • Estimating The Value Of Patents: Reliability Of Automated Methods
  • Héctor Axel Contreras Alvarez
    Cutting-edge technologies being adopted in new sectors (automotive, health, security, etc.), thanks to the Internet of Things (IoT) and various standards, are offering unique experiences to users and economic benefits to manufacturers. However, inexperienced licensees who enter license negotiations on patents required for standardized products and services struggle in understanding the value of the patent portfolio they are looking to license. This has created a market for computer platforms offering automated patent valuation. While these tools can provide an overview of a patent portfolio, it is important that both users and service-providers be aware of the drawbacks and limitations of these automated methods. This paper analyzes the most common factors used by popular platforms and correlates them with the existing evidence about their reliability as value indicators.
    PDF, 176.42 KB
  • Functional Analysis In The Intellectual Property Valuation, Damages, Or Transfer Price Measurement
  • Robert F. Reilly
    Intellectual property owners and operators often need to know a value opinion, a damages measurement, or a transfer price determination regarding their intellectual property. Owners and operators may need to know these conclusions for transaction, taxation, licensing, financing, financial accounting, litigation, strategic planning, and other purposes. To develop these valuation, damages, or transfer price conclusions, owners and operators often retain, work with, and rely upon specialists who perform these analyses. Such specialists may include economists, forensic accountants, valuation analysts, licensing experts, industry consultants, and other professionals. For purposes of this discussion, these
    PDF, 233.82 KB
  • Agricultural Extension: The Precursor To Today’s Technology Transfer
  • Mojdeh Bahar and Robert Griesbach
    Agricultural extension and technical services are important and unique features of the U.S. agricultural system. Extension outreach and technology transfer to stakeholders enable and empower the U.S. agricultural sector. Extension legislation and policies have also been mirrored in many of the technology transfer legislation and policies. One could argue that extension was the first form of technology transfer in the United States. Moreover, extension's principles have been integrated in many U.S. technical assistance programs outside the United States. This paper examines the genesis of the extension program, its relation to dissemination of scientific information, and its effect on subsequent laws and policies.
    PDF, 113.08 KB
  • Contingent Value Rights: Waiting For The Dough
  • Mark G. Edwards
    Contingent Value Rights (CVRs) and other forms of earn-outs are increasingly common features of biopharma acquisitions and asset purchases. CVRs are used to bridge valuation gaps in transactions where, unlike licenses, there is no termination with reversion to the licensor or other unwinding of the agreement. Of approximately 2,600 acquisitions and asset purchases listed in BiosciDB.com over the past decade, 225 (8.9 percent) include a CVR or earn-out component. Last year, of 273 biopharma acquisitions and asset purchases, 34 (12.4 percent) had a CVR.
    PDF, 78.43 KB
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