les Nouvelles - September 2021


  • les Nouvelles - September 2021 - Full Issue
  • Volume LVI No. 3
    PDF, 3.91 MB
  • Empirical Benchmarks To Estimate The Valuation, Damages, And Transfer Price Discount/Capitalization Rate
  • Connor J. Thurman and Robert F. Reilly
    Owner/operators often retain specialized analysts to perform intellectual property valuation, damages, or transfer price analyses. These analyses may be performed for transaction, financing, taxation, planning, accounting, and litigation purposes. Outside of the intellectual property dispute context, these analysts can serve the owner/operators as consulting experts. Or, performing dispute-related intellectual property analyses, these analysts can serve owner/operators—and their legal counsel and other professional advisors—as testifying experts.
    PDF, 171.02 KB
  • Business Secrets, High Potential Assets Under Development
  • Pierre Ollivier, André Gorius, Philippe Simon and Veronique Chapuis
    The importance of business secrets has increased pursuant to the evolution of new paradigms (such as the growing value of data and the development of IT and AI in innovation) and to the creation of a legal protection in many countries and more recently in the European Union and in France. In addition, one must underline that the present digital era creates high risks of illegitimate confidential information disclosures by human error or cyber attacks, as compared to the economy of past decades. Consequently, business secrets should be at the heart of any company’s strategy to protect and value its key confidential information and data, thereby procuring a competitive advantage. The value and the need to protect these business secrets as a particular asset are generally implicitly recognized in enterprises, but not yet fully established. This article aims at explaining how confidential information can be a business secret benefiting from a legal protection and, as a consequence, how its value and even its recognition as an intangible asset can be established to the benefit of the company and its users. The authors have chosen to refer to business secrets in line with the French expression “secret d’affaires,” as it seems to offer a wider approach than the expression “trade secrets” used in some national laws. All these assets relying on highly secured business secrets can also be the basis of immediate business value, not only of future value, for instance in R&D that leads to innovative business models and value creation in strategic alliances, competitiveness, reputation, expertise exposure, etc. High-growth enterprises are naturally particularly concerned, but medium and small businesses or even start-ups should not underestimate their interest either. In conclusion, the governance of business secrets is worth the investment, despite its apparent burden for companies.
    PDF, 193.56 KB
  • Artificial Intelligence (AI)—An Australian Perspective
  • Kristen Migliorini
    The pure economic benefits to artificial intelligence (AI) are significant. While economists are analyzing the impact that AI will have, there are some real complexities to AI that are in the early chapters of a largely unwritten story.
    PDF, 132.46 KB
  • Compulsory License Provisions In Biopharma Alliances
  • Mark G. Edwards
    Due in large part to the widely divergent prices of, and ability to pay for, pharmaceutical products around the world, the prospect of compulsory licensing by one or more governmental authority has loomed over the biopharma industry for several decades. With several hundred COVID alliances in place, and expectations running high for imminent regulatory approvals of multiple COVID-related therapeutics and vaccines, now seems an appropriate time to examine industry custom and practice with respect to compulsory licensing provisions in biopharma alliances.
    PDF, 80.74 KB
  • Licensing SEPs—Round Three
  • Joseph A. Alfred
    Patents that are essential to a standard must be licensed in a fair, reasonable and non-discriminatory manner. If we 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 standard essential patent (SEP). We should be able to ask three simple questions and derive a FRAND rate.
    PDF, 104.77 KB
  • Technology Convergence And The 21st Century Car
  • John Carney, with Matteo Sabattini, Bowman Heiden and Richard Vary
    Technology is changing the world today in almost every market and product sector. Consumers are increasingly embracing technologies enabling “people-centric smart spaces.” Smart phones enabled a single device to efficiently navigate the Web and Webbased commerce of purchases and banking, host a multitude of applications, and take and make phone calls, of course. Technology convergence came to the attention of many consumers in the improved functionality of today’s smart phones. Through smart phones, humans can interact with their environment and the IoT. A recent study by Gartner identifies a number of the elements of this people-centric smart space trend that are driving convergence into many products and markets.
    PDF, 116.51 KB
  • Connected Cars And Technological Innovation: The Right Policy For The European Union And The United States
  • Adam Mossoff & Urška Petrovcic
    The car industry is going through one of the most revolutionary changes since the invention of the car.1 Connectivity, which permits cars to share and obtain information with other devices, is a central piece of this historic change. It will increase road safety, as “smart” cars will be able to anticipate events unforeseeable to human drivers, such as road accidents, broken-down vehicles, or pedestrians and cyclists suddenly coming onto the road. It will permit greater efficiency of traffic management by automatically changing the timing of traffic lights based on the existing traffic. Car connectivity will mitigate congestion, shorten commutes, and reduce pollution. Of course, connectivity will also permit fully automated self-driving cars to finally become a reality.
    PDF, 99.96 KB
  • No Stone Unturned: The Fight Against Counterfeiting In The United Arab Emirates
  • Yahia H. Hamade
    With glistening shores along the eastern coast of the Arabian Peninsula, the United Arab Emirates (UAE) occupies a strategic position of regional importance. The UAE comprises a federation of seven emirates, consisting of Abu Dhabi (which serves as the capital), Ajman, Dubai, Fujairah, Ras Al Khaimah, Sharjah, and Umm Al Quwain. Owing to its nautical history and exceptionally entrepreneurial spirit, the UAE has an open economy with a high per capita income and a sizable annual trade surplus. Successful efforts at economic diversification have significantly reduced the portion of GDP from the oil and gas sector. The UAE’s strategic plan for the next few years focuses on promoting the country as a global trade and tourism hub and developing industry. The country’s free trade zones (FTZ)—offering 100 percent foreign ownership and zero taxes—are also helping to attract foreign investors to the desert nation.
    PDF, 77.97 KB
  • Business Research Skills As Facilitators Of Biopharmaceutical Non-Core Patent Out-Licensing
  • Cornelius Enuezie
    A European Commission report into patent licensing (Radauer and Dudenbostel 2013) concluded that the technology industry out-licenses more non-core patents than the pharmaceutical industry. A literature review suggests that this variation may be due to the perceived risks associated with holding patents in both industries, and these differences influence business models within each industry. Two distinct groups of patent professionals were identified; those within technology (referred to in this paper as technology patent professionals, or TPPs) and those in the Swiss pharmaceutical industry (or SPPPs). From a review of the literature, five business research skills were identified as being effective facilitators of successful patent licensing. Statistical analyses of the survey responses show that TPPs are more proficient in these skills than SPPPs. This discrepancy suggests a need for SPPPs to receive more business research training to achieve higher levels of non-core patent out-licensing. Findings from this study are used to develop a new workflow model that encompasses the application of these research skills to generate economic value in the form of extra revenue and cost savings. The global applicability of this model is suggested as an area for future research.
    PDF, 179.77 KB
  • How To Identify, Prepare And Package Data For Monetization In AI
  • Charley Macedo, Nicole Spence, Benjamin Beavan and Barry Brager
    As computers have become more powerful and the collection of data has exploded, monetization opportunities for an organization with respect to its treasure troves of data are becoming more and more prevalent. In order to assist organizations on how to prepare and package data for monetization in artificial intelligence(AI)/machine learning(ML) opportunities, 1 this article provides an overview of key considerations outlined at the 2020 LES USA and Canada Annual Meeting in a virtual presentation that was shared with the same title.
    PDF, 363.94 KB
  • The Intersection Of IP And Artificial Intelligence (AI)
  • Susan Hallen, Kate Gaudry, Stephen Kabakoff and Sean O’Connor
    In 1956 at the Dartmouth Summer Research Project on Artificial Intelligence, John McCarthy coined the term “Artificial Intelligence,”1 which he would define as “the science and engineering of making intelligent machines.” The usage/capabilities of artificial intelligence (AI) as a technology have been accelerating ever since, as computing power has grown exponentially, and more research has been devoted to artificial intelligence and its use cases. As a result, artificial intelligence has become an umbrella term that encompasses everything from Natural Language Processing/Understanding (NLP) to Machine Learning to Robotics to Deep Learning, and much more. Think of it as Cognitive Computing…a range of technologies that mimic the human brain and take actions.
    PDF, 95.38 KB
  • Protection, Enforcement And Licensing Of Trade Secrets In View Of The COVID-19 Pandemic
  • John Walker and Dallas Wilkinson with the CEEM Advisory board
    On June 24, 2020, the LESI Chemicals Engineering Environment Materials Committee (CEEM) held a webinar on the important topic of trade secret management and more broadly, IP management. The webinar drew together expert panelists from a wide range of industries and regions within the CEEM sector. This article further explores the issues discussed at that webinar.
    PDF, 77.88 KB
  • The Fate Of Dependent Patents In Cambodia, Laos, Myanmar, Thailand, And Vietnam— A Comparison With The Situation In Germany And India
  • Heinz Goddar and Chandavya Ing
    With the existence of the patent protection system, it is possible to study and research how the patented invention is invented based on the published specifications of the patent. However, with the advancement of technology, it happens that the later inventor or newcomer found an improvement to the earlier patented invention and wishes to put the later founded patent on the market. This challenge is seen a lot in advanced-technological fields such as telecommunication, artificial intelligence (AI), and the Internet of Things (IoT), where there are many patents covering certain technologies.1 To put the later founded patent on the market, the later patent has to depend on the earlier patent and the later patent is normally called a dependent patent, which cannot be used without infringing the earlier patent.2 In order to commercialize the dependent patent without infringing the earlier patent, licensing from the right holder of the earlier patent is needed. Still, negotiations for licensing are not always successful. This disables the dependent patent from entering the market, and the public is not able to enjoy the new improvement. Also, the right holder of the earlier patent cannot benefit from the improvement embodied in his patent.
    PDF, 93.65 KB
  • Effective Utilization Of The Patent Opposition System in Japan
  • Takashi Hinatsu
    More than six years have passed since the patent opposition system, which had once been abolished by an amendment to the Patent Act in 2003, was reintroduced on April 1, 2015. In view of the current situation as to patent oppositions, the following article discusses effective utilization of the patent opposition system.
    PDF, 83.20 KB
  • What Is The Difference Between A Software License Agreement And A “Software As A Service” (SaaS) Agreement?
  • György Kratochwill
    The act of people buying and downloading software (or purchasing it on CD) is very general nowadays. And with these activities, a software license agreement is being concluded. But, as new technologies emerge, new business models appear, and they need a different legal background and a different kind of legal documents to protect them. The “Software as a Service” (SaaS) model is becoming one of the most general business models, as more and more companies use it, from small companies to big corporations.1 But what is SaaS, and why is it different from a more typical software license agreement from a legal perspective? And what are the main issues that must be regulated in an SaaS agreement?
    PDF, 63.94 KB
  • Promoting Innovation Where Market Incentives Do Not Work
  • Sung Hee Choe, Amy Finan, Julie Barnes-Weise, Emma Wheatley and Gillian Fenton
    There are well developed paradigms for licensing new drug and biologic technologies in the biopharmaceutical space, based on widely understood principles for the development and commercialization of human therapeutics, vaccines, and medical devices that are subject to regulatory oversight. A typical license for an investigational therapeutic may involve upfront consideration, milestone payments that correspond to key inflection points in clinical development such as Phase I, II, and III clinical trials, and regulatory events such as filing of a New Drug Application (NDA) or Biologics License Application (BLA), and NDA/BLA approval by the relevant regulatory authorities. Typical license agreements also include earned royalties for a defined period, as measured from the date of regulatory approval, or based upon the terms of applicable patents, or a blend of these approaches. The financial terms of a typical biopharmaceutical license reflect the parties’ approach to modeling the anticipated future market for the technology. Many well understood and applied models that generate the net present value (NPV) and return on investment (ROI) of the technology in question assume that the future market includes populations of willing buyers and sellers over a defined, continuous period of time and a defined geography. The licensor assumes that sales revenue earned by the successful licensee will produce a royalty stream that satisfies the licensor’s expectation of the value of the technology. The licensee assumes that the volume of sales will be sufficient to recoup the licensee’s investment in the technology and in developing it to the point of regulatory approval. But what about situations where these expectations do not work?
    PDF, 105.88 KB
  • Patent Waiver In The Time Of COVID-19
  • Madelein Kleyn and Enrique Longton
    In light of the Covid-191 pandemic that has plagued the world since its December 2019 discovery in China, there has been growing support for the reduction or outright suspension of Intellectual Property (IP) rights related to Covid-19 treatments and therapies. Those who favor this approach refer to it as “patent waiver.” The IP rights most frequently mentioned in this regard are patent rights, although other intellectual property rights have not escaped similar scrutiny. The movement to waive patent rights has become more widespread over the last several months with the approval of safe and effective Covid-19 vaccines credited with reducing transmissions of the virus and lowering morbidity and mortality rates. These encouraging results are seen among those who have been fully vaccinated and those who live in places where vaccines are readily available.
    PDF, 75.36 KB
  • LESI FRAND/SEP Study
  • LESI Dispute Resolution Committee
    FRAND/SEP litigation and licensing is of utmost practical importance in an increasingly connected world and grabbing the headlines globally. So, a good time for LESI’s Dispute Resolution Committee to provide a study comparing the current state of play (July 1, 2021) in the major jurisdictions for such disputes, namely Germany, the UK, The Netherlands, France, the United States, China and Japan. We are very grateful and thankful to all of our authors, being extremely busy top-tier patent litigators in their respective jurisdictions to have delivered a very practical and hands-on guide to Fair Reasonable and Non-discriminatory/Standard-Essential Patent (FRAND/SEP) litigation and licensing within a short time frame. Namely, many thanks to Prof. Dr. Tilman Müller-Stoy and Alexander Haertel, Bardehle Pagenberg, Germany, to Mary Foord-Weston and David Wilson, Carpmaels & Ransford, UK, to Rien Broekstra, Boukje van der Maazen and Daan de Lange, Brinkhof, The Netherlands, to Marie-Ange Pozzo di Borgo and Jean-Hyacinthe de Mitry, Gide Loyrette Nouel, France, to Doug Lumish and Alan Devlin, Latham & Watkins, USA, to Nongfan Zhu, KWM, China, and to Yasufumi Shiroyama, Anderson Mori & Tomotsune, Japan. All opinions and views expressed within the following comparative study are solely the authors’ opinions and views and do not reflect the opinions, views and beliefs of their law firms, clients and/or other third parties.
    PDF, 194.44 KB
les Nouvelles