Posts in Licensing

Mexico and Switzerland Question Need for Extension of COVID IP Waiver

A communication from the governments of Mexico and Switzerland to the World Trade Organization’s (WTO’s) Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS) on Tuesday raised a number of questions about the prospect of extending a waiver of intellectual property (IP) rights for COVID-19 vaccine technologies to therapeutics and diagnostics. The Council met informally in September to discuss the extension, which technically has a deadline of December 19, six months after the Ministerial Conference decision finalizing a waiver on “patented subject matter required for the production and supply of COVID-19 vaccines” only. The final agreement contemplated extending the waiver to “the production and distribution of COVID-19 diagnostics and therapeutics” within six months of adoption.

P.S., I Don’t Love You: UK Court Delivers Blow to Apple in FRAND Fight with Optis But Laments ‘Dysfunctional’ SEP Dispute System

The England and Wales Court of Appeal this morning said that Optis Cellular Technology is entitled to an injunction before a lower court has set fair, reasonable and non-discriminatory (FRAND) terms for a license to Optis’ standard essential patents (SEPs) if Apple refuses to take a court-determined FRAND license. But in a post script to the ruling, Lord Justice Arnold said both Apple’s appeal and Optis’s cross-appeal “illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes” and that the European Telecommunications Standards Institute (ETSI) and other standards development organizaitons (SDOs) should “make legally-enforceable arbitration of such disputes part of their IPR policies” to curb the problem.

Copyright Office Issues NPRM to Correct MLC’s ‘Erroneous’ Dispute Policy on Post-Termination Blanket License Royalties

On October 25, the U.S. Copyright Office issued a notice of proposed rulemaking (NPRM) in the Federal Register to clarify the application of the derivative works exception to copyright termination rights within the context of blanket licenses administered under the Music Modernization Act (MMA). The Office is hoping to correct what it sees as a legally erroneous dispute resolution policy established by the Mechanical Licensing Collective (MLC), which administers the MMA’s blanket licenses to digital music providers, regarding the payment of royalties after songwriters exercise their termination rights to regain copyright ownership from music publishers.

Exploring Joint Development Relationships: Part I, Prevent Common Problems

As investors and business-minded IP litigators, we see many situations where IP holders get the short end of the stick. But one stands out from the rest: joint development relationships. Too often we see great American startups losing their technology and competitive edge to joint development partners/investors with a front-row seat to everything. What follows is a multi-part series that we hope any company going down the joint development path will take to heart. We start with tips to prevent a problem. Future installments will focus on what companies can do after their “partner” uses the guise of venture investment to steal critical IP and know-how.

Using 5G/WiFi 6 to Illustrate Structure and Advantages of Cross-Domain SEPs

Cross-Domain standard essential patents (SEPs), in the current context, denote the patents essential to two or more diverse domains that have distinct standards developed by different Standard Setting Organizations (SSOs). The concept originates from the idea that, despite the difference in standards, the domains are based on similar core technologies. So, the patents essential to the common core technologies in turn will be essential to both domains and, hence, can be termed Cross-Domain SEPs.

LES 2021 Royalty Survey Reports: Licensing Market Update, a Look Back, and an LES Royalty Valuation Method in the Making

On September 26, Licensing Executives Society (LES) USA and Canada published the LES High Tech Sector Royalty Rates & Deal Terms Survey Report 2021. In May of this year, the 2021 Global Life Sciences Royalty Rates and Deal Terms Survey results were released. Together, the releases culminated the intense efforts by LES during the COVID-19 pandemic in preparing and launching the Surveys and in analyzing the data, presenting the results and writing the Reports. Not only do LES Royalty Survey Reports provide an update on the licensing market in the past few years, they look into the dynamics of market evolution since the 2000s. The Reports offer benchmark royalty data by various categories, such as technology field and IP type, which serve as invaluable references for licensing professionals. The 2021 High Tech Survey Report is also the only data source in the IP industry that quantifies and publishes royalty rate premiums or discounts such as exclusivity premium and advanced-stage technology premium. Through identifying and quantifying the value contributions of key license parameters such as exclusivity, technology development stage and IP type, among others, the LES team aims to develop a build-up method for royalty determination, analogous to the build-up method in business valuation.

IEEE Approves Pro-Patent Holder Policy Updates

On Friday afternoon, the IEEE Standards Association Board of Governors (IEEE SA BOG) announced they had taken action to update the Patent Policy for IEEE standards development. The updates, which will not go into effect until January 1, 2023, appear at first glance to be minimal, but will likely have an extraordinarily positive impact for patent owners.

To Become Transaction-Ready, Startups Need IP Business Strategists

On the second day of the IPWatchdog LIVE conference held in Dallas, Texas, earlier this month, a panel of experts who advise startups and are passionate about the licensing business model discussed the challenges and opportunities presented by intellectual property. The panelists opened the discussion by describing their experiences with the biggest mistakes startups make in regard to patents. Ian McClure, Associate VP for Research, Innovation, and Economic Impact at the University of Kentucky as well as the chair of AUTM, identified two mistakes commonly made by the approximately 1,200 startups that are spun out from university research in the United States each year.

Advocating for Ethics-Driven Regulation for Blockchain Technologies

Blockchain technology can serve as a shared database ledger that tracks assets and transactions with little to no oversight but, in theory, unlimited users. Its potential applications spanning smart contracts to blockchaining intellectual property, indicate promise for fluid collaborations, efficient remuneration and thorough intellectual property management. However, there are still crucial issues, including privacy, compatibility, liability and jurisdiction that remain undefined. Moreover, because all fields necessitate specialized codes of conduct and ethics, if blockchain technology is expected to make a significant difference in society, then it too, deserves its own field of ethics, like artificial intelligence (AI), nuclear technology, biotechnology, and space exploration. Leading minds across disciplines need to contemplate how this technology can be shaped to have a positive impact, first by examining what this field is capable of doing and its potential consequences.

Worldwide Litigation of SEPs: Piecemeal Remedies for SEP Infringement Across the World

Technological standards promulgated by standards-setting organizations (SSOs) have greatly advanced the state of consumer technologies in areas like wireless communications. However, when dealing with infringing standards implementers, the remedies that one system of national courts provides can vary widely from another system. Navigating this complex system of global litigation and competing remedies against infringers was the subject of “Worldwide Litigation of SEPs: What the FRAND is Going On?,” a panel taking place on the third and final day of IPWatchdog LIVE 2022.

Panelists Highlight Increased Capital, Importance of Foreign Patents for U.S. Patent Monetization at IPWatchdog LIVE 2022

During day one of IPWatchdog LIVE in Dallas, Texas, a panel of speakers discussing current trends and the prospects of patent monetization going forward noted that the “heyday” of patent monetization was approximately ten years ago, with several large patent awards increasing interest in patent monetization. The panelists noted two major factors which presently act as a “glass ceiling” over patent valuations. First, the inter partes review (IPR) proceedings instituted at the U.S. Patent and Trademark Office (USPTO) in 2012 as part of the America Invents Act (AIA) has made investment in patents a riskier proposition.

Confronting the Challenges of Identifying V2X SEP Holders in ETSI Declaration Data

V2X, or Vehicle-to-Everything, is on the horizon to revolutionize vehicular technology by enabling interaction between vehicles and their environment. The first communication standard for V2X, IEEE 802.11p: WAVE (Wireless Access in Vehicular Environments), was standardized by IEEE (Institute of Electrical and Electronics Engineers) in 2010 for WLAN-based V2X communication. The terms DSRC (Dedicated Short Range Communication), WAVE, 802.11p, WLAN based V2X have been used by experts interchangeably to refer to this standard. Alternatively, 3GPP (3rd Generation Partnership Project) started standardization of C-V2X (Cellular-V2X) with Release 14, which was related to LTE V2X. This was followed by Release 15 with added compatibility of 5G to V2X, Release 16, adding 5G NR V2X, and Release 17 related to enhancement in 5G NR V2X and beyond.

Are You Bearish or Bullish on the Patent Market?

Are you bullish or bearish on the patent market as we close out 2022 and move into Q1 of 2023? That is the question I recently asked a distinguished panel of intellectual property business leaders and monetization experts. For the most part, those industry insiders who responded are bullish, although several distinguish patents and the licensing of technology and innovation. Indeed, if I were to answer my own question, I would say that given the Supreme Court’s refusal to address the obvious errors of the Federal Circuit relative to patent eligibility it is extremely difficult, if not impossible, to be anything other than bearish on patents as a meaningful asset class — or at least an asset class that will compensate innovators and investors for the full measure of their contributions.

Three Letters Summarize the March-In/ Compulsory Licensing Debate

Health and Human Services (HHS) Secretary Xavier Becerra may consider himself a lucky man (which would probably sound ironic to him at the moment). He just received three letters which aptly summarize the fork in the road he faces in deciding which way to turn in a critical policy decision. On June 23, Senator Elizabeth Warren (D-MA) and Rep. Lloyd Doggett (D-TX), joined by 98 of their Democratic Congressional colleagues, sent him the latest in their series of letters urging him to use alleged existing authorities so that copycats can make expensive drugs to lower health care costs. That triggered an immediate rebuttal from six associations representing research universities and hospitals (including the Bayh-Dole Coalition, which I lead) and another from the Licensing Executives Society, USA & Canada, Inc. (LES), representing the licensing profession. It seems appropriate to let the letters speak for themselves, so let’s start with the Congressional letter, urging the Secretary to use tools they allege he already has to cut the Gordian Knot to lower drug costs.

How to Protect Your Company When Using Open Source Software

Today’s software is built like a Lego model. Instead of a singularly developed string of code, multiple building blocks of existing code are used to create a codebase. Some of those building blocks are developed in-house by the software vendor. Others are developed by third-party commercial software providers. And a lot of them come from open-source projects. When you’re a company that puts that codebase into your final product, you must take precautions to minimize the risks that each type of code presents to you and to your customers. This is what is meant by protecting your software supply chain. It’s also how you maximize the value of the code for you and your customers. Each type of code has its own set of benefits and risks that need to be understood and managed. This article addresses just one type of those building blocks: open source software (OSS).