|Kanye upstaging Taylor Swift at the notorious 2009 VMAs|
Friday, 1 July 2016
|Image via IMDB|
"The paradox of openness revisited: Collaborative innovation and patenting by UK innovators" by Ashish Arora, Suma Athreye and Can Huang (open access.) Examining the "paradox of openness," in which "opening up to outside sources of knowledge to innovate may weaken the firm's power to capture rents from that knowledge." (Rent, in very simplified economic terms, is excess returns. E.g. the legal profession earns rent by requiring lawyers meet membership criteria and therefore restricting competition.) The authors use comprehensive UK survey data to study how firms set out their strategies. One interesting finding was that firms with incremental innovations (i.e. not breakthroughs), "may be less willing to patent because it makes them a less attractive open partner and perhaps also less able to derive value from collaboration." Firms that are too bombastic about protecting their IP are off-putting (I've heard similar things in the creative industries and non-disclosure agreements.) The authors describe two phenomena in the interaction between patenting and open innovation/collaboration. In "spillover prevention," firms patent to prevent unintended knowledge spillovers in collaborations, in "organizational openness," firms don't patent as it makes them a less attractive partner. Firms are described as leaders and followers in innovation races (followers are sometimes called imitators.) Leaders are more likely to patent due to "spillover prevention" and followers, due to "organizational openness."
|Types and reasons for patent non-use (Walsh et al)|
“Win, lose or draw? The fate of patented inventions” by John P. Walsh, You-Na Leea, and Taehyun Jung focuses on non-use of patents (pay walled.) The study looks a ‘triadic’ patents (patents which have been applied for at the EPO, JPO and granted by the USPTO.) The key finding is that, “55% of triadic patents are commercialized. We also find that 17% of all triadic patents are not commercialized but are at least partially for preemption, though only 3% of all triadic patents are purely preemptive patents.” Preemption is patenting for strategic purposes, rather than commercial. (You could argue the two are one and the same, but the paper focuses on preemptive non-use, as in strategic patenting with no intention to use the patent.) The paper goes into much more detail, but the punchline is that nearly half of triadic patents are not used, but ‘strategic’ patenting may be less prevalent than popular discourse would have you believe.
Over to you, IPKat readers, as I know you have quite strong feelings about patent, and economic analysis of!
Thursday, 30 June 2016
David's son, Simon Goldring, has provided the following information about the burial and other arrangements. Today (June 30, 2016), the funeral will take place at 1.30pm (arrive at 1.00pm/1.15pm) at Bushey Cemetery, Little Bushey Lane, Bushey, Hertfordshire, WD23 3TP. After the funeral, the family will be heading back to 28 Oakleigh Avenue, Whetstone, London, N20 9JH for the afternoon and prayers in the evening at 8pm. In accordance with Jewish mourning practice, the family will be sitting Shiva (a week of mourning). The family will welcome visitors from 2pm-5pm on Friday, Sunday, Monday and Tuesday with evening prayers at 8pm on Sunday, Monday and Tuesday, again at 28 Oakleigh Avenue, Whetstone, London, N20 9JH.
Blessed be his memory.
Wednesday, 29 June 2016
|UK courts and the CJEU?|
|... in a nutshell|
|counterfeiting copycats are everywhere!|
According to the recent Counterfeiting Report from the Global Intellectual Property Center (GIPC) part of the Chamber of Commerce, global counterfeiting remains a 'tremendous and ever increasing global threat'. The report estimated that China alone is the source of more than 70% of global physical trade-related counterfeiting, or $285 billion worth. Physical counterfeiting makes up 12.5% of China’s exports of goods and over 1.5% of its GDP.
However, as the report shows, counterfeiting is far from confined to China (and Hong Kong) - it damages economies and public health across the globe. GIPC have modelled estimates of rates of physical counterfeiting and analysed the value of seized counterfeit goods of 38 economies sampled, totting up to a total of $5.2 billion, which is itself a mere 1.2% of the estimate of total global physical counterfeiting. The full report is available online here.
The Unitary Patent has been many years in the making, and its future is still not entirely clear. Dr. Ingve Björn Stjerna has published a series of papers on the subject, all of which are available to read along with links to other useful resources here. IPKat readers in particular may be interested in the “expert teams” of the Preparatory Committee, and the immediate implications for SMEs.
CIPA STAR 2016
CIPA's shining stars will be performing on 5 July at The Borderline in London. You may have heard enough about borders to last you a lifetime recently, but this event promises to be something completely different - a very special night, featuring musical performances from CIPA members, and with profits raised going to Generating Genius, a charity supporting young people from disadvantaged backgrounds in STEM. You can register for the event through the CIPA website, or for non-members, by email. More information is here.
Mars in trade mark dispute with Mondelez International over m&m's
|A pawful outcome for Swedish|
The Svea Court of Appeal has ruled that Mars is not allowed to use its lower case m&m's logo in Sweden, as it is too similar to Mondelez International's Marabou brand (see left). Mars Nordic's corporate affairs director expressed disappointment at the court's decision, telling the press: "we have always believed no confusion exists between the colourful m&m's brand — one of the world's favourite chocolate products — and the Marabou M Peanut Brand."
Marabou's 'm' branded chocolates have been on sale in Sweden since the 1950s. The m&m brand has existed in the USA since 1941, but took a while to expand into the global market. Swedish website The Local reports that Mondelez (then Kraft) signed an agreement with Mars in 1989 promising not to sell m&m's in Scandinavia. This agreement expired, and in 2009 Mars started selling m&m's in Sweden. It is not clear why it took Kraft/Mondelez so long to challenge Mars' use of the m&m's mark. If this decision is of interest you can read a summary of the decision here. Katfriend Nedim Malovic tells the IPKat that non-Swedish speakers will shortly be able to read about the decision in the Journal of Intellectual Property Law and Practice.
Beijing's Intellectual Property Bureau says iPhone 6 and iPhone 6+ infringe patent held by Chinese company
The Wall Street Journal reports that Chinese company Shenzhen Baili won a surprise injunction against sales of Apple's iPhone 6 and iPhone6+ in Beijing based on a design patent for its 100c smartphone. It's difficult to tell at this stage whether the Chinese company is a troll or whether it has a genuine case, but either way, this is an interesting example of what may become an increasingly common sight: Chinese companies using the domestic patent system to successfully attack Western tech giants. The iPhone models in question are still available in Beijing, as the injunction that was issued against their sale was stayed pending an appeal.
The meat of the book begins in the third chapter, where the authors address the principles of valuation. Here the authors do an excellent job of laying out the principles of valuation and the variations of market, income and cost models. Their explanation of binomial models and Monte Carlo methods was clear and not scary. (On a side note, not much appears to have fundamentally changed in valuation since this Kat was a bank-kitten at the beginning of the noughties.)
A chapter on damages presents a methodical, clear process for determining how damages might be assessed in the case of infringement. There is an in-depth discussion of the Georgia-Pacific factors and some handy flow charts. The authors discuss how courts may view various damages scenarios. For example, where lost profits may be accepted as a damages valuation method even if the patentee isn’t actually selling -- “lost profits also have been awarded when the patentee lost sales of its product not covered by the patent as a result of infringing use of the patented technology in a competitor’s product.”
|Gildor Elendil. CC-BY|
An early chapter on the role of IP in society provides a whirlwind tour of IP; it touches on philosophical and policy debates that are interesting but seem a bit out of place. I was a bit frustrated by the use of American football to illustrate innovation in the absence of incentives. One, I associate football with bad food, and two, it’s not a great example. “Professional football teams also have been known to advance new formations and plays despite the fact that successful innovations can be quickly replicated by opposing teams.” Surely IP over formations would be the equivalent of IP over chess moves – completely against the spirit of competition.
This book is handy for IP-savvy professionals, particularly US-based, who are not au-fait on the financial machinations of IP as an asset. I found the non-IP/valuation bits clunky, but the IP discussions insightful and clearly written by experts. Ultimately it does what a book like this should to – enables the IP professional to know when to call a valuation expert, and how to have an intelligent conversation on valuation.
Porter, S., Rakiec, M., & In Kimball, A. B. (2015). IP strategy, valuation, and damages. Lexis Nexus. Rupture factor: low Price: curiously $209 hard copy, $224 e-book
Tuesday, 28 June 2016
The IPKat is delighted to receive this paper from Prof. Dr. Winfried Tilmann of Hogan Lovells which suggests that it might be possible for the UK, post-Brexit, to nevertheless be involved in the Unitary Patent (European Patent with Unitary Effect or EPUE) and Unified Patent Court (UPC). Many have wondered whether this could be the case; few have come up with a plausible legal basis for such a scenario (given that the CJEU ruled the previous proposal for a European patent litigation system incompatible with the EU Treaties for reasons including the involvement of non-EU states). The IPKat will present the paper and hopes that our dear readers may provide their comments.
EPUE-Reg and UPCA after Brexit
The British voters have voted for a Brexit. What does that mean for the EPUE-Reg and for the UPC Agreement (UPCA)?
There is no immediate effect, since Art 50(2) EUC provides for a two-year period for agreeing on the details of an exit. During that period, the details of any UK participation in the patent package must be agreed upon for the time after the legal effect of the exit has taken place (legal exit).
What are the options for the EPUE-Reg and for the UPCA if a continuing participation of the UK in the patent package is desired?
The possibility of an extension of the unitary effect of an EPUE to the UK could be provided for by a Protocol of the Administrative Committee prepared by the Preparatory Committee. The competence of the Administrative Committee for that part of the proposed Protocol could be based not only on Art 142 EPC but also later on the exit-agreement UK-EU. If the Protocol were based (also) on the exit-agreement UK-EU, the competence of the Administrative Committee could be based on Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. In that case ratification by the CMS or by the UK would not be needed.
The same applies for the part of the proposed agreement of the CMS according to which a CMS who, at the time of ratification, was an EU-MS but does not continue to be an EU-MS may stay within the UPCA. This change may be brought about by a Protocol to the UPCA based on Art 149a(1)(a) EPC and later on the exit-agreement UK-EU, in combination with Art 87(2) UPCA, because the Protocol would bring the UPCA into line with Union law. Ratification by the CMS and by the UK would not be needed.
a) The UK should use its present position as EU-MS and deposit its instrument of ratification of the UPCA as soon as possible. In that case the UPCA could enter into force well before the exit-agreement becomes operative.
b) After the entry into force of the UPCA, the Administrative Committee of the UPCA should amend Art 84 UPCA in saying that a CMS will not lose its contractual position if it leaves the EU.
c) The Administrative Committee should, at the same time, establish a Protocol containing an agreement of the EPC-MS providing for an extension of the unitary effect of an EPUE to the UK.
c) Both agreements should be endorsed in the exit-agreement EU-UK. With the exit-agreement becoming operative, the two agreements (b and c) would be covered by Union law (the exit-agreement being of such quality) thus providing the basis for a retroactive application of Art 87(2)) UPCA.
d) At the date when the exit-agreement becomes operative, the UK will stop being an EU-MS but its further adherence to the UPCA would be based on the amended Art 84 UPCA. The UK would be ready to receive the unitary effect of an EPUE on the basis of Art 142 EPC.
1) is this legally possible - would the CJEU endorse the legal basis and conformity with EU law?; and
2) is it politically achievable?
What do our readers think?