Tuesday, 22 May 2018

Gender Diversity in IP and Technology Policy: A New Resource and Way to get Noticed

The most recent WIPO Magazine is devoted to women and IP.  There are a number of fascinating articles concerning women involved in creating in various technology and artistic spaces.  One interesting story involves Sybilla Masters.  She “developed a way to process Indian corn in 1715 and her achievements were recorded in the patent document, the associated right was issued to her husband.  At that time, the prevailing laws stated that women could not own property.”  WIPO also discusses the gender gap in patent filings—only about 4% to 20% of patent applications include a female inventor depending on the country.  The United States is at 10%.  Interestingly, WIPO points to several causes of the gap: 1) fewer women in STEM fields; 2) “Female scientists and engineers are less likely than their male counterparts to think about commercializing their inventions, and are less comfortable marketing themselves and their work to potential business partners.;” and 3) Female scientists and engineers “are less likely to be invited to sit on prestigious scientific boards or advisory panels where they could meet potential innovation partners.” 

The Brookings Institute recently announced the creation of Sourcelist.  Sourcelist is a database of women who are experts in technology policy, and coming soon—a database of other diverse groups who are also experts in technology policy.  Sourcelist states that it was created because:

Recognizing that women and underrepresented genders in technology policy—a field at the intersection of Silicon Valley and the Washington Beltway—face a particular set of institutional barriers, we dedicated the first Sourcelist database to Women+. Issues associated with underrepresentation have not gone unnoticed, and countless organizations have made important progress in raising awareness of the problem and educating stakeholders on the importance of greater gender diversity. Sourcelist seeks to help in the last mile of those efforts; it is a resource for those looking to put good intention into practice.

This looks like a great idea!  If you are female, sign up to get on the list! 

Monday, 21 May 2018

Solutions in Search of a Problem: The Trademark Register Clogged?

Commentators have debated the question of whether there are too many trademarks.  Are we going to end up in a situation where there just are not enough good trademarks left, particularly wordmarks?  Some would argue that there is an inexhaustible supply of potential trademarks, particularly when considered with words and designs in combination.  A recent Wall Street Journal article asserts that U.S. intellectual property officials are concerned about a large number of applications filed in the United States by Chinese companies and citizens.  Apparently, part of the concern is with fraudulent applications. 

One of the curbs on excessive use of trademarks in the United States is the use requirement.  For most filings in the United States, there must be a use--or eventually a use with an intent to use based application.  Interestingly, CompuMark has released a survey which states that China will become the leader in trademark filings domestically and in the world by 2020.  According to CompuMark, China has filed "nearly 120,000 foreign trademark applications in 2017."  And, the number of trademark applications in the U.S. by Chinese companies or individuals has increased by 800% since 2014.  The Chinese trademark registry now has "over 5 million new trademark applications in 2017" and sixty percent of the trademark registrations in the world are in China.  In the U.S., trademark registrations stay in effect for a basic ten year term after the first five years.  

Let's assume there is a problem.  The problem is there aren't enough good trademarks for legitimate businesses and there's a potential for hold-up of legitimate businesses by "weak" marks.  I suppose another related problem is the increase in search costs due to avoiding a massive number of marks.  Some of our solutions could include increasing filing fees and maintenance fees.  Another solution is shortening the time periods for requiring fees.  The U.S. has very long terms.  We could shorten them to two to three years.  We could increase penalties for the filing of fraudulent marks, including increased penalties for the US attorney who files the marks.  We could lower the costs for challenging existing marks.  We could also create a way to dismiss spurious suits for trademark infringement early and penalize over-enforcement through cease and desist letters.  Many of these solutions have been proposed.  Is there a problem?  

Saturday, 5 May 2018

Trump Administration Releases Annual IP Report to Congress

The White House U.S. Intellectual Property Enforcement Coordinator has released its Annual Intellectual Property Report (Report) to Congress (around 170 pages!).  The Report outlines the Trump Administration’s approach to intellectual property policy and provides information concerning the activity of the various agencies in the U.S. government with duties related to intellectual property.  The bulk of the Report includes appendices which are descriptions of the work of each agency concerning intellectual property over the last year or so. 

The general thrust of the Trump Administration’s approach to intellectual property is stated by a President Trump quote:

“We will safeguard the copyrights, patents, trademarks, trade secrets, and other intellectual property that is so vital to our security and to our prosperity. We will uphold our values, we will defend our workers, and we will protect the innovations, creations, and inventions that power our magnificent country.” 

The Report outlines the Administration’s four-part strategic approach, which includes: 

• engagement with our trading partners; • effective use of all our legal authorities, including our trade tools; • expanded law enforcement action and cooperation, and • engagement and partnership with the private sector and other stakeholders.

Under the first strategic approach, the Report outlines various initiatives and activities across different agencies to engage and educate trading partners, including the USPTO’s Global Intellectual Property Academy.  Under the second strategic approach, the Report notes that the Trump Administration will strengthen the Committee on Foreign Investment in the United States as well as utilize the WTO Dispute Settlement process.  On the third strategic approach, the Report notes:

 At the end of FY 2017, the FBI had 228 pending IPR investigations. The largest number of investigations deal with the theft of trade secrets (79), copyright infringement (79),31 and trademark infringement (64).32 During FY 2017, the FBI initiated 44 new investigations, made 31 arrests, got 23 convictions, and had seizures totaling $750,205, forfeitures totaling $86,949, restitution totaling $53,396,003, and FIRE (Frozen, Indicted, Restrained, Encumbered) totaling $750,000. 

In FY 2017, the number of CBP and HSI IPR seizures increased more than eight percent, to 34,143 (from 31,560 in FY 2016). The total estimated Manufacturer’s Suggested Retail Price (MSRP) of the seized goods, had they been genuine, was $1,206,382,219.

In FY 2017, ICE-HSI initiated 713 intellectual property investigations and had 457 arrests, 288 indictments, and 240 convictions.

In FY 2017, the IPR Center vetted 27,856 investigative leads; of these 16,030 were referred to law enforcement partners. Additionally, the IPR center de-conflicted 4,750 investigative targets for partner agencies and industry. While performing these de-conflictions, the IPR Center identified 321 situations where two or more entities were investigating the same target. Finally, the IPR Center referred 959 leads to private industry for follow-up.  . . .

U.S. law enforcement and Federal agencies participated in Operation Pangea X, which was conducted from August 19, 2017 to September 19, 2017, with the participation of 123 countries, and culminated with a week of action, where participating countries and agencies conducted and/or reported the results of their respective operations. U.S. and Mexican authorities typically participate in Pangea independent of each other. However, in FY 2017, ICE-HSI, CBP, and Mexico collaborated during the U.S. operational phase of this operation. On September 25, 2017, INTERPOL issued a press release highlighting the results of Operation Pangea X, which resulted in 3,584 websites taken off-line, 400 arrests worldwide, and the seizure of 470,000 packages with an estimated value of $51 million in potentially dangerous medicine.

The IPR Center’s Operation Apothecary addresses, analyzes, and attacks potential vulnerabilities in the entry process that might allow for the Internet-facilitated smuggling of commercial quantities of counterfeit, unapproved, and/or adulterated drugs through international mail facilities, express courier hubs, and land borders. During FY 2017, Operation Apothecary resulted in 59 new cases, 38 arrests, 37 indictments, and 41 convictions, as well as 567 seizure incidents of counterfeit items.

On standard setting, the Report notes:

Standards Setting: Many of America’s economic competitors engage strategically in standards setting organizations (SSOs), often to the detriment of American innovators. As the Administration and American industry engage with SSOs, it will be important to ensure that SSOs are being used fairly to promote the adoption of new technologies, rather than impeding the ability for American innovators to continue creating and inventing.  And as SSOs promote the adoption of new technologies, such technologies should be available to industry under fair, reasonable and non-discriminatory terms.

Monday, 30 April 2018

Unreasonably-low royalties in top-down FRAND-rate determinations for TCL v. Ericsson

While Ericsson is a leading contributor to mobile communications standards, a US District Court in California has significantly undervalued Ericsson’s standard-essential patents (SEPs) by relying heavily on flawed “top-down” valuation analysis that prorates royalties by company for 2G, 3G and 4G based on SEP counting. This analysis applies a series of inaccurate assumptions which whittle down royalty rates from an understated notional maximum in a succession of unreliable steps. The resulting rates derived are a lot lower than those found in a European court’s FRAND determination for the same company in the same year (2017) and for the same 2G, 3G, and 4G patent portfolios. The differences between these US and European determinations are irreconcilable.

The perils of top-down methodology

Two nations divided

In late 2017, Honourable James V. Selna, Judge of the District Court of the Central District of California, handed down a court-ordered fair, reasonable and non-discriminatory (FRAND) license in TCL v. Ericsson.[1] His Court’s Decision used a top-down analysis, together with a comparable license analysis as a cross-check, to determine various FRAND rates. This approach might, at first glance, be perceived as similar to the FRAND determination in the UK's Unwired Planet decision.[2] However, in that case Honourable Justice Birss centered on Ericsson’s comparable licenses and used top-down analysis only as a cross-check. This difference, among others, led to significantly different results.

In TCL v. Ericsson, the Court’s tasks were to determine:
  • Whether Ericsson met its FRAND obligation,
  • Whether Ericsson's final offers before litigation, Offer A and Offer B, satisfy FRAND, 
  • What terms are material to a FRAND license, and then supply the FRAND terms.
The Court was presented with two principal schemes for determining the proper royalty rates. TCL advocated a "top-down" approach which begins with an aggregate royalty for all patents encompassed in a standard, then determines a firm's portion of that aggregate. Ericsson used its existing licenses with similarly situated licensees (i.e. comparable licenses) to determine the appropriate rates. Ericsson also offered an "ex ante," or ex-Standard, approach which seeks to measure in absolute terms the value which Ericsson's patents add to a product by asking consumers how much they value certain product capabilities such as improved battery life.

Cap and prorate

My critique focuses on the use of top-down analysis adopted by the court in the TCL v. Ericsson case, with reference to some metrics used in the UK Unwired Planet decision. One reason for doing so is that both courts were presented almost identical evidence, but each judge chose a different approach, leading to the US District Court granting rates for the Ericsson portfolio that are less than half the rates determined by the UK High Court. I have been critical of top-down methodologies as the key element to determine FRAND royalties in various articles for more than a decade.[3] This critique is the latest in this series. It also follows my work as a testifying expert witness on behalf of Ericsson in the US case.

Top-down apportionments are almost invariably based on the notions of a fixed royalty rate aggregate or cap and royalty-rate proportionality based on patent counts rather than patent value. Unlike in patent cases, where courts definitively determine validity, infringement and essentiality patent-by-patent; no such determinations were made by the Court on Ericsson’s patents, or on the larger universe of all patents declared by their owners to be possibly essential to the cellular standards.

Therefore, any ostensible exactitude in the top-down figures derived is spurious. The Court notes that “The search for precision and absolute certainty is a doomed undertaking.” (Decision, page14). I agree: no methodology can provide that in FRAND-rate setting. For example, it is impractical in terms of time or money to conduct —on hundreds or thousands of patents in SEP portfolios—the kind of patent-by-patent analysis typically carried out on no more than a handful of patents in patent infringement and validity litigation.

Significant failings in the Court's top-down FRAND-rate determinations include starting with aggregate royalty rate figures that were too low and then whittling these down with a succession of largely erroneous adjustments:
  • It mistakenly regarded announcements and other disclosures of companies' individual royalty rates and of expected aggregate royalties as multi-mode rates including two or more standards rather than as single-mode rates.
  • These aggregate rates were then prorated with much greater scrutiny and adjustments to the count of Ericsson's SEPs in the numerator and than for the "relevant universe" of all SEPs in the denominator of the apportionment calculations:
    • Only a subset of Ericsson's patents with claim charts were included in the numerator, whereas patents were counted in the denominator without any requirement for creation or submission of claim carts,
    • Whereas all Ericsson's SEPs counted —whether or not patent essentiality was contested by TCL's experts—were evaluated by the parties for at least 50 hours per patent family, the average time spent evaluating entire patent families counted in the relevant universe was a cursory 45 minutes,
    • Modest adjustments for SEP over-declaration in the relevant universe were based on highly unreliable "error rate" calculations,
    • Substantial and unwarranted geographic adjustments were made to Ericsson's SEPs and royalty rates,
    • Inapplicable adjustments were made for expiration of Ericsson's patents while disregarding significant value in new SEPs (e.g. for LTE Advanced).

Comps and other valuation methods

Comparable licenses, with the prices in these firmly established by several years of commerce and billions of dollars in licensing payments already made, can provide the most accurate and reliable basis to establish FRAND licensing rates. The inaccuracies there are in interpreting and adjusting figures and terms so that comparisons can be made among licenses on an apples-to-apples basis. Comparable licenses are widely accepted pricing benchmarks in patent cases around the globe, including those involving SEPs. There is also much to comment upon with respect to the (lack of) rigor and accuracy in the Court’s analysis and findings based on Ericsson’s existing licenses: for example, how cross-licenses were “unpacked” to derive “one-way” licensing rates. Nevertheless, I am leaving this and the Court’s rejection of Ericsson’s ex-standard valuation method for others to analyze in detail right now, or for me to do so elsewhere in due course.

Following my review of the courts’ decisions in both abovementioned cases, I continue to conclude that top-down valuation methodologies are subject to various shortcomings including inaccuracy (i.e. true error rates in determinations are unknown), unreliability (i.e. results are not reproducible consistently) and susceptibility to significant bias (because determinations are so subjective and devoid of an audit trail on how determinations are made). Centering on a top-down methodology that is largely based on only cursory standard-essentiality determinations by TCL's experts in this case, as the primary means of apportioning FRAND rates is untrustworthy.

The above is a summary of my critique of the Court's top-down analysis which is available in full, here, and also in the SSRN eLibrary.

Saturday, 28 April 2018

US Department of Agriculture will not Regulate Gene-Edited Crops

The US Secretary of Agriculture recently announced that the US Department of Agriculture will not regulate gene-edited crops.  As the Futurist explains, this is different than genetically modified crops, which will continue to be regulated.  In a document titled, “Details on USDA Plant Breeding Innovations,” the USDA states: 

USDA is committed to helping farmers produce healthy, affordable food in a sustainable manner that protects this country’s natural resources and offers more choices for consumers. Through innovative methods, plant scientists can now create new plant varieties that are indistinguishable from those developed through traditional breeding methods. These new approaches to plant breeding include methods like genome editing and present tremendous opportunities for farmers and consumers alike by making available plants with traits that may protect crops against threats like drought and diseases, increase nutritional value, and eliminate allergens. 
In keeping with our responsibility to protect plant health, USDA has carefully reviewed products of these new technologies to determine whether they require regulatory oversight. 
As USDA works to modernize its biotechnology regulations, the vision and direction of this Department will be to continue to focus regulatory initiatives on the basis of risk to plant health. 
Under its biotechnology regulations, USDA does not currently regulate, or have any plans to regulate plants that could otherwise have been developed through traditional breeding techniques as long as they are developed without the use of a plant pest as the donor or vector and they are not themselves plant pests. This can include plant varieties with the following changes: 
  • Deletions—the change to the plant is solely a genetic deletion of any size.
  • Single base pair substitutions—the change to the plant is a single base pair substitution.
  • Insertions from compatible plant relatives—the change to the plant solely introduces nucleic acid sequences from a compatible relative that could otherwise cross with the recipient organism and produce viable progeny through traditional breeding.
  • Complete Null Segregants—off-spring of a genetically engineered plant that does not retain the change of its parent.
The Press Release also notes that other agencies also regulate biotechnology innovations, such as the Food and Drug Administration and the Environmental Protection Agency.  For more on access to the CRISPR technology, see this IP Finance post.  

Thursday, 26 April 2018

Guest Post: Intellectual Property, Finance and Corporate Governance

We are pleased to publish this guest post by former IP Finance contributor and Senior Lecturer in Law, Dr. Janice Denoncourt, at the Nottingham Law School at the Nottingham Trent University. 

The emergence of IP rich companies is the new corporate governance challenge. This is because IP is largely invisible, not only in the financial accounts, but also more generally in corporate law theory and the legal framework.  The research in my new book Intellectual Property, Finance and Corporate Governance demonstrates why companies need to communicate more about how they manage corporate intellectual property (IP) rights portfolios and their strategy for delivering shareholder value. Depending on their business model and corporate objectives, companies add value via their corporate IP assets in different ways to achieve their goals.   In the modern era, all companies, large and small, have intellectual property (IP) rights, sometimes across multiple jurisdictions.  They are corporate IP owners.  At the same time, the shift to intangibles and IP assets as the major driver of value in business is clear and unstoppable.  Since the Global Financial Crisis ten years ago there has been a renewed interest in our current understanding of capitalism.  As a result, shareholders, business people, stakeholders and the public, seek more relevant, accurate information about IP-dependent business models and their impact on commercial value.    

Dr. Janice Denoncourt
In the aftermath of the Theranos 'misleading investors' scandal, this is an increasingly important modern corporate governance issue.  Theranos, Inc. is an American consumer healthcare technology company based in Palo Alto, California founded in 2003 by inventor and Managing Director Elizabeth Holmes. In 2018 Holmes was subject to civil charges by the United States Securities and Exchange Commission (SEC) for massive fraud in excess of $700 million USD for having repeatedly yet inaccurately assured shareholders and regulators that the company’s patented blood testing technology was revolutionary (see https://www.sec.gov/litigation/complaints/2018/comp-pr2018-41-theranos-holmes.pdf).  Theranos’ 200 plus US patent portfolio is public information via the United States Patent and Trademark Office (USPTO) portal and a significant corporate investment in IP. Holmes co-invented more than 270 of the company’s patented innovations. While patents do not equate to innovation or commercial success, they do act as business indicators of inventive activity as well as a commitment to protect the results of innovation.  Holmes, of all people, was well placed (if not best placed) to understand the capability of the blood testing technology. The alleged misconduct, namely misleading investors and government officials, has generated a new global regulatory discourse about what companies need to tell us about their IP.  Arguing that it needed 'to protect its IP' to excuse material omissions and misleading disclosures is not acceptable according to the SEC.  In the SEC’s press release on 14 March this year, Steven Peikin, Co-Director of the SEC’s Enforcement Division stated:

            Investors are entitled to nothing less than complete truth and candor from companies and their executives... The charges against Theranos, Holmes, and Balwani make clear that there is no exemption from the anti-fraud provisions of the federal securities laws simply because a company is non-public, development-stage, or the subject of exuberant media attention.

Stephanie Avakian, Co-Director of the SEC’s Enforcement Division further confirmed:

            As a result of Holmes’ alleged fraudulent conduct, she is being stripped of control of the company she founded, is returning millions of shares to Theranos, and is barred from serving as an officer or director of a public company for 10 years...This package of remedies exemplifies our efforts to impose tailored and meaningful sanctions that directly address the unlawful behaviour charged and best remedies the harm done to shareholders.

Key corporate governance principles of transparency and disclosure are being more rigorously applied to corporate ownership of monopolistic IP rights that protect innovation and creativity.  In the US, SEC disclosure law Regulation S-K requires disclosure of the importance, duration and effect of all patents, trademarks, licences, franchises and concessions that a company holds.  The standard for 'material' corporate IP asset disclosures will continue to evolve in the US and other IP-rich jurisdictions.  The civil legal action brought by the SEC against Holmes is the catalyst highlighting a void in corporate practice.   IP-rich companies like Theranos will continue seeking corporate finance which falls under the corporate governance regulatory umbrella.   IP rich companies need to ensure they reflect on disclosure and transparency rules and take into account the growing magnitude of their corporate intangibles, IP assets and IP business models that potentially generate future wealth for their shareholders and potential investors.  

Closer to home, in 2017 the UK implemented the EU Non-Financial Disclosure Directive which requires large and listed companies to include additional disclosures of non-financial information in their annual reports, similar to the disclosure requirements in the Strategic Report.  The Non-Financial Reporting Regulations insert sections 414CA and 414CB into the Companies Act 2006, supplementing the existing strategic report requirements as set out in section 414C.  These new company law equirements potentially increase the reporting of non-financial information, better business and IP strategy reporting through the mandatory requirement to report the company’s business model.  This EU-wide reform highlights the growing importance of disclosure of non-financial information.

IP rights have evolved from being “a little pool to a big ocean” of corporate value and that corporate governance needs to respond to society’s rising expectations of directors and boards.  The astonishing lack of quantitative and qualitative public information about the growing magnitude of corporate IP assets makes it difficult to assess strategic value (“the IP value story”) and directors’ stewardship of those assets.  More relevant, accurate and 'joined up' corporate IP information (mostly known to internal management) is needed to triangulate intangibles financial data through cross verification with narrative disclosures and actual events.  The SEC stated that Theranos engaged in “elaborate, years-long fraud in which they exaggerated or made false statements about the company’s technology, business and financial performance.”  This is a new frontier in corporate governance thinking and practice. 

My research evaluates how corporate boards can ensure an appropriate level of transparency and make voluntary and mandatory ‘true and fair’ disclosures about a company’s corporate IP assets such as patents and trade secrets in traditional formats such as the accounts and the annual report.   The philosophies and principles that underpin debates on disclosure and transparency suggest that more 'open' disclosures about innovation, whilst preserving competitive advantage, are necessary so we have something to read, evaluate, react to and question. Countries including the US and the United Kingdom have mandatory obligations to report on gender balance, climate change and more, but not expressly corporate IP.  Patents, mini-case studies and an original business triage-style model for assessing corporate IP information, strategy and disclosures illustrate the gaps corporate governance theory needs to address.  Companies need to tell us how their corporate investment in R&D and IP rights contributes to the bottom line and regulators need to ensure boards of directors are accountable for IP management and strategy decisions, an important underside of the intangible economy.  

Intellectual Property, Finance and Corporate Governance contributes to the legal and economic literature for readers interested in what lies behind the headlines.  The foreword is written by Professor Nicolas Binctin, Universite of Poitiers. As for the future of the Silicon Valley biotech company Theranos, Inc., the company has since made hundreds of staff redundant to avert becoming insolvent.

Dr J Denoncourt, Nottingham Law School

Wednesday, 18 April 2018

Free webinar on "IP Valuation for Wealth Creation"

OxFirst is pleased to host a free webinar, to take place on April 24th at 3:00 pm UK time, on the topic of “IP Valuation for Wealth Generation”, and why IP valuation can play a crucial role in every step necessary to generate wealth on the grounds of intellectual capital. The speaker will be the internationally noted IP expert, Dr. Guriqbal Jaiya. Dr. Jaiya will discuss various ways to value IP and will weigh the strengths and weaknesses of each method. As well, he will address how IP valuation can be leveraged in corporate finance, strategy, litigation, licensing and tax.

As readers of IP Finance are well aware, IP valuation is playing, or at least has the potential to play, a fundamental role in corporate strategy, helping maximize profits and attracting investments. The valuation of the portfolio of pending and granted patents, trademarks, trade secrets, copyrighted works and designs of a firm remains often the best guess of the firm’s value and its investment potential. As such, the valuation of IP can be crucial to realize the business potential of a company. Yet, despite this, IP valuation is still often underutilized.

About the Speaker

Dr. Jaiya is an internationally recognised expert on intellectual property and intangible asset management, with a special focus on entrepreneurship, start-ups and innovative small and medium-sized Enterprises (SMEs).

For 24 years, he served with notable distinction as a senior officer at WIPO. While at WIPO, he worked closely with a wide variety of multilateral institutions, including the WTO, UNDP, World Bank, UNESCO, UNIDO, WHO, ILO, ADB, AfDB, IADB, UNCTAD, Asian Productivity Organisation, ESCAP, UNECE, ESCWA, ECA, ECLAC, FAO, ITC, OECD, as well as over 150 national and regional IP offices. [This blogger wonders whether OXFirst will give a prize to anyone who can recite without consultation the full name for each of these acronyms.]

Dr. Jaiya has conceptualised, authored or co-authored numerous articles and book chapters on IP as well as some 15 books and 13 multimedia modules on different facets of IP management in business. He has delivered lectures, made public presentations and conducted training events on different facets of IP asset management in business for diverse audiences in regional and international events for participants from some 175 countries. [This blogger still cherishes the half-day that he spent with Dr. Jaiya at WIPO a decade ago, in which we discussed a wide variety of IP issues.]

Dr. Jaiya serves as a senior advisor to OxFirst.

For details about registration, see here. Please note that OxFirst cannot accept registration from private email accounts.