Thursday, 26 November 2015


Since posting the first few items on the IP Finance weblog back in January 2008 I have greatly enjoyed my part in what soon became a team effort in seeking to promote greater awareness of those areas of IP law and practice that border financial issues.  Now that I am stepping down and retiring from active intellectual property work, I am happy to let you know that my fellow blogger Mike Mireles will be taking the reins of IP Finance.  If you have information or ideas that might make the basis of a good blogpost, or if you would like to be considered as a prospective member of the blog team, email Mike at and let him know.

Finally, a big thanks to all my blog team colleagues and to you, the readers, for making my participation in this blog the educative experience which it has been for me.

Wednesday, 25 November 2015

UK Spending Review & IP

Crickets - by Billy Hathorn
The UK Spending Review happened today – also known as the Autumn Statement – basically it's an update on the economic state of the nation in the UK and a staging post for economic, tax, etc announcements.

In past years, the Spending Review (or whatever it was known as in that particular year, the name changes) has brought us things like the patent box, R&D relief, and so on.

This year … crickets, from a tax perspective. Nothing much, really (a small change on entering into the intangibles tax regime for corporate partners).

There's some spending announcements though (with the usual caveat that it's a bit hard to tell what's new money and what's been announced before):

  • £5bn in health R&D, including £50m in antimicrobial resistance research; 
  • £150m to launch a Dementia Institute (presumably to do R&D);
  • investing £6.9bn in capital (capital what?) to ensure that the UK remains a world leader in science and research, and protecting the current £4.7bn research funding "in real terms" for the same purpose - but note that £6.9bn includes the £150m for the Dementia Institute;
  • investing £250m in a nuclear R&D programme (looks like it will be mostly for small modular reactor development, and focussed on spending in the North of England);
  • protecting funding for the arts in real cash terms for 5 years;
  • the £1bn Ross Fund investing in R&D in drugs, vaccines, diagnostics and treatments for infectious diseases – patterned with the Bill & Melinda Gates Foundation, so not all of that £1bn is coming out of UK pockets;
  • playing a leading role in international research efforts to reduce the costs of low carbon energy (no £ information indicated, though);
  • a new entity called "Research UK", based on the Paul Nurse review recommendations. This will work across (not with? maybe just poor wording …) the Research Councils to promote a strategic approach to science funding. Innovate UK will be integrated into Research UK. The Research Excellence Framework will be reviewed.
[ETA 26/11/15 – the Innovate UK grants are to be replaced by loans, according to a press release from BIS, which doesn't have more detail on the point]

The Review also notes that scientific R&D has grown by 21.3% and architecture and engineering activities by 38.8% (possibly since the beginning of 2010, although that's not entirely clear, and neither is it clear what metric they are measuring – employment numbers? capital expenditure? revenue expenditure?).

Stats for the curious: "research" is mentioned 46 times, "science" 35 times, and "technology" 30 times in the policy paper (PDF).

Tuesday, 24 November 2015

Vote on FRAND?

World Intellectual Property Review is running a survey about FRAND and the formation of the Fair Standards Alliance reported on this blog here.

WIPR is asking whether you agree that the definition of FRAND must have a clearer meaning to allow standards to foster innovation. There's no link provided to the arguments set out in the Fair Standards Alliance's white paper (found here), but at least one can post comments.

In this blogger's view, the question is a leading one. It's seems to be a no-brainer that it would be nice to have a clearer understanding of FRAND. But what does a clearer understanding mean? Clearly different things to different people and that is the kernel of the problem.

The survey can be taken here.

Friday, 20 November 2015

FRAND for all

We've been interested to see the start of a new group called the fair standards alliance which was launched this week. Based out of Brussels, the group has members from a number of industries and sets out four key principles:

  1. A license for a SEP should be available at any point in the value chain where the standard is implemented, and the important terms of those licenses should be transparent to other companies implementing the same standards;
  2. A FRAND royalty should reflect the value of the invention. In most cases that means that it should be based on the smallest device that implements those patents, and additionally it should take into account the overall royalty that could be reasonably charged for all patents that are essential to that standard;
  3. Injunctions and similar legal threats should be a last resort;
  4. A FRAND commitment made in respect of a SEP should not fall away simply because the SEP is sold to another company.
The groups membership includes firms as diverse as car makers BMW and Volkswagen together with ICT companies such as Cisco, Dell, and Intel to name just a few.

Their stated role is to promote fair, balanced and rational practices in the licensing of patents which are essential to standards and they set out their position in a detailed position paper available here.

Given the controversial nature of patents in the standard-setting process the group's role could be invaluable in providing an industry-wide view of the standard setting process from companies that are both innovators and product designers  who want to see a return on their investment but also appreciate the need for an approach that encourages the development of standards.

Tuesday, 17 November 2015

Google's License on Transfer Network: A Good Way to Avoid Patent Trolls?

Google, along with a number of other companies, started the License On Transfer (LOT) Network on July 9, 2014.  The general purpose of the program is to reduce the risk of being sued by a Patent Assertion Entity (PAE) for network participants.  The danger present for all market participants is that an operating company with patent assets may fall on hard times and have to sell their patents to a PAE or may just choose to do so.  The LOT Network protects its members from suit from patents acquired by PAEs from their members.  Essentially, all parties agree that if one of the patents potentially subject to the license (the network members' patent portfolios) is transferred to a PAE then the license is effective as to that patent.  This means that the members of the LOT Network are basically immune from an infringement suit under that patent from the PAE once the transfer to a PAE occurs.  The agreement is carefully drafted to exclude “triggering events” from including transfers to non-PAE’s. The agreement can be found, here.  According to a presentation concerning the program, the members of the group have been insulated from at least one transfer of a subject patent to a Japanese PAE. 

There are currently 325,000 patent assets, including 99,000 US patents subject to the LOT Network.  The current membership of 47 companies includes: 3D Robotics, Inc., AddShoppers, Inc., Asana, Be Labs, Binatone Electronics, Breezy Print, CAN Telematics, Canon, Cinfo Contenidos Informativos Personalizados SL, Civis Analytics, Cloudability, Corvado, Cyclica, Dropbox, Edyt, Emaldo Techonolgies, Enplug, EPHE Corp., Ford Motor Company, GitHub, Google, Great Wave Tech, HLCA Media, Indri, Inductive Automation, JPMorgan Chase Bank, Kairos AR Inc., Khan Academy, Marine Traffic, Mazda Motor Corp., Naehas, Newegg, Pandora Media, Pure Storage, Red Hat, Ring Partner, Rocket Matter, SAASPASS, Sabai Technology, SAP SE, SAS Institute, SilverEdge, Sipree, SolarCity, Theralytics, Uber Technologies, and the Wikipedia Foundation.  This appears to be a particularly attractive option for companies without a lot of patents that may be sued by PAEs.  To join, you only need to pay a reasonable fee based on your companies’ annual revenue.  I suppose one downside is that the value of your patent may be less given that a potential PAE buyer will have fewer entities to sue.  Are there any other downsides?