Thursday, 31 October 2019

US Collegiate Athletes may Profit from Name, Image and Likeness

The National Collegiate Athletics Association, an organization which essentially regulates collegiate athletics in the United States, has voted to begin the process of allowing student athletes to profit from the use of their name, image and likeness.  This vote was made in light of California’s recent decision to allow collegiate student athletes to be paid for playing.  Historically, collegiate student athletes were prohibited from receiving payment.  The NCAA press release states: 

Board of Governors starts process to enhance name, image and likeness opportunities

Each NCAA division directed to immediately consider modernization of bylaws and policies

October 29, 2019 1:08pm

In the Association’s continuing efforts to support college athletes, the NCAA’s top governing board voted unanimously to permit students participating in athletics the opportunity to benefit from the use of their name, image and likeness in a manner consistent with the collegiate model.

The Board of Governors’ action directs each of the NCAA’s three divisions to immediately consider updates to relevant bylaws and policies for the 21st century, said Michael V. Drake, chair of the board and president of The Ohio State University.

“We must embrace change to provide the best possible experience for college athletes,” Drake said. “Additional flexibility in this area can and must continue to support college sports as a part of higher education. This modernization for the future is a natural extension of the numerous steps NCAA members have taken in recent years to improve support for student-athletes, including full cost of attendance and guaranteed scholarships.”

Specifically, the board said modernization should occur within the following principles and guidelines:  

  • Assure student-athletes are treated similarly to non-athlete students unless a compelling reason exists to differentiate. 
  • Maintain the priorities of education and the collegiate experience to provide opportunities for student-athlete success. 
  • Ensure rules are transparent, focused and enforceable and facilitate fair and balanced competition. 
  • Make clear the distinction between collegiate and professional opportunities. 
  • Make clear that compensation for athletics performance or participation is impermissible. 
  • Reaffirm that student-athletes are students first and not employees of the university. 
  • Enhance principles of diversity, inclusion and gender equity. 
  • Protect the recruiting environment and prohibit inducements to select, remain at, or transfer to a specific institution.

The board’s action was based on comprehensive recommendations from the NCAA Board of Governors Federal and State Legislation Working Group, which includes presidents, commissioners, athletics directors, administrators and student-athletes. The group gathered input over the past several months from numerous stakeholders, including current and former student-athletes, coaches, presidents, faculty and commissioners across all three divisions. The board also directed continued and productive engagement with legislators. 

The working group will continue to gather feedback through April on how best to respond to the state and federal legislative environment and to refine its recommendations on the principles and regulatory framework. The board asked each division to create any new rules beginning immediately, but no later than January 2021.

“As a national governing body, the NCAA is uniquely positioned to modify its rules to ensure fairness and a level playing field for student-athletes,” NCAA President Mark Emmert said. “The board’s action today creates a path to enhance opportunities for student-athletes while ensuring they compete against students and not professionals.”

Friday, 25 October 2019

OxFirst Webinar: FRAND injunctions - A summary of recent case law

by Joan Ng & Roya Ghafele. 

OxFirst’s latest webinar on Oct 24 featured Prof Dr Peter Georg Picht of the University of Zurich. Prof Picht highlighted several issues that have surfaced in recent cases dealing with injunctions pertaining to standard essential patents. He started off by using the overall Huawei vs ZTE framework to highlight under which conditions injunctions can and cannot be issued under CJEU case law. 

Ultimately, said the OxFirst speaker, all parties must behave in a proactive manner. This is the case even if the other party may be non-compliant at a particular point in time. Also, on the issue of conditional injunctions and FRAND injunctions in the UK, the OxFirst speaker noted that the UK has produced fewer SEP- and FRAND-related cases than Germany. Nevertheless, cases heard in the UK have been high profile ones, particularly when it comes to granting what has come to be known as a 'FRAND injunction.'

Particularly noteworthy, he said, was the case of Unwired Planet v Huawei ([2017] EWHC 711 (Pat)), in which the court allowed a conditional injunction only. This is important because it signifies that FRAND is not only about content but also about conduct. Parties should behave in a FRAND compliant manner. The injunction would be in force only if the implementer failed to agree to take a global FRAND licence set by the court, said the speaker. That case was however heard by the Supreme Court this week and its decision in this matter is to be expected in the next couple of months.

In addition, on the issue of anti-hold-out injunctions, the speaker noted the offer of a grace period in the case of TQ Delta v Zyxel Communications ([2019] EWHC 745 (Pat)). Rather than award an injunction immediately, there was the suggestion of a grace period for Zyxel to fulfil some necessary commitments.

Finally, on the issue of anti-suit and anti-anti-suit injunctions, the speaker recognized the complicated nature of case law given that multiple jurisdictions are involved. Prominent points were that it is important that parallel proceedings are not necessarily vexatious or oppressive, because there is some flexibility for such a judgement. But at the same time, it is important that the patentee is able to seek judicial help.

Broadly speaking, the OxFirst presenter pointed out that injunctions have gained relevance in SEP licensing negotiations over time, but that there is still no certainty on when and how injunctions will be granted. He sees, however, a tendency for courts to compete for patent cases, and a grant or refusal of injunctions is one of the points on which courts would tend to compete. The conflict between national case law and global patent law remains to be resolved.

 - The views expressed in this webinar are those of Professor Picht and cannot be attributed to OxFirst, its affiliates, staff, or consultants.-

Friday, 18 October 2019

Reducing Costs in the Fast-Changing Regulations of Foreign Direct Investment

I think this is a fascinating idea.  Latham & Watkins has released a free app that covers the regulations of several countries concerning foreign direct investment.  Here is the press release

Latham & Watkins LLP1 is pleased to announce the launch of the Foreign Direct Investment Regimes (FDI) app, an interactive tool designed to summarize key aspects of the Committee on Foreign Investment in the United States (CFIUS) and other foreign direct investment regimes around the world. The FDI app is available as a free download in the Apple App Store and Google Play that can be used on iPhone, iPad, and Android devices.

The Latham FDI app is organized by select countries around the world, including the US, Australia, China, France, Germany, Italy, Spain, Russia, Saudi Arabia, Singapore, United Arab Emirates, and the UK. After choosing a country, users can click through to read summaries of information pertinent to the respective jurisdiction, such as:

  • Legal authority responsible for foreign investment review
  • Mandatory filings
  • Voluntary filings
  • Timelines
  • Filing fees
  • Penalties
  • Definitions of key words and phrases

“Businesses looking at cross-border investments must consider and be prepared for national security reviews by the jurisdictions in which the business has or would have operations,” said Les Carnegie, a partner in Latham & Watkins’ Washington, D.C., office and co-leader of the firm’s CFIUS & US National Security Practice. “We are excited to launch this first-of-its-kind app that will bring enormous value to foreign investors around the world by summarizing information and procedures that have become increasingly fundamental to successfully executing cross-border transactions.”

Steven Croley, a partner in Latham & Watkins’ Washington, D.C., office and co-leader of the firm’s CFIUS & US National Security Practice, added, “Latham aims above all to provide exceptional service to our clients. We are therefore constantly looking for creative and innovative ways to address their most pressing business needs. Clients are increasingly focused on the growing prominence of regulatory programs and foreign investment review both in and outside the US, and our goal in developing the FDI app is to provide a summary that is quickly and easily accessible.”

“Evaluating and preparing for reviews by CFIUS and other foreign direct investment regimes has become a critical component to cross-border deal-making in today’s geopolitical environment,” said Luke Bergstrom, Global Vice Chair of Latham’s Mergers & Acquisitions Practice. “Latham’s CFIUS and national security lawyers are deeply experienced in helping clients navigate the CFIUS process and related agency reviews. This offering is part of the firm’s global, integrated approach to helping clients achieve market-leading transactional results.”

The Latham FDI app is the latest addition to a suite of information produced by the firm on the topic of CFIUS and other foreign direct investment regimes.

A summary and analysis of the US Department of Treasury’s recently-proposed regulations to implement changes that the Foreign Investment Risk Review Modernization Act (FIRRMA) made to CFIUS’ jurisdiction and processes is available here. A comprehensive primer, “Key Questions Answered on CFIUS,” is also available here.

For additional resources and more information about Latham’s CFIUS & US National Security Practice, please visit

Improving the Allocation of Resources: Artificial Intelligence to Predict Future Clinical Success of Basic Research

In a new paper published on October 10, 2019 titled, “Predicting Translational Progress in Biomedical Research,” authors B. Ian Hutchins, Matthew T. Davis, Rebecca A. Meseroll, and George M. Santangelo describe a new way to use artificial intelligence to measure and predict which basic research type findings are likely to be translated into clinical advances.  The abstract states: 

Fundamental scientific advances can take decades to translate into improvements in human health. Shortening this interval would increase the rate at which scientific discoveries lead to successful treatment of human disease. One way to accomplish this would be to identify which advances in knowledge are most likely to translate into clinical research. Toward that end, we built a machine learning system that detects whether a paper is likely to be cited by a future clinical trial or guideline. Despite the noisiness of citation dynamics, as little as 2 years of postpublication data yield accurate predictions about a paper’s eventual citation by a clinical article (accuracy = 84%, F1 score = 0.56; compared to 19% accuracy by chance). We found that distinct knowledge flow trajectories are linked to papers that either succeed or fail to influence clinical research. Translational progress in biomedicine can therefore be assessed and predicted in real time based on information conveyed by the scientific community’s early reaction to a paper.

The full paper is available, here.  This appears to have the promise of mitigating some significant investment risk.  

OxFirst Conference: Globalization and FRAND

OxFirst is hosting a very interesting conference on FRAND and globalization on October 18, 2019 at the University of Oxford.  The press release states: 

The decisions of national courts on fair, reasonable, and non-discriminatory (FRAND) licensing rates have the potential to impact the licensing and litigation of standard essential patents (SEPs) internationally, according to speakers at OxFirst’s 4th intellectual property (IP) and competition forum.

“The global FRAND licensing framework is meant to strike a balance between the rights of the Standard Essential Patents (SEPs) holders and the needs of downstream innovators,” says Dr Roya Ghafele, founder and CEO of OxFirst.

“Decisions made at the national level, by national courts, bear the potential to affect licensing negotiations in other jurisdictions. It is therefore important that such decisions take into account the increasingly global nature of commerce,” Ghafele adds.

SEPs have become central to patent wars in information and communications technology because the use of these patents is essential for compliance with technical standards. Standards such as 3G, 4G, GSM or UMTS have been instrumental for the establishment of wireless communication. The advent of 5G bears the potential to be a crucial element for the internet of things. (IoT) As such, there is a lot at stake.

OxFirst’s conference, titled “Globalisation and FRAND: Coming to grips with the interplay of IP and competition law”, addresses issues facing the various players in these patent wars.

The conference, held Oct 18 at St Cross College, at the University of Oxford, is attended by academics, government officials, and IP experts in the commercial world.

Among the speakers at the conference are Hon Judge Fabian Hoffman, a judge of the Bundesgerichtshof (Federal Court of Justice of Germany); Prof Eric Sergheraert, from the University of Lille; Prof Valerio Sterzi, from the University of Bordeaux; and Prof Thomas Cotter, from the University of Minnesota.

OxFirst is scheduled to host its next IP and competition symposium in Brussels in February 2020. OxFirst Conferences are fully accredited for continuous legal professional education for the legal profession.

About the conference:

Wednesday, 16 October 2019

Patent Eligible Subject Matter Reform in the United States: The Pendulum Will Swing Too Far (again)?

In the United States, the law of patent eligible subject matter has become a big mess.  There are many different ways to frame how we got to this point.  One narrative tracks the concern with so-called patent trolls and the issuance of poor patents by the USPTO.  For sure, many have had concerns about the enforcement of patents and there have been a number of issued poor quality patents by the USPTO.  Part of the problem with the reform effort may have been that there were just too many proposals adopted to confront the issues.  In a perfect world, I suppose that a proposal would be enacted and then we would gather data and try to assess its impact.  We essentially made many policy changes creating perhaps an even larger mess with different problems--perhaps to the detriment of innovation.  Indeed, perhaps the changes to patent eligible subject matter law by Alice and Mayo may have gone too far—in light of other changes to the U.S. patent system designed to curb troubling enforcement and poor patent quality.  

One of the main current problems seems to be the application of the Alice/Mayo test and the failure to achieve consistency in its application.  Unfortunately, one casualty of Alice/Mayo may be collegiality amongst U.S. Court of Appeals for the Federal Circuit judges and the institution itself—the recent opinion, American Axle & Manufacturing v. Neapco Holdings, issued on October 3, 2019 is an interesting example.  Basically, Judge Moore writing the dissent is accusing Judge Dyk, author of the majority opinion, for engaging in judicial activism among other things.  I believe that most think that judges should “call it as they see it.”  However, the problem may be the test itself—it’s just too difficult to apply with consistency and that a reasonable application could result in problems, particularly if there is an underdeveloped record.  For sure, the attempt to utilize patent eligible subject matter as a way to eliminate cases early has been eroded by some panels of the Federal Circuit.  Does this mean that the main value of the test has been lost?  Should we stick to obviousness as the gatekeeper of patentability?  Can Congress actually fix this without overshooting eligibility resulting in more and different problems?  What about the concern with drug pricing?  Is the current test for patent eligible subject matter unfixable?  Do we need to think harder about different patent eligible subject matter rules for different industries?  Does it look like the Federal Circuit is properly using doctrines as policy levers across different industries?  I do think we would likely agree that keeping the Federal Circuit is a good idea (there are some that disagree).  

Friday, 11 October 2019

A Greater Appreciation for the Contribution and Value of Some Intangibles (particularly "free" intangibles)?

In a recent speech titled, “Trucks and Terabytes: Integrating the 'Old' and 'New' Economies,” at the 61st Annual Meeting of the National Association for Business Economics, Federal Reserve Chairman Jerome H. Powell challenged the underlying data concerning measurements of economic growth.  He asks: “with terabytes of data increasingly competing with truckloads of goods in economic importance, what are the best ways to measure output and productivity? Put more provocatively, might the recent productivity slowdown be an artifact of antiquated measurement?”  In considering the question, here are his comments: 

How Should We Measure Output and Productivity?
Let's now turn to the second question of how to best measure output and productivity. While there are some subtleties in measuring oil output, we know how to count barrels of oil. Measuring the overall level of goods and services produced in the economy is fundamentally messier, because it requires adding apples and oranges—and automobiles and myriad other goods and services. The hard-working statisticians creating the official statistics regularly adapt the data sources and methods so that, insofar as possible, the measured data provide accurate indicators of the state of the economy. Periods of rapid change present particular challenges, and it can take time for the measurement system to adapt to fully and accurately reflect the changes in the economy.

The advance of technology has long presented measurement challenges. In 1987, Nobel Prize–winning economist Robert Solow quipped that "you can see the computer age everywhere but in the productivity statistics."6 In the second half of the 1990s, this measurement puzzle was at the heart of monetary policymaking.7 Chairman Alan Greenspan famously argued that the United States was experiencing the dawn of a new economy, and that potential and actual output were likely understated in official statistics. Where others saw capacity constraints and incipient inflation, Greenspan saw a productivity boom that would leave room for very low unemployment without inflation pressures. In light of the uncertainty it faced, the Federal Open Market Committee (FOMC) judged that the appropriate risk‑management approach called for refraining from interest rate increases unless and until there were clearer signs of rising inflation. Under this policy, unemployment fell near record lows without rising inflation, and later revisions to GDP measurement showed appreciably faster productivity growth.8

This episode illustrates a key challenge to making data-dependent policy in real time: Good decisions require good data, but the data in hand are seldom as good as we would like. Sound decisionmaking therefore requires the application of good judgment and a healthy dose of risk management.

Productivity is again presenting a puzzle. Official statistics currently show productivity growth slowing significantly in recent years, with the growth in output per hour worked falling from more than 3 percent a year from 1995 to 2003 to less than half that pace since then.9 Analysts are actively debating three alternative explanations for this apparent slowdown: First, the slowdown may be real and may persist indefinitely as productivity growth returns to more‑normal levels after a brief golden age.10 Second, the slowdown may instead be a pause of the sort that often accompanies fundamental technological change, so that productivity gains from recent technology advances will appear over time as society adjusts.11 Third, the slowdown may be overstated, perhaps greatly, because of measurement issues akin to those at work in the 1990s.12 At this point, we cannot know which of these views may gain widespread acceptance, and monetary policy will play no significant role in how this puzzle is resolved. As in the late 1990s, however, we are carefully assessing the implications of possibly mismeasured productivity gains. Moreover, productivity growth seems to have moved up over the past year after a long period at very low levels; we do not know whether that welcome trend will be sustained.

Recent research suggests that current official statistics may understate productivity growth by missing a significant part of the growing value we derive from fast internet connections and smartphones. These technologies, which were just emerging 15 years ago, are now ubiquitous (figure 3). We can now be constantly connected to the accumulated knowledge of humankind and receive near instantaneous updates on the lives of friends far and wide. And, adding to the measurement challenge, many of these services are free, which is to say, not explicitly priced. How should we value the luxury of never needing to ask for directions? Or the peace and tranquility afforded by speedy resolution of those contentious arguments over the trivia of the moment?

Researchers have tried to answer these questions in various ways.13 For example, Fed researchers have recently proposed a novel approach to measuring the value of services consumers derive from cellphones and other devices based on the volume of data flowing over those connections.14 Taking their accounting at face value, GDP growth would have been about 1/2 percentage point higher since 2007, which is an appreciable change and would be very good news. Growth over the previous couple of decades would also have been about 1/4 percentage point higher as well, implying that measurement issues of this sort likely account for only part of the productivity slowdown in current statistics. Research in this area is at an early stage, but this example illustrates the depth of analysis supporting our data-dependent decisionmaking.

The full speech is available, here.  The paper concerning measuring value using volume of data, titled, "Accounting for Innovations in Consumer Digital Services: IT Still Matters," is available, here.  

OxFirst Webinar featuring Professor Peter George Picht: "Injunctions in SEP/Frand Cases"

Our friends at OxFirst have another interesting free webinar titled, “Injunctions in SEP/Frand Cases,” scheduled for October 24, 2019, starting at 16:00 BST (14:00 CET).  The speaker is Professor Peter George Picht.  Here is his bio: 

Prof Peter Georg Picht studied law at Munich University and Yale Law School, did his PhD (summa cum laude) at Munich University/the Max Planck Institute for Innovation and Competition, and holds a masters degree from Yale Law School.

He has been working, i.a., with the EU Commission’s DG for Competition, as a Senior Research Fellow with the Max Planck Institute for Innovation and Competition, as well as with two international law firms.

Prof. Picht now holds a chair for Economic Law at the University of Zurich and is head of the University’s Center for Intellectual Property and Competition Law (CIPCO). He remains affiliated to the Max Planck Institute as a Research Fellow and is an Of Counsel with the law firm Schellenberg Wittmer. His further affiliations include board memberships in the Academic Society for Competition Law (ASCOLA), the Association Europ√©enne du Droit √ąconomique (AIDE), and the Munich IP Dispute Resolution Forum. In 2019, he will be a Visiting Professor at King’s College, London.

Prof. Picht’s academic teaching and writing, as well as his counseling activity, focus on

· intellectual property law

· competition law

· international private and procedural law, in particular commercial arbitration (mainly IP and Competition), trusts and estates.

In these fields, he advises governments, companies, foundations, trusts, as well as private persons and families. Prof. Picht is admitted to the bar in Germany and Switzerland (Art. 28 BGFA).

For further information, see:

Here is a link to register:, and here are the details concerning registration: 

Attention, please sign up with your professional email account. We don’t accept registrations from personal email addresses. Participation is limited at 100 participants. We reserve the right to eliminate participants.