6th IP and Competition Forum - 23, 24, 25 June 2021

 

Date & Time:  23^rd-25^th June, 2021; 13:00 BST – 18:00 BST

 

https://www.oxfirst.com/6th-ip-and-competition-forum/

For the sixth time in a row, we are inviting to discuss the interplay of IP, Competition, and Public Policy. With several key questions to be addressed, such as the adequate level of licensing or the challenges presented by anti-suit injunctions, there is a dire need to calibre the role of both IP and competition law for the high-tech innovation ecosystem. More than ever before, is it important to provide thought leadership and contribute to formulating judicial and governance perspectives that will assure that IP breaks the equation of being a tool for economic growth and prosperity.

Topics

·      Anti-Suit Injunctions

·      Jurisdiction, Extraterritoriality & Comity

·      Update on Recent FRAND Cases

·      Component Level Licensing

·      Proportionality of FRAND injunctions

·      What role for Standard Setting Organizations in the eco system?

·      Essentiality of Standard Essential Patents

 

Why Join?

 ·         Contribute to Building Bridges in a highly debated policy area

·         Advance the state of Play for Markets for Standard Essential Patents

·         Hear first-hand what Judges, Academics and Public Authorities have to say on some of the hottest trends in the sector

·         Be part of a Thriving Community of Thought Leaders

 In celebration of our 10^th anniversary, we are giving out free seats to the conference!^{*(subject to availability & approval)}

Day 1: June 23 2021

https://zoom.us/webinar/register/WN_ngMBJZprQGCSrznX4rUS0g

 Day 2: June 24:

https://zoom.us/webinar/register/WN_xQuQUnBFTS-W_VxYv0ecNg

 Day 3: June 25:

https://zoom.us/webinar/register/WN_7y6VTGAbRpSJN5jK_CPZaQ

 

Enjoy, Debate and Have Fun!

 

mRNA Vaccine Patents Study

Mario Gaviria and Burcu Kilic have published an interesting article titled, “A Network Analysis of Covid-19 mRNA Vaccine Patents.”  The article helpfully provides information concerning the relationship between entities, patents and licenses concerning mRNA vaccine patents.  Notably, the article identifies foundational patents from the University of Pennsylvania and the University of British Columbia and traces the relationship through various entities.  The article is available, here. KEI provides an analysis of potential U.S. government funding of some of those patents, here. 

Biden Administration's Support of the So-Called WTO Waiver of COVID-19 Related IP

There’s been a lot of commentary going around regarding the Biden Administration’s support of South Africa and India’s proposed WTO waiver of COVID-19 related IP.  I thought I’d weigh in with maybe a bit of a slightly different angle [These are my personal views and certainly do not represent other folks on the blog.].  The Biden Administration’s support of the waiver is, mostly, about politics.  Many have written about how a WTO waiver of COVID-19 related IP under TRIPS, for a myriad of reasons, will not result in getting the vaccine or treatments to people in India or other countries who may need it.  For example, please see Professor Ana Rutschman’s excellent co-authored post, here, and Professor Jorge Contreras’ excellent post, here.  I don’t 100% agree with that general position because I frankly do not have enough information about the global patent landscape, particularly with respect to devices used to treat people with COVID-19, or global manufacturing and distribution capabilities.  I am also uncertain because some say it will help.  However, if I am in a position where I am unsure of a decision and millions of human lives are in the balance in a global pandemic, I am going to err on the side of saving human lives.  I think most Americans would agree with me.  I could be wrong. 

From a practical perspective, the patent waiver is, in my mind, political for at least two reasons.  First, the United States' standing in the world has sunk because of Donald Trump’s presidency.  In my humble opinion, he amplified some important issues, but took us down a path of challenging and alienating our allies.  Attempting to make COVID-19 treatments and vaccines available to people around the world is a great way for the United States to exercise so-called “vaccine diplomacy.”  And, let’s face it: the United States needs India on our side.  Biden is trying hard to prove that “America is back.”  That we don’t just give a crap about ourselves, but want to be there to support the rest of the world.

Second, I am doubtful the waiver will ever be adopted or fully implemented.  Why?  The United States' support for the waiver, in my mind, is about creating negotiation leverage.  The pharmaceutical industry will fight tooth and nail for every step protecting their business model, and one effective way to increase access is to create bargaining leverage through policy levers.  The United States has been dealing with a drug pricing crisis before COVID-19, and it hasn’t gone away.  Yes, I am very grateful to the pharmaceutical industry for the COVID-19 vaccines, but as others have pointed out, they have been well-compensated by the U.S. government and others who can pay.  The end result from all of this should be increased cooperation to manufacture and distribute vaccines and treatments, and the setting of a reasonable price for the vaccines and treatments.  Can you guess who is still going to make a lot (MORE) money?  Finally, do I think this is going to result in a world where people will no longer see human health innovation as something to be invested in without the potential of sufficient profits?  A world where patent protection will be waived all the time?  C’mon.  I seriously doubt it.

So, to sum up: Let’s save as many lives as we can and get the world economy back on its feet; Let’s continue to be a strong influence and partner supporting democracy and freedom throughout the world; and Let’s reach a compromise fast--protecting everyone's interests to the best extent possible--on how to move forward expeditiously to save lives.  

It is simplistic and short-sighted to undermine Covid-19 patent rights

President Biden’s administration is making a major mistake by its top trade advisor, Katherine Tai, advocating a waiver of patent rights for Covid-19 vaccines.

While all who are involved, or would like to be, should move heaven and earth to increase Covid-19 vaccine supply until everybody worldwide who wants to be vaccinated has been vaccinated, undermining patent rights will not help but only hinder achieving that objective.

Patents are not recipes and do not provide the knowledge and expertise needed for production

All evidence is that the limiting factor is in vaccine supply—not in patent-licensing costs. The pressing need is to remove constraints—such as export bans that block ingredient supply chains— and to increase manufacturing capacity. Production supervision and training from those with the expert knowledge in operating such facilities who can ensure high-quality output reliably and on a massive scale are also required.

Instead of stripping Covid-19 patent owners of their core assets and rights, incentives to license patents and owners’ wider range of intellectual property—also including vital trade secrets such as how to make the vaccines with manufacturing process know-how—should be retained.

Vaccine demand remains immense. Many highly populated nations still have very low vaccination rates in the single digit percentages, for example, in India where the pandemic is currently raging with hospital facilities being overwhelmed. Satisfying demand will benefit us all when most of the world’s entire population is vaccinated because none of us will be safe from the virus and the threat of new variants until then. This is also a major incentive to vaccine patent owners—for example, BioNTech whose business model is in technology transfer, licensing and collaboration with downstream partners—to scale up that further. Fair reward for such efforts will enable licensors to justify up-front commitments and investments required in providing that support.

Patents encourage R&D investment and licensing-based horizontal business models

While the debate about whether patents stimulate or impede R&D investment and innovation continues among those with strong vested interests on either side, research including empirical data over many decades indicates that strong patent rights are particularly important to small, non-vertically integrated firms like BioNTech. A recently recorded LeadershIP seminar publicly available online illustrates this by featuring academic Jonathan Barnett’s new book on the subject entitled Innovators, Firms and Markets: The Organizational Logic of Intellectual Property. The session also includes remarks from others including entrepreneur and venture capitalist Greg Raleigh on the importance of patents to small companies such as BioNTech in biotechnology being able to raise investment capital to fund R&D.

The first-to-market and highly efficacious BioNTech/Pfizer vaccine is a stellar example of how the patent system works. In absence of strong patent protection companies like BioNTech would not exist. Not only did patents incentivise venture capitalists to make large and risky investments ahead of BioNTech’s technology commercialisation prospects, patents also enabled the firm to partner Pfizer, with its wide gamut of complementary resources required to collaboratively complete R&D and bring the vaccine through clinical trials to production and distribution. The partnership’s rapid delivery of Covid-19 vaccine is a huge technical, commercial and humanitarian success story.

Vaccine costs including patent fees are small versus economic costs of pandemics

The Covid-19 epidemic has cost several trillion dollars in the $88 trillion global economy—given a projected economic decline of 5.2 percent in 2020 versus growth of 2.3 percent in 2019. Patent licensing fees pale in comparison to this given that the entire cost of doses has averaged approximately $20 each. In comparison, I recently spent more than $100 on a Covid-19 PCR test and anticipate having to do that several more times in coming months. With competition among many different clinically approved vaccine technologies and suppliers including the highly effective, safe and easy to distribute Oxford/AstraZeneca vaccine priced at around $5 per dose already, existing free market commercial pressures on licensing charges—including patent royalties and for transfers of other intellectual property—are substantial.  With around 1.3 billion total doses of Covid-19 vaccines administered worldwide so far, at that price, vaccinating the rest of the world’s entire 7.8 million population with two doses would cost around $70 billion.

Other people’s money and redistribution of wealth

While, as Tai said recently, "This is a global health crisis, and the extraordinary circumstances of the COVID-19 pandemic call for extraordinary measures", this is not the first and it will not be the last global health crisis. President Biden plans to spend $3 trillion in government borrowings and tax receipts with various programmes including construction in response to the economic harm from the pandemic. An opportunistic raid on patent owners would also redistribute wealth to intermediaries such as manufacturers, but the world needs ongoing technical developments from large and small, young and old companies in the biotechnology and pharmaceutical industry to deal with new variants of Covid-19 and other new pathogens that will surely emerge. There is abundant economic justification not to undermine the valuable long-term gains the patenting and licensing system is providing. As well as rewarding existing patent holders, availability of such potential returns in “a global health crisis” will reassure and attract others to invest in additional R&D. While this pandemic is terrible with around 3.3 million deaths worldwide already, the next one could be even worse given that the 1918 Spanish flu epidemic killed 50 million people. We need to be as well prepared as we possibly can for whatever might ensue.

The Proposed U.S. Endless Frontier Act -- An Excellent Idea!

This is an excellent idea—and with bipartisan support!  Over US $100 billion for innovation.  It would benefit from additional funding and this is the time to do it. Love the title! The press release follows. 

April 21, 2021

Washington, D.C.— Senate Majority Leader Chuck Schumer (D-NY), Senator Todd Young (R-IN), Representative Ro Khanna (D-CA), and Representative Mike Gallagher (R-WI) today reintroduced the bipartisan Endless Frontier Act. The bill is a bold initiative to advance and solidify the United States’ leadership in scientific and technological innovation through increased investments in the discovery, creation, and manufacturing of technology critical to U.S. national security and economic competitiveness. The bipartisan legislation further targets support to ensure new research investments translate into American industries and manufacturing and high-tech jobs in regions across the country to become global centers of emerging technology.

In addition to Senators Schumer and Young and Representatives Khanna and Gallagher, the Endless Frontier Act is cosponsored in the Senate by Senators Maggie Hassan (D-NH), Susan Collins (R-ME), Chris Coons (D-DE), Rob Portman (R-OH), Tammy Baldwin (D-WI), Lindsey Graham (R-SC), Gary Peters (D-MI), Roy Blunt (R-MO), Steve Daines (R-MT), Chris Van Hollen (D-MD), Mitt Romney (R-UT), and Mark Kelly (D-AZ). The bill is cosponsored in the House by Representatives Susan Wild (D-PA), Mike Turner (R-OH), Jamaal Bowman (D-NY), Brian Fitzpatrick (R-PA), and Mikie Sherrill (D-NJ).

“I am proud to reintroduce the bold, bipartisan and bicameral Endless Frontier Act today with Senator Todd Young and Representatives Ro Khanna and Mike Gallagher to address several dangerous weak spots in America’s economic and national security that threaten our global technological leadership,” said Majority Leader Schumer. “This legislation will enhance American competitiveness with China and other countries by investing in American innovation, building up regions across the country to lead in the innovation economy, creating good-paying American manufacturing and high-tech jobs, and strengthening America’s research, development, and manufacturing capabilities. The Endless Frontier Act is the key to preserving America’s position on the world stage as a current and future technological leader in the 21^st Century. In the coming weeks, the Senate will turn to this legislation and other pieces of bipartisan China related legislation to ensure that the U.S. Government’s hand at home and abroad is as strong as possible as we compete with China on all fronts.”

“We face a pivotal time in history. Right now, the Chinese Communist Party is emphasizing to the world that the United States is a divided nation. This is a rare opportunity to show the authoritarians in Beijing, and the rest of the world, that when it comes to our national security, and most importantly our China policy, we are united. The Endless Frontier Act is our path forward. I’ve worked with my colleagues to ensure the Endless Frontier Act will help invest in innovative small businesses that create jobs, invest in critical emerging technologies, and put America in a position to outgrow, out-innovate, and out-compete our leading geopolitical foe,” said Senator Young.

“The era of endless wars is coming to a close and, in its place, we are set to embark upon a 21st century full of mass investment in scientific discovery & technological innovation,” said Representative Khanna. “This bicameral, bipartisan legislation is the first step on making that future a reality for our country. Grateful for Majority Leader Schumer’s leadership, as well as the partnership of Sen. Young & Rep. Gallagher, as we bring together the innovations of Silicon Valley, the fortitude of the American Midwest, and the wealth of the Empire State under one proposal. President Biden is in an ideal position to sign the Endless Frontiers Act & make it a pillar of efforts to revive our post-COVID economy. We must win the technology race.”

“While America has long been the global leader in science and technology, our superiority is at risk. The Chinese Communist Party has used decades of intellectual property theft and industrial espionage to close this technological-gap in a way that threatens not only our economic security, but our also our way of life,” said Representative Gallagher. “Just as we did at the outset of the Cold War, we have to substantially increase federal investment in technologies essential for our national survival. This bill makes a down payment on our national leadership and will translate into new American companies, manufacturing and high-tech jobs, and opportunities for the regions across the country – most importantly the Midwest – to become a global center of emerging industry--all while ensuring that America, and not the Chinese Communist Party, dominates the critical technologies of the future.”

The Endless Frontier Act bill text can be found HERE and a summary can be found HERE.

Additional Background on the Bipartisan Endless Frontier Act

Today, the United States’ position as the unequivocal global leader in scientific and technological ingenuity and innovation is under pressure from China and is eroding. U.S. competitiveness and national security are being threatened by decades of U.S. underinvestment in research, manufacturing, and workforce development, coupled with foreign competitors stealing American intellectual property and aggressively investing to dominate the key technology fields of today and of the future.

The Endless Frontier Act will reinvigorate the U.S. innovation economy, support research and development throughout the country, help lead to the creation of new jobs of the future here in America, and keep the U.S. economically competitive against China and other countries. The members of Congress emphasize that without a significant and sustained increase in investment in research, education and training, technology transfer and entrepreneurship, manufacturing, and the broader U.S. innovation ecosystem across the nation, it is only a matter of time before America’s global competitors overtake the U.S. in terms of technological primacy, threatening national security and prosperity.

Specifically, the Endless Frontier Act proposes an expansion of the National Science Foundation (NSF) with the establishment of a new Technology and Innovation Directorate within NSF to advance research and development in 10 key technology focus areas, including artificial intelligence, semiconductors, quantum computing, advanced communications, biotechnology, and advanced energy.

The newly-established Technology and Innovation Directorate would receive $100 billion over five years to invest in basic and advanced research, commercialization, and education and training programs in technology areas critical to national leadership. An additional $10 billion would be authorized at the Department of Commerce to support regional technology strategies and to designate at least 10 regional technology hubs, awarding funds for comprehensive investment initiatives that position regions across the country as global centers for the research, development, entrepreneurship, and manufacturing of new key technologies.

The Endless Frontier Act also establishes a new Supply Chain Resiliency and Crisis Response Program with the national security mission of strengthening critical technology supply chains in the U.S. and with global allies and partners. Additionally, the bill invests in U.S. manufacturing innovation and competitiveness with over $2.4 billion in funding to enhance and expand the Manufacturing USA network to ensure global leadership in the manufacturing of key technologies. To support the country’s national security capabilities, the bill mandates a strategy on national competitiveness and ingenuity in science, research, and manufacturing to support the national security strategy.

IPwe's Forthcoming NFTs Patent Marketplace

IPwe is attempting to create a marketplace for patents through the utilization of blockchain technology, specifically NFTs. I heard a somewhat similar idea floated about five or so years ago concerning blockchain.  It is an interesting proposal, and we will have to see how it works out.  I am excited that folks are moving forward with the idea; however, I do think there are numerous issues that need to be worked out.  I am working on a forthcoming co-authored paper exploring some related issues. Here is the IPwe press release:

IPwe today announced plans to begin representing patents as non-fungible tokens (NFTs) or digital assets by working with IBM (NYSE: IBM) to create the infrastructure for representing patents as NFTs and storing the records on a blockchain network. The tokenization of intellectual property (IP) will help position patents to be more easily sold, traded, commercialized or otherwise monetized and bring new liquidity to this asset class for investors and innovators.

IPwe, working with IBM, was the first to create a patent marketplace on the blockchain.

Tokenization provides greater transparency and can also make related transactions simpler and more cost-efficient. By representing IP in this way, it can be licensed, sold and commercialized. Organizations can also more easily view the IP as an asset on their balance sheet. While NFTs have been used to represent digital art, sports memorabilia and even iconic Tweets, the early adoption of IP-based NFTs could usher in a transformation of how IP is treated by inventors and enterprises.   

"The IPwe Platform is designed to transform the patent asset class by increasing transparency and promoting engagement, which we believe will encourage innovation," said IPwe CEO Erich Spangenberg. "The use of NFTs to represent patents will help create completely new ways to interact with IP. This is expected to benefit not only large enterprises that have significant intellectual property, but it will bring new opportunities to small and medium enterprises and even individual IP owners. We believe it will usher in new offerings by financial services firms and corporations to promote the evolution of a new patent asset class." 

These NFTs will be stored and shared on the IPwe Platform, hosted on IBM Cloud and powered by IBM Blockchain. The IPwe Platform also enables the Global Patent Marketplace, which allows owners and other members of the patent ecosystem to engage and transact, buy, license, finance, sell, research and commercialize patents. IPwe, working with IBM, was the first to create a patent marketplace on the blockchain. The introduction of NFTs will only help accelerate the opportunity for IP, which has been notoriously difficult to manage, value and transact, to be treated as a liquid asset. 

IPwe will soon begin trials of its NFTs on the company's Global Patent Marketplace. 

According to IPwe, many enterprises, governments, universities and small and medium enterprises (SMEs) around the world are already using their technology, including the IPwe Platform and the IPwe Registry and Global Patent Marketplace. For SMEs in particular, representing patents as digital assets is especially powerful because it allows IP to be treated as collateral or assurance of an organization's value, also allowing it to be more easily leveraged when seeking funding. The IPwe Registry collects current, active and historical patent records in a single freely accessible registry with enhanced search enabled by IBM AI. A broader ecosystem including financial institutions, insurers, enterprises and other patent stakeholders are planned in the coming months to support the use and exchange of tokenized patents using these new technologies.

IBM and IPwe have worked together for the last three years applying IBM's deep expertise in blockchain and artificial intelligence to the IPwe Platform to help protect ownership information; generate patent and portfolio analytics; facilitate transactions; reporting and advancements of the next intelligent generation of patent pooling - an agreement among multiple patent holders to jointly license their IP. 

"IBM has a long history of leadership in intellectual property and the application of AI and blockchain in business. Our work with IPwe is another example of our collaboration with leading innovators to drive outcomes powered by blockchain capabilities and digital assets that have the potential to transform entire industries," said Jason Kelley, General Manager, Global Strategic Partnerships, IBM Services. "As businesses increasingly look to transform how they work with intelligent workflows, blockchain technology is a critical tool to increase transparency and reduce barriers."

To learn more about participating in the NFT trials on the IPwe Platform anticipated to start in Q2, or joining the ecosystem please visit here. 

IPwe anticipates tokenized IP on the platform to be commercially available in Q4 2021. 

Valuation of the King of Pop's Image and Likeness: Not That High

The U.S. Tax Court released an opinion concerning the dispute between the U.S. Government and Michael Jackson’s Estate concerning the valuation of his image and likeness.  Notably, the court stated that the estate valued his image and likeness at $3,078,000, and the government valued it at $161,307,045.  That’s quite a spread and you can imagine that the tax bill looks very different based on the valuation.  The court ultimately valued Jackson’s name and likeness at $4,153,912.  The decision is over 250 pages and chronicles Michael Jackson’s rise to fame as well as the problems.  Importantly, the decision raises how even when Michael Jackson was enjoying commercial success as an artist that licenses of his name and likeness did not do well at all.  The decision states:

Jackson’s personal fame meant that he received numerous requests for merchandising licenses for his “image and likeness.” To handle these requests, Triumph International, Inc.--an S corporation with Jackson as its sole shareholder --was incorporated in March 1984. In July 1984 Triumph entered into a five-year licensing agreement with Sullivan’s company, Entertainment Properties, for the use of Jackson’s image and likeness on a variety of products, including a line of clothing and fragrances. Under the agreement, Jackson was to receive $18 million upfront, with a potential total of $28 million. Jackson, however, was the only winner in this deal. He got the $18 million, but the merchandise didn’t sell, and the deal ultimately proved disastrous for the Sullivan family.

Based on Michael Jackson’s success at that time, one wonders if there were management issues concerning the exploitation of his image and likeness.  After Jackson was sued for child sexual assault, the court notes that his next tour, while successful, did not have dates in the United States and was not sponsored.  The court states:

The tour did have one merchandising agreement. Triumph granted Sony Signatures “the sole and exclusive right and license to utilize the Licensed Marks in connection with the manufacture and [distribution]” of merchandise, with “Licensed Marks” defined as “name(s), symbols, logos, trademarks, designs, likenesses and/or images of [Jackson].” Sony Signatures paid a $6 million advance, and Jackson also got nominal amounts from a few other licensees. Sales of tour merchandise were, however, significantly less than the advance, and Jackson had to repay Sony Signatures nearly $4 million.

The court concludes that:

We have to look for the value of each of Jackson’s assets as if “in the decedent’s hands at the time of its transfer by death.” Estate of Simplot, 249 F.3d at 1194-95. The value we put them as of the day he died is, we acknowledge, much less than their value much later under the Estate’s management. Branca, a friend of Jackson’s for many years, but a practical man forever, credibly testified that as popular singers age their prominence declines. Jackson, at the time of his death, was not behaving as if this were true; even a rational and undistressed hypothetical seller would have been hardpressed to avoid fire-sale prices. But Branca is right. Older stars’ “fans are less apt to buy tchotchkes.” Older stars do get less play on the radio. And according to all the expert witnesses, the same is true about even Jackson. They predicted that, like most popstars, Jackson would have a foreseeable surge in sales of his songs when he died, but a surge that would fade with time. They are right. Popular culture always moves on. There will come a time when Captain EO joins Monte Brewster and Terry Forbes as names that without googling sort of sound familiar, but only to people of a certain age or to students of entertainment history. And just as the grave will swallow Jackson’s fame, time will erode the Estate’s income. It resurrected and then sold what became its most valuable asset to Sony before trial. The value of what it has left, no matter how well managed, will now dwindle as Jackson’s copyrights expire and his image and likeness shuffle first into irrelevance and then into the public domain.

I am not sure “radio” time is that important anymore—like on an FM station, but see the licensing information mentioned above.  The full opinion has a lot of information on valuation and is available, here.