Friday 27 October 2023

Five Eyes on China: 60 Minutes

Members of the Five Eyes recently provided a brief overview of the threat of technology theft concerning China on the U.S. 60 Minutes show.  The interview includes brief mention of academic security as well as election influence.  The interview can be found, here

Wednesday 18 October 2023

IP Valuation for Investment - Free Webinar 25th October 2023, 15:00BST

                                         IP Valuation for Investment

Attracting investment is vital for sustaining and growing innovative businesses. Intellectual property is often crucial in attracting capital, and so proper valuation and management of IP is essential to the success of the business. This panel discussion considers the best way to approach using IP valuation to attract investment, drawing on the diverse and extensive experiences of our excellent panelists.

About the Speakers

Olivia Tsai, Assistant General Counsel & Head of IP at Cruise

Olivia Tsai is Assistant General Counsel and Head of IP at Cruise, a position she has held for the last six years. In this role, Olivia draws on her extensive experience in intellectual property and a background in electrical engineering. Cruise is a $30 billion autonomous all electric vehicle company in founded in 2013 and based in San Fransisco, and its driverless cars can also be found in Austin and Phoenix. 

Cara Wessel Wells, Founder & CEO of EmGenisys

Cara Wessels Wells, PhD is the founder and CEO of EmGenisys. Based in Texas, Cara has a background in Animal Sciences and Reproductive Physiology. EmGenisys provides comprehensive health evaluations of embryos using machine learning models to non-invasively analyze changes and improve pregnancy rates by up to 20% in both livestock species and clinical human IVF. Cara brings an invaluable startup perspective to this discussion.

Tracy W. Druce, Partner at Novak Druce Carroll

Tracy Druce has 25 years of experience in intellectual property and is a founding partner at Novak Druce Carroll LLP. Tracy counsels companies of all sizes on intellectual property creation, management and exploitation, and these companies are frequently in industries where the technology is fast moving. Tracy works to establish monetizable intellectual property portfolios through a thorough understanding of the relevant market and close collaboration with his clients. Tracy will chair this webinar.


Dr. Roya Ghafele, Managing Director at OxFirst

Dr. Roya Ghafele is the founder and Managing Director of OxFirst, an award-winning law and economics consultancy. Much of its work is with tech companies as well as advising on public policymaking in the area of technology transfer. Dr. Ghafele is a visiting Professor at Brunel University, London as well as being an accredited expert witness to courts in England and Wales. Prior to founding OxFirst, Dr. Ghafele held an Assistant Professorship with the University of Edinburgh, a Departmental Lectureship with Oxford University and a Research Fellowship with the Haas School of Business, University of California at Berkeley. She also worked for the OECD and WIPO as an economist.

                                                             How to Join

Register in advance for this webinar:

 After registering, you will receive a confirmation email containing information about joining the webinar.


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. By joining the webinar you agree to our Privacy Policy and to receive forthcoming information on our webinars, newsletters and events. The views in this talk are the speaker’s own and do not represent those of the organizers, its employees or consultants.

Thursday 5 October 2023

UK Rejoins Horizon Europe - Implications for patent value


Earlier this month, Prime Minister Rishi Sunak announced that the UK will associate to Horizon Europe and the Copernicus Earth observation programme. This association and future membership is good news for British innovators who can once more now lead collaborations with their European colleagues and obtain the necessary funding to make the next generation of scientific breakthroughs.

Horizon Europe is the ninth European Union (EU) framework programme funding research, technological development and innovation and runs between 2021 and 2027. Although a product of the EU, Horizon also includes several members outside of the Union: Israel, New Zealand and Ukraine also participate. Copernicus is an Earth observation programme managed by the European Commission (EC).  

Researchers in the UK are now able to apply for grants and bid to lead projects under the Horizon programme. Almost 100 billion is available under the programme over its lifetime, and under the previous framework – Horizon 2020 – UK researchers received about 14% of the available grants.

The UK has a particularly strong research sector, and that will only be further supported through renewed access to the Horizon programme. Private sector research and development (R&D) is worth £43 billion to the UK each year and many companies spin out of UK universities each year on the back of a great innovation; Oxford alone has generated 205 spinouts since 2011.

As UK R&D resumes its cooperation with European partners in a leadership role, careful attention should be paid to intellectual property (IP) from the outset. Translating the innovations of the lab to the marketplace where their life-changing effect can be felt requires well-informed IP strategy and an acute awareness of how IP functions as an economic asset.  

In a previous article, we discussed how IP can be utilised throughout a company’s lifecycle to raise capital (which you can read there here) but at each phase proper valuation of a company’s IP is crucial. Raising capital through IP is likely to be most important for startups and spinouts, where other assets might be limited and a financial injection is required to bring the latest breakthrough to the market. OxFirst has previously assisted a young Software as a Service (SaaS) access over £25 million in funding through a patent valuation. This patent valuation enabled the company’s value proposition to be effectively communicated to investors, persuading them to invest.

Outside of raising capital, proper management of IP is also vital for effective commercialisation of IP. Patent filings have grown at roughly 10% year on year, but evidence shows that only a fraction of that IP can be linked to commercial activity. Bridging the gap between law and economics, is important for developing an effective IP strategy that will support business growth and ensure proper IP utilisation.

A first important step is knowing where you stand: innovative companies benefit from understanding the patent landscape in which they find themselves. Patent landscape reports combine IP data with a comprehensive market understanding to generate actionable insights. These reports can assist in identifying potential partners and competitors, as well as broader trends within the landscape that can inform how the company should most effectively manage its IP.

Once opportunities have been identified, the next step for decisionmakers is to consider how their IP assets might be most effectively commercialised. One approach is licensing, and IP valuation are an important instrument to support companies commercialise their IP assets in this way. Selling IP might also be an attractive option, and IP valuations helped determine the patent prize in a patent sale.  

Knowing what and how IP can be most effectively commercialised is fundamental to a successful IP strategy, and it is only by understanding in detail the economic implications of IP management approaches that this can be realised. Whether it is raising capital, commercialisation through licensing, IP sales or IP intelligence, bringing economic evaluation to the management of IP and achieving success for innovators.







Wednesday 4 October 2023

ITA-NIST-USPTO Collaboration Requests Comments on Standards


The United States Patent and Trademark Office (USPTO) has recently announced a collaboration with the International Trade Administration (ITA) and the National Institute of Standards and Technology (NIST) on standards in intellectual property (IP) and is requesting comments. It develops on the National Standards Strategy for Critical and Emerging Technologies released in May this year. That strategy called for a strengthening of US engagement in standards for such technologies, which includes communication and networking, semiconductors, artificial intelligence/machine learning, clean energy and quantum technologies.

This request invites respondents to answer 12 questions concerning a range of issues including fair, reasonable and non-discriminatory (FRAND) licensing practices, licensing rates and negotiations of them, the merits of a database of FRAND licensing rates (judicially determined or voluntarily publicised), and dispute resolution processes including alternative dispute resolution. The request is therefore wide-ranging, as expected with such an early stage of policy formation, but must be read in light of – and perhaps as a response to – the recent proposal by the European commission on the regulation of standard essential patents (SEPs) (which I have already covered and you can read about here and here).

The US has developed fairly substantial guidance on methods for FRAND valuation through the Courts, but at present there is no government position. This collaboration could take a number of forms, one of which may be a centrally determined valuation approach for FRAND licensing, similar to that likely under the EC’s SEP proposal. Should this be the direction taken by the ITA-NIST-USPTO, a range of FRAND valuation approaches are open to them.

We profile three of these: the top-down, comparable licenses, and incremental ex-ante approaches, but it is worth noting that many approaches exist. These three have been selected to illustrate the range of factors which may need to be considered when establishing FRAND royalty rates and why economic expertise is vital when establishing the value of SEPs and commensurate FRAND rates.


The top-down approach

The top-down approach determines a FRAND royalty rate for the standard as a whole and then distributes that value among the various patents that read on the standard. The method then seeks to split the cumulative royalty rate among all SEPs deemed essential to the standard. This approach conventionally begins with calculating the total aggregate royalty burden for all patents reading on a particular standard. As such, it caps the total royalty burden a licensee may have to pay. In such a scenario, the number of entities holding and asserting SEPs becomes irrelevant as the maximum royalty burden has been determined in advance.

The comparable licenses approach

The comparable license approach aims to determine a FRAND royalty rate with reference to extant, similarly situated licensing transactions. As a method, its approach to identify the worth of a licensing rate with reference to other known rates is quite intuitive. When identifying comparable licenses, particular attention must be paid to how one establishes comparability and what one qualifies as a comparable licensing rate. The courts are just one repository of the guidance. From an economic perspective, it is important the comparable license is transparent and can be read as a whole; the licensing package needs to be understood as a whole, and not just the licensing rate. Careful econometric analysis is therefore employed to derive a FRAND licensing rate from the licenses deemed comparable.

The incremental ex-ante approach

The incremental ex ante approach is concerned with differentiating the value that the patents bring to the product, as compared to the value that the patents derive from the act of setting a standard, which naturally imparts a value onto the SEP. This approach allows a determination of what a willing licensor and licensee would have paid for the patent(s) before it was recognized as being essential to a standard. Since royalties are often determined after the standard setting process is concluded, the patent holder’s bargaining position at the time of royalty negotiation (ex-post) can be very different from what it would have been before the standard was set and when alternatives were still available (ex-ante). This is what this approach seeks to encapsulate.

It is also worthwhile noting that elements of different approaches may be combined according to the circumstances of each case, and establishing FRAND licensing rates with a high degree of confidence often requires utilisation of more than one approach. For this reason, economic expertise in the valuation of SEPs for FRAND licensing is essential.