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.
Friday 27 October 2023
Wednesday 18 October 2023
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
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
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.
in advance for this webinar:
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represent those of the organizers, its employees or consultants.
Thursday 5 October 2023
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
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
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
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
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
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
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
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.
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.