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 4^th 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:

https://www.oxfirst.com/oxfirst-fourth-ip-competition-forum-globalisation-and-frand/

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 Européenne du Droit Èconomique (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:

http://www.rwi.uzh.ch/de/lehreforschung/alphabetisch/picht/person.html

https://www.rwi.uzh.ch/de/oe/cipco.html

Here is a link to register: https://register.gotowebinar.com/register/2194048367188788236, 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.

Oxfirst Webinar: Balance Requirements for Standard Development Organizations

Our friends at Oxfirst have another exciting webinar scheduled for October 2, 2019 at 1600 to 1700 (British Standard Time) titled, “’Balance’ Requirements for Standards Development Organizations: A Debate between Professor Contreras and Professor Larouche.”  

Here is a description of the webinar:

“Antitrust and Balance of Interests in Standards Development - Lessons from NSS Labs v. Symantec”

The recent decision of the District Court of the Northern District of California, in NSS Labs. v. Symantec sheds light on the requirement that Standard Development Organizations (SDO) achieve a balance of interests in their procedures. Whilst the court ultimately did not rule on this point, the U.S. Department of Justice (DOJ) intervened in the case to insist – correctly in our view – that SDOs must meet that requirement in order to benefit from protection against antitrust liability under the Standard Development Organization Advancement Act (SDOAA).

Here are brief bios of the speakers: 

Professor Jorge Contreras

Jorge Contreras is a Presidential Scholar and Professor of law at the University of Utah in Salt Lake City, Utah, USA.  He holds a JD from Harvard Law School, all conferred with honors.  Prior to entering academia, Prof. Contreras was a partner in the Boston, London and Washington DC offices of the international law firm Wilmer Cutler Pickering Hale and Dorr. His current research focuses on intellectual property transactions, standard setting and science policy. He has edited six books and published more than 100 scholarly articles on these topics, and has received numerous awards for his scholarship and teaching. His latest books include the 2-volume edited series, The Cambridge Handbook of Technical Standardization Law (2018, 2019). He has been quoted in the NY Times, Wall Street Journal, Economist, Washington Post, and Korea Times, has been a guest on NPR, BBC and various televised broadcasts, and his work has been cited favorably by the U.S. Federal Trade Commission, European Commission and courts in the U.S. and Europe. 

Professor Pierre Larouche

Pierre Larouche (1968) is Professor of Law and Innovation at Université de Montréal, where he is in charge of the new PhD Programme on Innovation, Science, Technology and Law. Until 2017, he was Professor of Competition Law at Tilburg University (Netherlands), where he founded and directed the Tilburg Law and Economics Center (TILEC) and created the Bachelor Global Law. Prof. Larouche has also taught at the College of Europe (Bruges) (2004-2016), and he has been a guest professor or scholar at McGill University (2002), National University of Singapore (2004, 2006, 2008, 2011, 2013), Northwestern University (2009-2010, 2016-2017), Sciences Po (2012), the University of Pennsylvania (2015) and the Inter-Disciplinary Center (IDC, 2016). His research centers around economic governance, and in particular how law and regulation struggle to deal with complex phenomena such as innovation. He follows a meta-comparative and inter-disciplinary method. He currently teaches competition law, economic regulation, tort law as well as patents and trademarks.

Registration is free and available here:  https://attendee.gotowebinar.com/register/5539834762562087947

And, here is some "fine print" from Oxfirst concerning registration:

"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 OxFirst webinar you agree to our Privacy Policy (found here) and to receive forthcoming information on our webinars, newsletters and events."

IP Valuation for Investment Purposes -- Part 1

Here is the second post by Dr. Roya Ghafele.  It is the first part of a two part series on the importance of IP Valuation.  

IP valuation for Investment Purposes – Part 1

By Roya Ghafele, OxFirst Ltd. www.oxfirst.com

With the European Central Bank’s interest rate decision continuing to be at 0%, investors are forced to put their funds to work in different ways.  Can patents, the underlying rights to an invention, offer such an alternative? 

Any type of investment decision is hinged on an adequate appraisal of risk and return rates of an investment. Ideally, an investment yields high returns, while risk rates are kept as low as possible. The investment in intellectual property forms no exception to that.

The adequate valuation of intellectual property can hence play an important role in the promotion of technology markets. It is through this instrument that investors can make an educated placement of their funds. In spite of the instrumental role that IP valuation could assume, it is often ignored in the financial community. 

The problem does not seem to be that it is not possible to value IP for investment purposes or that IP has any intrinsic features that would prevent its valuation. The problem is a lack of awareness of the many opportunities provided by IP valuation. If investors have IP on their radar screen at all, then they tend to contend themselves with counting patents (apparently, the more, the better seems to be the premise) or to check if the company is involved in any legal proceedings. As to early stage technology companies, investors will at best consult a patent attorney who can undertake a freedom to operate analysis of the underlying patents of a technology. While such an assessment can provide helpful legal insights, it does not allow to understand how IP relates to potential business performance.

IP managers in technology companies on the other hand side do often also not know how to best communicate the value of patents to financial analysts, angel, VC or Private Equity Investors. Current accounting standards that allow to only partially reflect the value of patents do not make things easier.[1]  This leads to market inefficiencies, where valuable technology sits gathering dust, while investors are not able to scope potentially attractive financial opportunities. Already in 2014, the European Commission called for an enhanced usage of IP valuation as a means to better link those in search for funding with those eager to put their money to work.[2] Equally, the UK Intellectual Property Office launched an initiative inviting the City of London to ‘Bank on Intellectual Property.’ [3] Those initiatives have so far shown little results and the best practice for leveraging IP in financial transactions still seems to stem out of Silicon Valley, where some financial institutions have been reported to use IP valuation for investment purposes. [4]  Yet, institutions like these are the worthy exception, rather than the norm. 

So, with a lot to gain from overcoming the little understanding that prevails on IP valuation, the question arises what technology entrepreneurs can do to attract investors to their business.

I turn to this question in the part 2 of this comment, where I will seek to offer some practical tips that may help to better link IP to cash flows.

---

[1]  GHAFELE, R. ‘Accounting for Intellectual Property?’ Oxford Journal on Intellectual Property Law & Practice, Nr. 5/7 2010, at 37

[2] EUROPEAN COMMISSION, Report of the Export Group on Intellectual Property Valuation. http://ec.europa.eu/research/innovation-union/pdf/Expert_Group_Report_on_Intellectual_Property_Valuation_IP_web_2.pdf  (2014) at 7, 22-23, 57, 91,

[3] UKIPO ‘Banking on Intellectual Property? The role of intellectual property and intangible assets in facilitating business finance’ available at: http://www.ipo.gov.uk/ipresearch-bankingip.pdf (2014) at 221

[4] See About Silicon Valley Bank, http://www.svb.com/about-silicon-valley-bank/ (disclosing that Silicon Valley Bank’s clients include 50% “of all venture capital-backed tech and life science companies in the US” and that Silicon Valley Bank was established in 1983).

Welcoming Dr. Roya Ghafele to the IP Finance Blog!

IP Finance is delighted to announced that Dr. Roya Ghafele, the Director of OxFirst, will join our permanent team of bloggers.  I’ve pasted a short bio of Dr. Ghafele below.  Dr. Ghafele is planning to author a series of posts on IP valuation and management.  Please find her first post on IP valuation below.  We are very excited to have her join us!  


Here is her bio:

Dr Ghafele has been the Director of OxFirst, an award winning IP law and economics consultancy, since 2011. In addition, she has held academic positions in International Political Economy and Business with Oxford University since 2008 and was also a tenured Lecturer (Assistant Professor) in IP Law with Edinburgh University. Prior to that she had post-doctoral assignments at Harvard and U.C. Berkeley. From 2002-2007 she worked as an Economist with the U.N.’s World Intellectual Property Organization (WIPO) and the OECD. She started her career with McKinsey in corporate finance.

Her Ph.D. was awarded the Theodor Koerner Research Prize by the President of the Republic of Austria. Dr. Ghafele was trained at Johns Hopkins University, School of Advanced International Studies, the Sorbonne and Vienna University. During the course of her studies she was fully funded by the Austrian Government because her academic merits were continuously of outstanding quality. She is native in German and fluent in English, French and Italian.

Specialties: IP valuation, FRAND Royalty Rate Determination, IP and Competition Economics

Here is her first post: 


IP valuation – Why it Matters

The major challenge does not seem to be that patents or other forms of intellectual property cannot be valued or that IP disposes of any intrinsic features that would prevent its valuation. The challenge is that many IP managers are still rather ignorant when it comes to the valuation of intellectual property.  This can have a series of adverse effects. On the one hand, intellectual property may be inadequately managed. On the other hand, others in the company may in all honesty wonder what the bottom-line contribution of IP is to business. Without an adequate understanding of the value of intellectual property, much IP risks gathering dust and not being put to work in the most effective manner.

This raises the question how intellectual property can be valued. While there are many different methods that allow to value intellectual property, there currently exist three overarching principles that allow to value IP assets. These principles are in no way different from the valuation of any other assets, be they tangible or intangible in nature. These are the income, market and cost approach. Each of these methods offers different insights. Hence, depending on the situation, they can complement each other. The income method, measures value in terms of future revenues that can be generated from the asset. It looks at upcoming revenue streams and seeks to determine the current value of these assets. As the method is hinged on an outlook of what the future may hold, it is crucial to determine the discount rate, which reflects risks and probabilities associated with such potential future income. This method can be quite helpful if one is keen on enhancing the management of a patent portfolio. It gives the manager an insight as to how much the IP could potentially generate. This can help formulate a forward-looking IP strategy. The market method again looks at comparable rates that kind of similar IP could fetch in somewhat similar market transactions. As such the insight gained is what a typical rate could be for the IP. Such a method can give a helpful first insight when one is for example seeking to sell or license IP. It can allow to understand if one’s asking price is somewhat in the range of what others have wanted. That being said, it can be challenging to find such information and the method says nothing about the specific worth the patent has in a specific business context. The cost method again can help determine costs associated with IP creation. This can be useful when seeking to minimize costs in an IP Department.  

Each of these paradigmatic approaches have their strengths and weaknesses. They also vary in terms of the effort needed to find relevant information. But overall, they can help optimize expected results from intellectual property. Important to know is that any IP valuation is an off-book valuation and this makes it harder to systematically make use of data which has undergone the scrutiny of controlling. To the keen IP manager this is however nothing but a small stumbling block that should not prevent her to systematically manage IP for value generation.

OxFirst Presentation: "Patent Aggregator meets Patent Aggregator: SISVEL and RPX Join Forces"

OxFirst is offering another interesting presentation titled, “Patent Aggregator meets Patent Aggregator: SISVEL and RPX Join Forces,” on June 3, 2019, at 14.00 BST and 15.00 CET.  Registration is available, here.  The description of the presentation states: 

For the first time in history, an aggregator of innovative Standard Essential Patents (SEPs) and an aggregator of willing licensees worked together to enter into a deal that simplifies access to widely-used technology, effectively allowing hundreds of transactions involving patent rights to occur through a single agreement. The aggregator of innovative SEPs is Sisvel International S.A., a patent management company that pools and licenses patented technology essential to widely-used standards such as Wi-Fi. The aggregator of willing licensees is RPX Corporation, a patent risk management company that acquires rights in patents for members. Sisvel and RPX entered into an agreement providing a license to specified RPX members under 500 standard essential patents that make up the Sisvel Wi-Fi Joint Licensing Program. In addition, Sisvel also licensed those RPX members under 200 non-essential Wi-Fi patents, owned by Sisvel’s subsidiary, Hera Wireless S.A. The presenters are Mattia Fogliacco, CEO of the Sisvel Group, and Dan McCurdy, CEO of the RPX Corporation.  Their respective short biographies are below.

As CEO of the Sisvel Group Mattia Fogliacco’s focus lies in making sure Sisvel maintains its leadership in the creation of value through licensing activities, while continuing to foster innovation and Intellectual Property protection. He is in charge of defining the strategies, growing the business and manage the resources of the Group. As CEO of the Sisvel Group my focus lies in making sure Sisvel maintains its leadership in the creation of value through licensing activities, while continuing to foster innovation and Intellectual Property protection. Mattia Fogliacco has a background in business and innovation management and holds an MSc from Bocconi University and a CEMS master's in international management. He has been part of the Executive Management team of the Sisvel Group since 2014, working as Chief New Business Officer for the last 3 years. Before joining Sisvel, Mr. Fogliacco was Managing Director at Iinnovation SA, a company focused on licensing and IP transactions. He also served as Senior International Manager at a service provider of Deutsche Bank, managing three IP and innovation investment funds. Dan McCurdy is CEO of RPX Corporation, where he previously served as senior vice president from 2014 to 2016. Prior to RPX, Dan was a partner with Quatela Lynch McCurdy. From 2008 through June 2014, he was CEO of Allied Security Trust, and Chairman and CEO of PatentFreedom. In June 2014, PatentFreedom was acquired by RPX.  Previously, Dan was founding CEO of ThinkFire; President of Intellectual Property of Lucent Technologies and Bell Laboratories; a Vice President of IBM responsible for the creation of its Life Sciences business unit; a Vice President of Ciena Corporation where he directed merger, acquisition and corporate development; Director of Business Development for IBM Research; and Manager of Technology and Intellectual Property Policy for IBM worldwide.  Dan graduated summa cum laude from the University of North Carolina. He served on the Intellectual Property Policy committee of the United States’ National Academies, in 2011 was named CEO of the Year by Intellectual Property Magazine, and in 2014 was named one of the 40 most influential “movers and shakers” in IP transactions and acquisitions by Intellectual Asset Magazine. He has been named in the IAM Strategy 300, honoring the leading 300 IP strategists worldwide, every year since the annual list has been published.

Northwestern Releases Technology Standards and Standard Setting Organizations Databases and Congratulations to Dr. Roya Ghafele!

Northwestern University, Pritzker Law School, has released three databases on technology standards and standard setting organizations.  The announcement states:

The Searle Center on Law, Regulation, and Economic Growth is pleased to announce the release of three important databases on Technology Standards and Standard Setting Organizations (SSOs). The databases are available free of charge for all academic researchers.

The first database, known as the Searle Center Database on Technology Standards and Standard Setting Organizations, created by Justus Baron and Daniel F. Spulber, contains original data on the rules and membership of SSOs, and bibliographic information on published technology standards (including an original database of normative and informative references between standard documents).

The second database, created by Justus Baron and Tim Pohlmann (IPlyitics), contains the currently most comprehensive database of declared standard-essential patents (SEP) and the first detailed mapping of declared SEPs to a systematic dataset of standard documents.

The third database, created by Justus Baron and Kirti Gupta (Qualcomm), includes detailed procedural data on standard development at an important SSO, the 3rd Generation Partnership Project 3GPP.

The three databases are inter-related, and share a common system of identifiers for standards and firms to facilitate research applications combining the various databases.

Under the direction of Daniel F. Spulber, (Kellogg School of Management, Northwestern University, and Research Director of the Searle Center), the Searle Center's Research Project on Innovation Economics addresses a broad range of important issues involving intellectual property (IP), research and development (R&D), the market for inventions, innovation, and technology standards.

For details on the databases and the Searle Center's ongoing Research Project on Innovation Economics Project please visit: http://www.law.northwestern.edu/searlecenter/innovationeconomics
Papers describing the databases can be found at the following links:

- Justus Baron and Daniel Spulber: Technology Standards and Standard Setting Organizations: Introduction to the Searle Center Database, Northwestern Law & Econ Research Paper No. 17-16. Available at SSRN: https://ssrn.com/abstract=3073165 or http://dx.doi.org/10.2139/ssrn.3073165, forthcoming Journal of Economics and Management Strategy, 2018.

- Justus Baron and Kirti Gupta: Unpacking 3GPP Standards. forthcoming Journal of Economics and Management Strategy, 2018.

- Justus Baron and Tim Pohlmann: Mapping Standards to Patents Using Declarations of Standard-Essential Patents, forthcoming Journal of Economics and Management Strategy, 2018.

Please see the following instructions to receive access to the database:

- The three Searle Center databases are intended only for academic research. Commercial and or for-profit research is strictly prohibited.

- Prior to being granted access to the databases, all academic researchers must first compete a Data License Agreement (DUA).

- The DUA is available for download here: http://bit.ly/searlessodua
- Once requestor has filled out the required fields and signed the DUA, email a scan of the DUA to searlecenter@law.northwestern.edu

- Please note that a PDF electronic signature on the DUA is acceptable.

- All research assistants or research personnel that will have access to the data must also complete DUA's.

- Once we receive your signed DUA, we will verify that your application fits the criteria listed above. If we conclude that it does, we will then send you a link to a Box Folder where all of the files and supporting documents will be permanently hosted. You may have to create a Box account in order to access the databases.
. . .

The databases release is apparently for academics.  My guess is that others can access the databases for a fee. 

Congratulations to Oxfirst’s Dr. Roya Ghafele on joining the EU Commissions’ Group of Experts on Licensing and Valuation of Standard Essential Patents!  According to the press release:

The purpose of the expert group is to ‘deepen the expertise on evolving industry practices related to the licensing of standard essential patents in the context of the digitalisation of the economy, the sound valuation of intellectual property and the determination of fair, reasonable and non-discriminatory ("FRAND") licensing terms.’ The Expert Group’s importance to European and international governance formulation on FRAND is widely recognized. The Expert Group will address a host of complex issues pertaining to patents that read on standards, as already set out in 2017 in the E.C.’s ‘Communication from the Commission to the Institutions on Setting out the EU approach to Standard Essential Patents.’

Free webinar on "IP Valuation for Wealth Creation"

OxFirst is pleased to host a free webinar, to take place on April 24th at 3:00 pm UK time, on the topic of “IP Valuation for Wealth Generation”, and why IP valuation can play a crucial role in every step necessary to generate wealth on the grounds of intellectual capital. The speaker will be the internationally noted IP expert, Dr. Guriqbal Jaiya. Dr. Jaiya will discuss various ways to value IP and will weigh the strengths and weaknesses of each method. As well, he will address how IP valuation can be leveraged in corporate finance, strategy, litigation, licensing and tax.

As readers of IP Finance are well aware, IP valuation is playing, or at least has the potential to play, a fundamental role in corporate strategy, helping maximize profits and attracting investments. The valuation of the portfolio of pending and granted patents, trademarks, trade secrets, copyrighted works and designs of a firm remains often the best guess of the firm’s value and its investment potential. As such, the valuation of IP can be crucial to realize the business potential of a company. Yet, despite this, IP valuation is still often underutilized.

About the Speaker

Dr. Jaiya is an internationally recognised expert on intellectual property and intangible asset management, with a special focus on entrepreneurship, start-ups and innovative small and medium-sized Enterprises (SMEs).

For 24 years, he served with notable distinction as a senior officer at WIPO. While at WIPO, he worked closely with a wide variety of multilateral institutions, including the WTO, UNDP, World Bank, UNESCO, UNIDO, WHO, ILO, ADB, AfDB, IADB, UNCTAD, Asian Productivity Organisation, ESCAP, UNECE, ESCWA, ECA, ECLAC, FAO, ITC, OECD, as well as over 150 national and regional IP offices. [This blogger wonders whether OXFirst will give a prize to anyone who can recite without consultation the full name for each of these acronyms.]

Dr. Jaiya has conceptualised, authored or co-authored numerous articles and book chapters on IP as well as some 15 books and 13 multimedia modules on different facets of IP management in business. He has delivered lectures, made public presentations and conducted training events on different facets of IP asset management in business for diverse audiences in regional and international events for participants from some 175 countries. [This blogger still cherishes the half-day that he spent with Dr. Jaiya at WIPO a decade ago, in which we discussed a wide variety of IP issues.]

Dr. Jaiya serves as a senior advisor to OxFirst.

For details about registration, see here. Please note that OxFirst cannot accept registration from private email accounts.

OxFirst webinar on "IP indicators for business performance"

OxFirst has announced a webinar on the always challenging topic of “IP indicators for business performance.” The webinar will take place on April 12, 2018, 15:00 British Standard Time and the speaker will be Mr. Terry Adams, former Assistant Vice President of Intellectual Asset Management at Nestle.

The topic-- Connecting intellectual property metrics and key performance indicators (KPI’s) to business relevant metrics and KPI’s is critical to gaining and holding the attention of executives within an organization. The relevant information typically exists within disparate systems, but data are rarely properly integrated to generate meaningful perspective.

The speaker--Terry Adams has vast experience across numerous product categories, including food, beverages, home care, and personal care in the fields of scientific research and product development. He began his career at Procter and Gamble, where he became a Group Leader in 1991. In 1994, Mr. Adams joined the Dial Corporation (now a company of Henkel), where he eventually was appointed Manager of International Technology Coordination, covering all of Dial’s product categories. In 1998, Mr. Adams joined the Kimberly-Clark Corporation, where he was eventually appointed the Senior Research Manager of the Global Intellectual Asset Management Team, providing strategic coordination of Kimberly-Clark's 3500 patent families and other global intellectual assets. Mr. Adams joined Nestlé in July 2006 as Assistant Vice President and head of the Technology Intellectual Property function, a matrix network across 28 technology centers in 10 countries.

For registration, see here. OxFirst notes that the number of places is limited and that only registrations undertaken from professional email addresses are accepted (no registrations from Yahoo, Gmail or similar private accounts will be accepted).

By Neil Wilkof

Photo by Robert Cutts and is licensed under the Creative Commons Attribution 2.0 Generic license.

Professor Margaret Kyle on Whether Pharmaceutical Innovations are Rewarded

Our friends at Oxfirst are hosting another interesting webinar on March 14, 2018 at 15.00 BST and 16.00 CET.  The webinar is titled, “Are Important Innovations Rewarded?  Evidence from Pharmaceutical Markets.”  The presenter is Professor Margaret Kyle. 

Here is a description of the presentation:

This research focuses on the relationship between therapeutic value and different measures of market rewards (the number of patents, price, market share, and total revenues) of a new treatment. Using an assessment of therapeutic value provided by the French Haute Authorité de Santé (HAS), I find a weak relationship between most measures of rewards and this assessment of therapeutic value, suggesting that the returns to developing a “me-too” product are not very different from developing treatments with greater therapeutic effects. One interpretation is that the HAS score is a poor assessment of therapeutic value, in which case the use of similar health technology assessments by governments and other payers should be re-examined. Alternatively, if the HAS score is informative, the results suggest countries are spending too much on less innovative products, and that a re-balancing of innovation incentives may be worth considering if therapeutic value is highly related to social welfare.

Here is Professor Kyle’s biography:

Prof. Margaret Kyle (MINES ParisTech and CEPR) currently holds the Chair in Intellectual Property and Markets for Technology at MINES ParisTech. Her research concerns innovation, productivity and competition. She has a number of papers examining R&D productivity in the pharmaceutical industry, specifically the role of geographic and academic spillovers; the firm-specific and policy determinants of the diffusion of new products; generic competition; and the use of markets for technology. Recent work examines the effect of trade and IP policies on the level, location and direction of R&D investment and competition. She also works on issues of innovation and access to therapies in developing countries. Her papers have been published in various journals of economics, strategy, and health policy, including the RAND Journal of Economics, Journal of Public Economics, Review of Economics and Statistics, Journal of Public Economics, Journal of Law and Economics, Antitrust Law Journal, Management Science, and Health Affairs. Margaret holds a PhD in economics from the Massachusetts Institute of Technology and is an associate editor of the International Journal of Industrial Organization. She previously held positions at Carnegie Mellon University, Duke University, London Business School, and the Toulouse School of Economics, and is a visiting professor at the Kellogg School of Management, Northwestern University. She has also been a visiting scholar at the Center for the Study of Innovation and Productivity at the Federal Reserve Bank of San Francisco and at the University of Hong Kong.

Registration is available, here.  Space is limited and you must register with a professional email address.

IP management and IP strategy in small and medium-sized enterprises – perspectives from the EPO

OxFirst will be presenting a free webinar on one of the most challenging IP issues-- how small and medium-sized enterprises (SME’s) can effectively engage in IP management and strategy. The webinar will take place on January 26th between 3:00 PM- 4:00 PM British Standard Time.

The focus of the program will be on the results of a series of case studies carried out on the subject by the EPO. Twelve SMEs from different countries, operating in different industries and technology sectors and applying different business models, were interviewed about their IP strategies. The resulting case studies illustrate the various ways in which patents can be leveraged to support the development of SMEs in domestic and foreign markets. They also provide detailed information and recommendations on best practices in IP strategy and IP management. The case studies can be downloaded here.

About the Speakers

Professor Yann Ménière joined the European Patent Office as Chief Economist in February 2016. He was previously a Professor of Economics at MINES ParisTech, where he led the Chair on "IP and Markets for Technology". Besides his academic publications, he has prepared policy studies for the European Commission and other public organizations relating to patents. He previously taught at Imperial College, Université Catholique de Louvain and CEIPI.

Pia Björk is Programme Manager at the European Patent Academy. She joined the European Patent Office (EPO) in 1989 as an examiner in the fields of metallurgy and general mechanics. Between 2007 and 2017, she was operational director in the cluster of Pure and Applied Organic Chemistry in directorates dealing with cosmetics and then later pharma (galenics, medical use and biopharmacy). Pia Björk has passed the European Qualifying Examination (EQE), worked in the EQE Committee for the opposition paper and has been involved in basic and advanced training of examiners in search and examination. In January 2018, she joined the European Patent Academy.

To register, follow the instructions here. Oxfirst advises that private email addresses are not recognized.

IP Valuation in Early Stage Investments - Webinar Today - sign up!

You are invited to join OxFirst for a webinar today at 3pm - 4pm GMT for talk on IP Valuation in Early Stage Investments presented by John E. Dubiansky: 

What this talk is about

The adequate valuation of patents plays a crucial element in vital markets for technology, while at the same time allowing investors to make an educated investment decision.  In spite of that, investors lack adequate knowledge on how to value patents. The major challenge does not seem to be that patents cannot be valued for financial purposes, but rather that investors are quite ignorant about patents and are not well informed on their risk and reward structures. Against this background, this talk helps shed light on IP valuation and demystify a concept crucial to building markets for intellectual property.

About the Speaker

John is an attorney advisor in the Federal Trade Commission’s Office of Policy Planning. His work focuses on the intersection of intellectual property and competition law and on issues such as patent assertion entities and standard essential patents. Prior to joining the Commission, John practiced as a patent litigator at law firms in the Washington D.C. area including Howrey LLP and Kirkland & Ellis LLP. John holds a degree in mechanical engineering from Cornell University and received his J.D. from the Harvard Law School.

How to Join

https://register.gotowebinar.com/register/1180745033280219905

You are requested to please sign up with your professional email account as they don’t accept registrations from personal email addresses. 

OxFirst again: Free webinar on open source software, defensive patent pools and innovation

OxFirst is putting together what looks like yet another excellent free webinar, this time on the topic of "Open Growth: The Contribution of Open Source Software and Defensive Patent Pools to Innovation" The presenter will be Mr. Keith Bergelt, CEO of Open Invention Network, and the program will take place on October 31, 2017 at 2:00 pm, British Standard Time (make sure to check when your jurisdiction changes to winter time!).

There are few topics in the world of innovation and technology that are as dynamic as open source software and defensive patent pools. Open Source Software (OSS) is well-established in sectors as diverse as aviation, health, telecommunications, finance, publishing, education, and government. As nations increasingly rely on knowledge assets to grow, the adoption of OSS will have profound economic consequences. This talk identifies the mechanisms inherent to OSS that help fuel innovation in knowledge-based economies. In doing so, it conceptualizes the role of patents from an Open Innovation Paradigm and looks at the role that defensive patent pools can play in fostering collaborative exchange and open growth.

About the Speaker

Keith Bergelt is a pioneer in intellectual property finance. He is currently the CEO of Open Invention Network (OIN), which is a defensive patent pool and community of patent non-aggression enabling freedom of action in Linux. At OIN, Mr. Bergelt is responsible for coordinating the establishment and maintenance of a patent ‘‘no-fly” zone around Linux. As such, he is responsible for safeguarding an open and competitive landscape in key technology markets, such as back-office transaction processing and mission critical IT.

Prior to his extensive private sector experience, Mr. Bergelt served for 12 years as a diplomat with postings at the United Nations in NY and the American Embassy in Tokyo, Japan, where he was involved in the negotiation of IP rights protection in Asia. He holds a BA degree from Duke University, a JD from Southern Methodist University School of Law and a Masters of Business Administration degree from Theseus Institute in France.

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OxFirst free webinar on ‘Assessing Damages under the IPR Enforcement Directive’

OxFirst is presenting another free webinar, which appears to be another in the line of quality programs. The topic will be- ‘Assessing Damages under the IPR Enforcement Directive’, and it will take place on May 17th, 2017, 3:00 PM- 4:00 PM GMT | 16:00-17:00 CET. The speakers will be Dr Roya Ghafele and Rasmus Kamstrup Bogetoft. The program is described as follows:

The talk is first of its kind to draw together a range of different publicly sanctioned sources that provide instructions on how to value intellectual property. We apply these to illustrate how damages can be assessed under the IPRED. In doing so, we seek to contribute to a more educated way of how to assess damages under the IPR Enforcement Director.

In doing so, we fill an important gap: While the IPRED contains a host of principles discussing how to assess damages, there are no guidelines, commentaries or further explanations that would help the Court to understand how to translate these overarching guidelines into concrete assessments of the economic worth of the damage due. This, in our view, leaves an important shortcoming, which could lead to otherwise avoidable inconsistencies. Taking a bigger picture, the practice of IP valuation remains unclear to many practitioners.

By consequence, it finds much lesser application than it should. There is a clear need to increase market actors’ confidence and certainty in IP valuation methods as a way to assess damages in litigation, but also in licensing negotiations and other IP transactions. This will allow judges and practitioners alike to better understand the business and the value of the IP itself and even provide decision makers with the required information to decide whether to enforce or to license IP.

Dr Roya Ghafele has been the Director of OxFirst, an off-shot from Oxford University, since 2011. She has held academic positions with Oxford University, Harvard, U.C. Berkeley and the School of Law at Edinburgh University. Prior to that, she worked as an economist with WIPO and the OECD.

Rasmus Kamstrup Bogetoft is an assistant attorney with the Danish law firm Plesner. He is also external teacher in IP law at the Copenhagen Business School. He studied law and economics at Yale University and holds a LLM in law from the University of Kopenhagen.

Please use this link to register

Free OxFirst Webinar--"IP Commercialization Tactics for Wealth Generation & Innovation"

OxFirst is hosting another free webinar which, like previous events, promises to be most worthwhile. The topic is ‘IP Commercialization Tactics for Wealth Generation & Innovation’, and the event will take place on February 23rd at 15:00-16:00, British Standard Time. IP has often been portrayed as either an undervalued or underleveraged asset. This talk discusses the various means IP owners have at their disposal to commercialize their IP, be it patent brokerage, IP sales or licensing.

The speaker will be Patrick Terroir, Lead OxFirst Advisor and Chair of Patent and Technology Licensing Committee of Licensing Executive Society. Previously, Mr. Terroir was Managing Director of CDC Intellectual Property. He initiated and contributed to the creation of France Brevets and to the creation of the Tech Transfer Accelerators Companies (SATT) for the French universities. Between 2006 and 2008 he initiated and developed Caisse des Dépôts’s department in charge of industrial innovative clusters. Patrick Terroir is also an Adjunct Professor in Intellectual Property Economics in Sciences Po Paris.

To register, please consult the attached link.

OxFirst asks that you please register with your professional email account as it cannot allow attendees to sign up with private accounts (such as Yahoo or Gmail).

OxFirst to hold free webinar on measurement of effectiveness of the patent system

OxFirst will be holding a free webinar on the subject of ‘Assessing the Impact of Patent Strategy’. The program will take place on November 16, 2016, at 15:00-16:00 BST. The speaker will be Dr Nick Papageorgiadis, Lecturer in International Business of the University of Liverpool and Associated Researcher at the department of Business Studies of Uppsala University (Sweden).

In his presentation, Dr Papageorgiadis will focus on a new approach to the measurement of the effectiveness of the patent systems of 49 countries. He will then discuss the implications of the extent of the effectiveness of international patent systems on the patent strategy of firms, by explaining the results of his latest econometric studies.

Further details on signing up for what seems to be a most interesting presentation can be found here.

Free OxFirst Webinar: Dr. Eleanor Rosati on Neighboring Rights

Our friend at Oxfirst, Roya Ghafele, has let us know about another timely webinar sponsored by Oxfirst.  The brilliant Dr. Eleanor Rosati, Lecturer at University of Southhampton will present “Neighbouring rights for publishers: are national and (possible) EU initiatives lawful?”.

A description of the talk states:

Currently the EU Commission is considering whether a neighbouring right for publishers – whether in the press sector alone or also other sectors – should be proposed for adoption at the EU level. Against this background, this talk discusses: (1) the compatibility with EU law of national legislative initiatives that have resulted in the creation of ad hoc rights for press publishers; and (2) whether a neighbouring right for publishers may be adopted at the EU level and, if so, what changes of the copyright acquis are required. It concludes that, while the former may be contrary to Member States’ obligations under EU law, the latter may be pursued by amending relevant directives.

Dr. Rosati’s biography states:

Dr Eleonora Rosati holds a lectureship in intellectual property (IP) law at the University of Southampton, a guest lecturer in copyright law at EDHEC Business School, and is Editor in Chief of the Journal of Intellectual Property Law & Practice (Oxford University Press). Previously she was a post-doctoral legal research associate at the University of Cambridge, and worked in the IP departments of Bird&Bird LLP in Milan and London. Eleonora has authored several contributions on IP issues, and regularly contributes to specialist blogs The IPKat and The 1709 Blog, for which she reports and comments on IP-related news from all over the world.

The talk is scheduled for Friday, June 17, 2016 3:00 PM - 4:00 PM BST.  To register please follow this link: Registration URL: https://attendee.gotowebinar.com/register/4739425455434769153.  (Please note from Oxfirst that: “We only accept registrations undertaken with professional email addresses (i.e. we can’t accept registrations from yahoo, gmail or similar private accounts)”)

Oxfirst Free Webinar: Determining the Value of a Patent

Our friend at Oxfirst, Roya Ghafele, has let us know about another timely webinar sponsored by Oxfirst.  Dr. Ednaldo Silva, Founder and Managing Director of RoyaltyStat, and Dr. Roya Ghafele, Director of OxFirst will present “Determining the Value of a Patent”.  The talk will cover:

Intangible assets represent a major share of today’s businesses. The patents associated with those assets are the legal underpinning in that innovation. Yet, despite their fundamental importance, there is a lack of understanding of the economic worth of a patent. This talk seeks to overcome this gap, by discussing the when, if, how, what and why of patent valuation.  (IP Valuation Expert Group, European Commission, 2014)

Dr. Silva’s biography states: “Dr. Silva is an economist with over 20 years of experience in transfer pricing and the valuation of intangibles. Dr. Silva was the first IRS Office of Chief Counsel Sr. Economic Adviser, serving as a drafting member of the U.S. (1994) transfer pricing regulations and first economist in the APA Program. He has a Ph.D. from the University of California at Berkeley.”

Dr. Ghafele’s biography states: "Dr. Ghafele has been the Director of OxFirst, a spin out from Oxford University since 2011. In addition she has held senior academic positions with Oxford University since 2008; following stints at Harvard and U.C. Berkeley. Prior to that she worked for 5 years as an Economist with the U.N.’s World Intellectual Property Organization (WIPO) and the OECD. She started her career with McKinsey & Company."

The talk is scheduled for Friday, April 15, 2016, 1:00 PM - 2:00 PM BST.  To register please follow this link: https://attendee.gotowebinar.com/register/2134638427283858946 (Please note from Oxfirst that: “We only accept registrations undertaken with professional email addresses (i.e. we can’t accept registrations from yahoo, gmail or simiar private accounts)”)

Oxfirst Free Webinar on IEEE Standards Patent Policy by IEEE Experts

Our friend at Oxfirst, Roya Ghafele, has let us know about another timely webinar sponsored by Oxfirst.  Dr. Karachalios, Managing Director of IEEE, and Michael Lindsay, Partner at Dorsey LLP will present “Review of IEEE Standards Association (IEEE-SA) Patent Policy”.  The talk will cover:

IEEE-SA's Attempt to Provide Greater Clarity in its Patent Policy was triggered by how the landscape was evolving (recommendations from regulators; observations by the courts; IEEE's own experiences). This led to IEEE's re-examination of its standards patent policy, and the resultant policy updates aim at providing greater clarity to all stakeholders.

 

Dr. Karachalios’ biography states: “Dr. Karachalios is responsible for providing strategic and operational leadership and direction to IEEE-SA and for ensuring its consistent and positive differentiation as a standards body. Prior to that he served the EPO in various functions.”  Mr. Lindsay’s biography states: “Michael Lindsay is a partner in the Trial practice and Co-Chair of the Antitrust practice of Dorsey LLP. He practices in the area of general civil litigation, with a strong emphasis on antitrust (litigation and counseling), trademark and unfair competition, commercial litigation.” 

The talk is scheduled for February 17, 2016 at 15:00 GMT.  To register please follow this link: https://attendee.gotowebinar.com/register/5055758245458402049.  (Please note from Oxfirst that: “We only accept registrations undertaken with professional email addresses (i.e. we can’t accept registrations from yahoo, gmail or simiar private accounts)”)

Upcoming Oxfirst Webinar--Rt Hon. Professor Sir Robin Jacob Defending Patents

Our good friend, Dr. Roya Ghafele, has let us know that Oxfirst is offering another very exciting and timely free webinar.  The webinar is titled, “Patents Work: don’t erode the patent incentive.”  Here is a description of the talk:

In recent years the patent system has come under increasing scrutiny from a host of different scholars. These critiques have been taken up by Competition authorities and Supreme courts. Not understanding the full value proposition of the patent system, poses a danger to innovation.

The webinar is led by the distinguished Rt Hon. Professor Sir Robin Jacob, the Sir Hugh Laddie Chair at University College London and will be held on January 20, 2016 at 15.00 BST.  A brief bio for the Rt. Hon. Professor Sir Robin Jacob states:

The Rt Hon. Professor Sir Robin Jacob, was as Lord Justice Jacob a judge in the Court of Appeal of England and Wales.

He retired from the Court of Appeal in March 2011 (acknowledged in a valedictory address before a court-room packed with well-wishers) to take up his current position as the Sir Hugh Laddie Chair in intellectual property at University College London

He read Natural Sciences (physics) at Trinity College Cambridge (1960-1963) and law at the LSE (1963-1967). He was called to the Bar by Gray’s Inn in 1965 (Treasurer 2007). He was appointed a High Court Judge in 1993 and to the Court of Appeal in 2003.

He was admitted to the IP Hall of Fame in 2006.

Given the number of critiques of the patent system, see for example, here, it is very important to hear the “other side” of the coin.  While I don’t believe the patent system (and the overall global innovation system) is perfect, of course, technological innovation does seem to keep moving along—although there are important distributive justice issues.    

Please register for the webinar here: https://attendee.gotowebinar.com/register/274961839704516865

The hosts further note that, “Please register with your professional email account. We cannot allow attendees to sign up with private accounts (such as yahoo or gmail accounts).”