Licences and Insolvency: a new book on the block

Licences and Insolvency: A Practical Global Guide to the Effects of Insolvency on IP Licence Agreements, put together by consulting editors Matthias Nordmann, Ulrich Reber and Marcel Willems on behalf of the International Bar Association, was published last month by Globe Law and Business.

The publishers describe this volume as follows:

"The number of insolvencies is increasing by the day, while insolvencies are becoming more and more complex and international. Licences represent an increasingly important part of a company’s assets - be they technology licences, name or trademark licences or licences with regard to text, photo or audiovisual material or software. While insolvency proceedings of licensors or licensees can pose material threats to the prospects of the business concerned, there are still many uncertainties as to the fate of a licence, applicable law, place of jurisdiction in such proceedings and so on.

This practical handbook provides an overview of the most relevant legal issues in over 25 [I counted 26] of the most important business nations around the globe. It provides guidance to licensors, licensees, insolvency practitioners and their attorneys to promote a better understanding of the insolvency mechanisms in these countries and the effect that such proceedings may have upon licence agreements with an insolvent entity".

This blogger is not normally enamoured with titles compiled to this template, which he has often found unhelpfully rigid. They are often of little use when seeking to ascertain the law in any given country, presumably on account of length restrictions in order to prevent imbalance between national contributions, and not much use when seeking to compare the law of the different jurisdictions since the problems encountered by him have never matched the data available.  This volume is however a pleasant and welcome exception, since the subject is one on which there is little in the way of accessible information that is conveniently presented for the IP practitioner who is more comfortable with licensing than with insolvency. This title has the potential to become rather more than a fancy calling card for its contributors and to make itself generally useful in those sad situations in which licensor, licensee or both find themselves without resources -- not just for the parties concerned but for creditors and other adversely affected third parties.  Well done!

Bibliographical data: Hardback, 328 pages. Price: £125. ISBN: 9781909416253. Book's web page here.

Litigation-Proof Patents: a sequel to True Patent Value

In September of last year this weblog posted a review by Neil Wilkof of US patent attorney Larry M. Goldstein's book True Patent Value (the details of which you can check out here). A little over a year later, the same author announces the launch of his new book, enticingly entitled Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes.  This book, which is so hot off the press that the ink is still drying, will be reviewed in due course on this weblog.  Together with True Patent Value, Litigation-Proof Patents is part of the author's Patent Quality trilogy, the third volume of which -- Patent Portfolios: Quality, Creation, and Cost -- is promised by the author to be coming soon.

According to the information available from the Amazon page from which it is being sold, it

" ... explains the principles of excellent patents, presents the ten most common errors in patents, and details a step-by-step method for avoiding these common errors. Specific patents are analyzed and shown to commit or avoid the most common patent mistakes. 

The book includes four chapters. 

• First, a step-by-step process for writing outstanding patents that capture all the innovative points of an invention and that avoid the most common patent mistakes. 

• Second, principles of litigation-proof patents, including characteristics of good patent claims, Key Claim Terms, patent value, seminal patents, and tips for writing patent applications. 

• Third, the ten most common mistakes that appear frequently in patents, and that destroy both patent quality and patent value. 

Litigation-proof?

• Fourth, five patents that illustrate the concept of “litigation-proof patents”. 

These patents include the Hedy Lamarr frequency hopping patent from World War II, the patents for the board game Monopoly®, and the “slide-to-unlock” mobile phone patent that Apple asserted against Samsung ..." 

This book is addressed to (i) anyone writing a patent who wants to achieve the highest-possible quality, (ii) patent evaluators who want to understand whether patents being reviewed suffer from value-destroying mistakes, and (iii) patent managers and heads of IP departments who are managing significant patent portfolios and want to understand the relative quality of their portfolios.

Interface between Competition Law, Patents and Technical Standards

The Interface between Competition Law, Patents and Technical Standards, by David Telyas, is the second title that Wolters Kluwer has published in quick succession that addresses issues of interest and concern to the IP business community -- the other being Competition Law and Standard Essential Patents. A Transatlantic Perspective by Urska Petrovcic, previously noted on IP Finance here. 

This blogger has not yet received a copy of this book, which the publisher describes as follows:

This systematic analysis lucidly details the role played by competition law in ensuring that holders of SEPs do not unduly exploit their advantage. The author describes how market power, often amounting to dominance, is obtained by proprietors of SEPs, and then proceeds to set out the framework under which the legality of standardization agreements must be assessed, finally highlighting the role of competition law in preventing patent-related abuse arising after a standard is adopted.

Among the often complex issues clearly explained are the following:

• technical standards as drivers of innovation and consumer welfare;
• conditions governing the standard-setting process;
• the concepts of ‘patent hold-up’ and ‘patent ambush’;
• refusal to license;
• establishing deception ex ante and abuse ex post; and
• availability of injunctive relief.

This title is volume 60 in the publisher's International Competition Law Series. You can check out its contents here; there's a sample chapter here and the book's web page is here.

Competition law and SEPs: a new book

Competition Law and Standard Essential Patents. A Transatlantic Perspective, a new title from Wolters Kluwer and written by Urska Petrovcic, has just come into this blogger's line of vision.  He hasn't yet seen it, but suspects that it may be of interest to readers of this weblog: if anyone has a copy and would like to write a short review for us, please get in touch.

According to the information provided by the publishers,

"This book, through an intensive focus on case law in the United States and the European Union, clarifies the scope of competition law in addressing SEP [ie standard essential patent] owners’ opportunistic conduct, and offers the first comprehensive analysis of the antitrust liability an SEP owner might face in each jurisdiction. The presentation thoroughly explains among others these following relevant topics and issues:

* processes through which standards are adopted and implemented by market participants;

* principal antitrust concerns that might arise in the standardization context;

* elements that competition authorities and courts should take into account in evaluating SEP owners’ market power; the role of “fair, reasonable and non-discriminatory” (FRAND) commitments;

* applicability of competition law to a SEP owner’s deceptive practices during the standardization process;

* applicability of competition law to strategic licensing by SEP owners;

* gaps competition law faces when addressing a SEP owner’s opportunistic practices".

This blogger is uncomfortable with the use of the term "opportunistic conduct", which not only gives the appearance of pre-judging the business practices of patent owners -- which can only be adjudged to be opportunistic within the context of the specific factual parameters of the technology within which FRAND licences may be offered -- but also has the appearance of cutting to the chase without taking due account of the evolution of the patent or patents at the hands of its owner before the point at which a granted patent is available to license, or indeed to infringe.  However, it would not be fair to judge this book on the strength of the marketing blurb, so it will be good to find out how the author treats the subject

This book is volume 58 in the publishers' International Competition Law Series. You can check its contents here and inspect a sample chapter here
Price: 120 euro/ US$ 162.
More information here

Paying for the future: a new title on the financing of technological innovation

Intellectual Property Rights And The Financing Of Technological Innovation: Public Policy and the Efficiency of Capital Markets,is a recent book by Carl Benedikt Frey (right: a Research Fellow, Oxford Martin Programme on the Impacts of Future Technology), brought out by Edward Elgar Publishing. This blogger didn't know very much about the Oxford Martin Programme but, from its website here, it is apparent that its multidisciplinary approach to the impact of future technology has the potential to be of great value not just to the IP/innovation community in assisting it in finding the right focus and setting the right priorities, but also for those who finance these innovations and who bear a risk that appears to rise as the impact of each new technology -- and therefore the costs associated with its development and uptake -- become ever higher.

About this title the publishers have this to say:

"Following the transition of industrial nations to knowledge economies, the financing of technological innovation has become a central issue in public policy, corporate finance and business management. This detailed book examines the role of intellectual property rights in facilitating the financing of technological innovation as well as the role of policy makers, investors and managers in this process. The book’s central finding is that public policy plays a key role in promoting the corporate disclosure of intellectual property-related information to enhance the efficiency of capital markets. This not only reduces the costs of capital for technology-driven firms but ultimately spurs innovation and economic growth".

Further details of this book are available from the publisher's website here.

Business Innovation and the Law: a new book

Business Innovation and the Law: Perspectives from Intellectual Property, Labour, Competition and Corporate Law, edited by Marilyn Pittard , Ann L. Monotti and John Duns (Faculty of Law, Monash University, Australia), is a curiously restless book. While the concept of business innovation is a fixed target, the authors of the various chapters approach it from a large number of different perspective: different academic disciplines, different jurisdictions -- even different periods in time.  If its function is to probe the complacent mind and force the reader to ask questions, it works well. However, this approach arguably makes it less able to answer the questions it asks, perhaps also because the laws are relatively easy to identify and explain but, in contrast, the reality of business innovation occurs in so many different industrial and commercial contexts.  There is also the danger of projecting the impact of the law, particularly case law, into business innovation. Much case law, especially at appellate level, is pathological, reflecting an individual conflict that requires judicial resolution, while similar conflicts are often resolved without recourse to the law because they are perceived as commercial issues rather than legal ones.

But what does the publisher say about this work?

"Business Innovation and the Law analyses the topical issue of protecting and promoting business research and development. It does so by examining business innovation through the lens of different legal disciplines – intellectual property, labour and employment laws, competition and corporate laws.

Evaluating the impact of each of these areas using discipline-specific and industry perspectives, the book also explores questions about whether a more harmonized approach is necessary to provide appropriate protection. Approaches of the common law and civil jurisdictions, particularly the European Union, inform and provide guidance to the analysis of emerging issues in this field. This book provides insights into various approaches taken by both common law and civil law jurisdictions regarding the increasingly blurred line of ownership rights in innovative industries. It traverses various disciplines of law as well as jurisdictions.

Using interdisciplinary perspectives to business innovation and inter-jurisdictional comparisons and analysis, this book will appeal to university administrators responsible for intellectual property policy, managers of technology transfer offices in universities, intellectual property lawyers, labour and employment lawyers and competition lawyers".

This seems on the whole an accurate and helpful description, and many of the chapters are very well equipped to deliver on the book's promise, being acknowledged experts in their fields. Sadly the book cannot remedy the obvious but inevitable fact that business innovation races ahead of both the law that governs it, the applications of economics that measure it and the principles of industrial relations that certainly used to govern it in the days of Big Employment -- and which in some sectors still do. Most of the law is designed for the days of one-inventor-one-invention-one-product, but look at the technology inside the hand-held device of your choice and you will see that this is now generally a myth.

Bibliographic data: published March 2013. xvi + 497 pages. Hardback ISBN 978 1 78100 161 5 ebook ISBN 978 1 78100 162 2. Hardback £100 (online from the publisher £90). Book's web page here.

Intangible Capital in print

A month ago, in "Reputations and Bottom Lines", I mentioned the publication of Mary Adams' and Michael Oleksak's new book Intangible Capital: Putting Knowledge to Work in the 21st-Century Organization. A copy of this little tome has now arrived in my letterbox and I've had a chance to leaf through it.

It's much more fun to read than the rather solemn title suggests, combining strands of history, economics, management, metaphor and common sense, personal experience and anecdote. It's also a monument to the metamorphosis of management and asset management philosophies from the age of bricks and mortar to the world of the internet. It won't provide the answers to all your questions (how many books of 150 pages do?) but it gets the reader into the mindset for asking the right questions. Since the right answers are (i) business-specific and (ii) change in time, while the right questions can be applied more generally and are less subject to the vicissitudes of commercial fashion, this is altogether a greater benefit to the reader.

Reputations and bottom lines: a new book

Intangible Capital: Putting Knowledge to Work in the 21st-Century Organization, by Mary Adams (right) and Michael Oleksak, has now been published and is available via Amazon at US$34.95. This is a project from I-Capital Advisors, which occupies a vocal corner of the IP finance world. According to the web-blurb:

"Today, 70% of corporate value is in intangibles. This is most clearly seen in mergers and acquisitions activity but is actually true for every company This value comes from knowledge that is developed by people and turbocharged by IT. But because our management systems and accounting are still based on industrial-era customs, this value remains invisible, misunderstood and unrecognized.

We have been successful in helping our clients use intangible capital tools to negotiate with merger partners, gain financing, improve performance and build the value of their companies. In early 2008, as we began writing about what we saw as the coming recession, we knew that it was time to take our IC message to a larger market. That fall, we sold our book concept to Praeger and during the dark days of the recession we worked on the manuscript, hoping to contribute to the recovery ...".

The book is described as "a practical handbook for every manager struggling to succeed and innovate in today's knowledge-based economy. It explains why intangibles are critical to performance, value and innovation. Why reputation is the new bottom line. And why intangible management skills and tools are critical to the future of your business".