European patent markets, trends and consensuses: what comes next?

Following the IP Finance blog's extensive coverage of the IPBCGlobal 2015 conference, the weblog received the following message from Corinne Le Buhan:

"A tweet from @PatentTwit asked "where's the patent market analysis of Europe and Asia? Opening session largely covers US market trends?" This question was discussed briefly towards the end of the panel session, it being suggested that things might change in Europe once the unitary patent came into force and once China had got its act a bit more together. 

I just thought you may also be interested on the recently published report from the EU expert group on patent aggregation.

IMHO it gives an interesting snapshot of the current and anticipated trends in terms of patent markets from a diversity of primarily EU-based stakeholders perspective. I was invited to one of the hearings to bring the innovative SME point of view and we had really good debates that day. The expert group must have had a hard time to deliver a consensus report and recommendations out of the hearings, but I think they did a good job overall, and I’m now curious to see what will come next (see their recommendations in the report).

Readers' comments and prophecies are welcomed. We don't get nearly enough discussion on this blog, so please take the trouble to participate and tell us what you think.

More figures on IP and competitiveness from the EU Observatory -- but what do they mean?

A recent media release from the Office for Harmonisation in the Internal Market (OHIM) has been busily trumpeting the correlation between economic performance and ownership of IP rights. It reads, in relevant part, as follows:

"New study finds that companies owning Intellectual Property rights outshine their competitors in economic performance
 
Companies owning intellectual property rights (IPRs) have, in general, 29% higher revenue per employee, about six times as many employees and pay wages that are up to 20% higher than firms which do not own IPRs. 

These are the main findings of a study carried out by  ... OHIM acting through the EU Observatory on Infringements of Intellectual Property Rights.

The study, which is based on official public financial data from more than 2.3 million European firms, covers companies which own patents, trade marks and designs at both national and EU level. 

One of the key findings in the study is that a modest share of small and medium sized enterprises (SMEs) in Europe own patents, trade marks or designs. It also finds that those SMEs which own such rights have almost 32% higher revenue per employee – a significantly higher economic performance, showing significant relative benefits associated with the ownership of IPRs. SMEs are companies which employ fewer than 250 people and which have an annual turnover not exceeding 50 million euro. 
... 

This report, which looks at the contribution of IPRs at a company level, is a follow-up to a first EU-wide analysis of the contribution of IPR intensive industries to economic performance and employment in the European Union. 

It found that about 40% of total economic activity in the EU (some €4.7 trillion annually) is generated by IPR-intensive industries, and approximately 35% of all employment in the EU (77 million jobs) stems directly or indirectly from industries that have a higher-than-average use of IP rights".

The report, Intellectual property rights and firm performance in Europe: an economic analysis (here) was published earlier this month.  The previous report, Intellectual property rights intensive industries: contribution to economic performance and employment in the European Union (here), was published in September 2013. 

Headlines and figures are great fun, but one still has to look beyond them and ask which of the following propositions they support:

• Businesses outperform their competitors because they have intellectual property
• Businesses have intellectual property because they have outperformed their competitors
• Businesses that outperform their competitors because they have intellectual property continue to outperform their competitors by acquiring further intellectual property

... or anything else, for that matter.

FRAND in India: how much will your royalties cost you?

"FRAND in India: The Delhi High Court's emerging jurisprudence on royalties for standard-essential patents" by J. Gregory Sidak (Criterion Economics), has just been published online by the Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv096. The abstract of this article reads as follows:

Indian jurisprudence on fair, reasonable, and non-discriminatory (FRAND) licensing practices for standard-essential patents (SEPs) is at a relatively nascent stage. Unlike US and EU courts, which have dealt with cases concerning calculating a FRAND royalty for a considerable time, Indian courts and the Indian antitrust authority—the Competition Commission of India (CCI)—have only just begun to decide such cases.

In its initial orders in the first two antitrust complaints concerning SEPs, the CCI seemed to favour using the smallest saleable patent-practising component (SSPPC) as the royalty base to determine a FRAND royalty. However, in the short time since the CCI's orders, the Delhi High Court has rendered contrary decisions in two SEP infringement suits. The Delhi High Court's decisions use the value of the downstream product as a royalty base and rely on comparable licences to determine a FRAND royalty. The Delhi High Court's decisions are not only consistent with sound economic principles, but also indicate that the court is responding to the judicial and industry trends in the rest of the world.

Because the CCI is still investigating the antitrust complaints with respect to the same SEPs, the CCI could benefit from considering the legal and economic arguments in the Delhi High Court's decisions. It would be counterproductive for the emerging FRAND jurisprudence in India if the judiciary and the competition authority take opposing views toward the rights of SEP holders and SEP implementers.

This is an Open Access article, distributed under the terms of the Creative Commons Attribution License (http://creativecommons.org/licenses/by/4.0/), which means that you can read the article in full, without payment, here.  The licence permits unrestricted reuse, distribution, and reproduction in any medium, provided the original work is properly cited.

IPBC Global 2015: Conference report IX -- Financial services patents

Thanks to Maulin Shah (EnvisionIP), IP Finance can bring you this report on Monday's "Banking on IP" breakout session at IPBC Global 2015.  Much appreciated, Maulin! Incidentally, this post is based on Maulin's original blogpost on PatentVue, here.

The topic of financial services patents was a focus of discussion during a panel moderated by Bruce Berman (Brody Berman Associates) during this year’s IP Business Congress in San Francisco. The panellists included Michael Chernoff (MDB Capital Group), Andrew Ramer (Cantor Fitzgerald) and Sean Reilly (The Clearing House Payments Company).  Each panellist had a significant perspective on the future of patents held by banking and financial services firms, where the majority of these patents are primarily business methods and software-related.

The panellists seemed to agree that, overall, values for patents in their industry have seen a reduction post-Alice Corp.  Michael Chernoff stated that, over the years, he has stressed the difficulty in valuing methods patents, and the current environment is no exception. However, as history has shown, markets tend to rise and fall with the tides, and the panellists acknowledged that the near future could possibly be a low point for methods patents valuations.

Research from Michael Chernoff's firm showed that financial services companies, as well as major technology companies, continue to seek, and are receiving, methods patents, albeit not at the same rate as in previous years. For example, MDB Capital’s analysis of patent applications from 2011 to 2015 shows that eBay owns 585 patent application families related to business methods and software patents relevant to financial transactions and supporting technologies, while Bank of America owns 633.

Andrew Ramer envisioned that patenting activity at his firm, and other financial firms, would continue with regard to financial service-related technology. While he believed methods-related claims will still be sought, patent application filings related to consumer and enterprise facing devices and hardware may increase in the coming months and years.

Sean Reilly believed that the focus at the patent office would be on quality and clarity in terms of business methods patents; he did not feel that stricter legislation is necessarily the correct way to address issues surrounding the use of software patents.

The overall tone of this year’s conference seemed to focus on a pendulum shift from the high values attributed to patents during the Nortel and Motorola patent acquisitions (here and here) just a few years ago.  Many participants and speakers felt that the current environment is an extreme situation caused by an uncertainty in case law, and by the legislative issues still pending in Congress.  Despite the negative headwinds, some feel this may present a unique buying opportunity –- where an increased risk may prove to yield higher returns.

It's hoped that, once some further clarity comes out of the courts and Congress, the pendulum may swing back towards a median, which may signal an increase in overall patent values, especially for software-related patents.

IPBC Global 2015: Conference report VIII

The final round of this year's IPBC Global 2015 conference was given over to breakout sessions. This blogger could not resist the lure of attending the session dedicated to a true IP finance topic: "Value conundrums". According to the event's web-blurb, "Patent value drives the IP marketplace. Working out what it is and how it can be quantified are both complicated tasks; but that is what this session sets out to do".

Damon Matteo (CEO, Fulcrum Strategy) moderated a talented panel consisting of Santosh Mohanty (Vice president, head of IP and product engineering, Tata Consultancy Services Limited), Takuya Saito (Vice president, Shobayashi International Patent & Trademark Office), Bruce Schelkopf (Group senior vice president and chief IP officer, ABB Inc) and Nigel Swycher (CEO, Aistemos). Damon promised to keep the presentations short, to allow plenty of time for questions -- with the heady attractions of cocktails to follow.

First to speak was Santosh, who thanked us for attending this session, hoping that this investment of our time would yield dividends. How does Tata value IP? Santosh identified three topics: 

* the context of the valuation: this includes the technological, social and environmental impact of the IP to be valued, and how end products may be created through its use. Further, how does the brand create valuable goodwill in the tangible world of real products? 

* the context of the marketplace: placing the valuation in a context of time and space, with synergies with other items of the IP portfolio and how they might augment market penetration. Also, how the IP affects the relationship of Tata with its business partners; 

* risk and the sustainable nature of the IP's value. This includes the risk of litigation and the risk of poor market performance.

What of the future? Tata's philosophy is the continuous promotion of creation within its organisation (300,000 employees spread through 50 countries), looking for opportunities to make profit by taking new ideas to the marketplace.  It is impossible to do everything in one go, everywhere, so priorities must be established and areas identified in which Tata can be a pioneer. 

Bruce spoke next, explaining his exposure as an employee to "productisation": the job of finding new products from IP that had already been paid for.  This was "a yeoman's task", but it turned out to be a worthwhile idea and it sensitised him to the potential for making money from IP. If money can be extracted from IP, it must be valuable -- but how to value it? This takes us out of the technical field and into the financial field. We have to learn to speak financial language, since that's the language in which IP is valued.  

Expectations are often set by external events, added Bruce, but it's unreasonable to set one's own expectations in relation to transactions and valuations that relate to others' IP, however exciting they are. Patents are valuable if they're good -- and the definition of a good patent is one that you own. At base, it's not the number of patents that counts but the income they yield, the return on investment.  If it's not being used and generates no income, it's not very valuable. Don't use other people's benchmarks either: set your own metric and stick to it. Think about how much you have to generate in terms of sales in order to fund litigation over your patents; that will put your IP's value in context.  Ultimately, it's a successful business strategy that will create IP growth.

Nigel then took the podium, casting doubt on the mantra that patent value was based on Georgia-Pacific and that you have to sue in order to find out how much your patent is worth.  The problem at present is that litigation is not the best way to perform patent valuations, but the data needed for a proper valuation is not easily available. In any event, 90% of patent suits settle before trial and databases of patent licences only scratch the surface in terms of the proportion of all transactions which they are able to record.  More information and more transparency is needed if decisions based on real, factual data are to be made. 

Yesterday's future is today", said Nigel, "which is great".  In future versions of this conference we can expect to see the disappearance of the word "troll" -- a pejorative term which reflects a lack of data upon which to establish sensible pricing of transactions. Transparency will increase and items such as the identity of patent owners will enhance the ability to transact patent deals properly.  This is why the launch of ORoPO as a means of pinpointing the actual ownership of patents is so important. It may be just one small step towards transparency, but it's a step in the right direction -- and anything that industry can do for itself is preferable to outside regulation.

Takuya then spoke about know-how based intellectual property, which is contained within the human brain rather than in the literature.  It has been possible to introduce an electronic notary-based system, with an electronic signature, that allows for the easy dealing with recorded know-how, the preservation of evidence and the identification of tradable content. An example of how this has been successfully done was given in regard to a Japanese sake brewery whose plant was destroyed in 2011 was able to engage in a technology transfer operation which enabled its sake could be brewed in the United States in accordance with its protected know-how. The result of this is that know-how has become another asset class.

IPBC Global 2015: Conference report VII

The Tuesday afternoon programme for this year's Intellectual Property Business Conference (IPBC Global 2015) was dedicated to breakout sessions. This blogger attended one on the theme of "New corporate realities". As the organisers explained: "As IP moves up the corporate agenda, it is vital that in-house groups develop strategies to meet growing expectations. This session will look at how to meet the challenge".

Cynthia Murphy (Senior vice president, Thomson Reuters IP Solutions) moderated this session, which featured in-housers Joe Chernesky (Senior vice president, intellectual property and innovation, Kudelski SA), Michael LoCascio (Director of global IP strategy, BASF Catalysts), Stefan Tamme (Vice president, IP strategy, Rambus) and Ben Wang (Head of patents, Unilever China). 

Stefan opened by speaking on Rambus's IP assets and their role in enhancing the end-user experience of electronic systems.  His team manages a portfolio of 2,100 patent assets, developing it strategically through the product life cycles of both Rambus and its clients. How has IP fared in the past 10 years? It has always been an IP-driven company, starting by licensing its original patents. Now the company indulges in all sorts of monetisation activities. The company has spent around 40% of its revenues on R&D.

Joe then spoke on Kudelski, a 60-year old Swiss company that spends heavily on R&D in the portable recording device sector. Digital TV and video is its main core business, where the company is a lead player in conditional access; it is also a major player in TV box-tops. Then there is a cyber-security business, particularly for banks.  Finally there is a ski data technology operation. Kudelski also looks for new technologies to license out. Joe is responsible for protecting the company against the threat of competitors' patents, in markets in which competing products can be cheaper by a factor of ten. "IP organisations have to be very forward-thinking these days", he observed.

Michael was next, giving an account of his role at BASF Catalysts. BASF is a vast enterprise, split within 14 divisions of which Catalysts is one. The division has around 1,200 patents and licenses in in order to supplement its own technologies, but doesn't really license out much, in a highly competitive market in which BASF now seeks to conduct a proactive IP strategy. 

Ben, on behalf of Unilever's China operations, spoke about his recruitment and also about his experiences as a lawyer in an environment in which his colleagues had managed quite well without a lawyer at all prior to his arrival. How long did it take Ben to get the company's scientists and marketing colleagues to align themselves to Ben's IP notions? He explained that, because there was so little knowledge of IP, his colleagues were really interested in finding out about it and grasped it very fast.

Cynthia then encouraged the panellists to speak about their involvement in developing corporate strategy, their engagement with board members and major share-holders, how to earn trust and the need to manage expectations and deliver on them. The key word, as the session's title suggests, is "reality".

The panellists were then asked what were their top three must-haves for a top-rate corporate IP function. Essentially this boiled down to quality business data, filing expertise, scientific knowledge, excellent products, the ability to deliver rational business decisions, good customer relations ...

What are the best ways of educating business colleagues as to the importance of intellectual property? Regularly-meeting IP committees were recommended, each one including business and R&D people as well as the IP folk: this starts a gradual process of spreading knowledge and interest concerning intellectual property throughout an organisation. Dealing with people face-to-face rather than by email can also be effective -- even with customers, the authorities etc.  Rotating business staff in and out of IP roles is another option.


Benchmarking of in-house IP functions was also discussed: high level benchmarking was agreed to be of little use, and there are problems of comparability in that performance cannot be measured in terms of quantity of output, but rather by its quality.

What were the panellists' biggest challenges and opportunities? What gets them excited and keeps them awake?  Answers included coping with constant change as the pendulum swings between stronger and weaker protection, (on the non-IP side) on how the company can evolve in its product markets, how to be more creative in deal structures and dispute settlement, watching projects unfold, coping with phone calls from distant time zones, 

IPBC Global 2015: Conference report VI

"IP market 2.0" was the title of the second plenary session in this morning's IPBC Global 2015 conference. The theme of this session is that both the courts and legislators have had a significant impact on the development of the IP market in recent years. With scrutiny of IP business models and deal making more intense than ever, there is no doubt that further change is on the way. So how will things look in 2020 and who will still be standing?

This session was moderated by David Brown (Managing director, IP Solutions, Thomson Reuters), with panellists Kasim Alfalahi, Chief IP officer, Ericsson Erich Andersen (Vice president and deputy general counsel, IP group, Microsoft), Peter D Holden (President, ipCreate), Grant Philpott (Principal director, information and communications technology, European Patent Office), Laura G Quatela (Executive vice president of intellectual property, office of the CEO, Alcatel-Lucent) and Boris Teksler (CEO, Unwired Planet).

US 2014 patent filing figures

The panellists were first asked about their outlook for 2020. Starting with patent filing figures, the recent US 2014 dip might be no more than a blip, since foreign and Patent Cooperation Treaty US filings seem to be coming along well. The market may also be relying more on other options, such as secrecy, so the outlook is far from bleak so patent offices should be busily recruiting and training ahead of the likely increased flow. In China, while quality has been an issue, things are improving and there are large numbers of filings by SMEs. 

In business terms, open licensing and increasing flexibility in licensing policy will be likely to increase competitiveness and the extraction of total value from patents, both for standard-essential patents (SEPs) and others. It's not always known at the outset whether a patent will belong to a standard or not, and strategies for commercial exploitations depend on decisions made before standards are set.  The looseness of definitions and misunderstandings of what FRAND licensing means has been the cause of uncertainty, but this too is likely to improve -- by 2020 if not before. 

On the pricing front, current patent pricing is the subject of substantial volatility. This is not the sort of thing that granting offices can directly affect, though they can provide pricing databases -- which may assist. The convergence of the computer industry and the telecoms sector has caused problems too, as different pricing and licensing models come into conflict with one another and regulators, particularly in Asia, are taking a closer interest in SEPs. 

As the world rotates ever faster (metaphorically speaking), what implications will this have for first-mover advantages?  Speed is now key, not just because of first-to-file but because of capricious and insistent consumer demand, with which innovator companies must keep up.  In Asia, there is still some hostility to patents but, for example, in China, there are now vast numbers of domestic applications and this means that local attitudes have been changing fundamentally -- and in a positive way.

In terms of IP management, education of corporate board members -- which has been going on for years -- remains important. First it was necessary to explain what IP was; now, the education has stepped up a gear, dealing with IP's strategic significance and what to do with it.  IP monetisation can be hampered by wider  "business considerations" that miss the point. While things differ between companies and between sectors, there are always tensions between long-term and short-term policies, and this can be quite divisive at board level.  IP considerations tend to favour the development of long-term strategies. People are at last getting much more sophisticated in their appreciation of deals that are structured around IP.

Which IP monetisation business models (of which there are now many) are likely to thrive into the 2020s?  Things do change. Twenty years ago, everyone was talking about technology transfer and spin-offs from military research, subjects that are scarcely mentioned now.  Instead we see businesses based on both active and defensive patent aggregation, patent rent collection, outsourcing of invention and other services, attempts to create new markets for commoditised IP rights, among other things.  Some business activities are not actually new models, but merely bad behaviour as applied to old ones. 

IPBC Global 2015: Conference report V

The end .. or a new beginning?

Day Two of the Intellectual Property Business Conference IPBC Global 2015 opened with a plenary session titled "End of an Era". The theme was that, according to some, the pro-patent era that began in the United States in 1982 with the creation of the Federal Circuit has come to an end. Are the pessimists correct or has the pendulum still further to swing? Most important of all, in the modern knowledge economy does the US patent system still offer enough incentives to invest in innovation?

Bowman Heiden (Deputy director, Center for Intellectual Property, Gothenberg) moderated the session. He opened the session by asking for a show of hands as to who thought the (US) patent system had become too weak, was too strong or was about right. A large majority felt the system had been weakened, though a large number of people declined to go public on their opinion. 

Bowman introduced the panellists: Kurt Kjelland (Senior legal counsel, Qualcomm Incorporated), Mark Lemley (William H Neukom professor of law, Stanford Law School), Allen Lo (Deputy general counsel for patents and patent litigation, Google Inc), Randall Rader (Former chief judge, Court of Appeals for the Federal Circuit), BJ Watrous (Vice president and chief IP counsel, Apple) and John Whealan (Dean for IP law studies, George Washington University). 

The discussion opened on standard essential patents (SEPs). Their owners, waiting in the wings till their patents were adopted, could cash in once everyone was using them, and it was possible both to collect royalties for their use and to sue for infringement. However, a good set of rules is needed, both for patents and for contracts, if antitrust proceedings are to be avoided.  If 20% of the patents in a standard represent 80% of that standard's value, a royalty scheme that treats patents equally is obviously unfair. We also feel different as between standards that are truly essential and those that are standard because everyone has opted for them, though other patents could achieve the same result. Ultimately, what is a portfolio's value worth? Every standard portfolio will have patents that are invalid, and those that are not infringed -- but what we need is a "business number" for the licence rate, not the aggregated value of each individual patent.

What was needed was a figure for a bundle of SEPs that is realistic for business, avoiding the commercial threat of royalty stacking -- but how does one achieve it? Arbitration? Litigation? Litigation happens anyway, not so much as a way of establishing the quantum as establishing a duty to pay a licence royalty in the first place: this applies in respect of individual patents rather than portfolios as a whole, though. Once you have a smartphone loaded with apps, you probably have a couple of hundred thousand patents pointed at you.  Even if you knock out 90% of them, that still leaves around 25,000 patents to pay for.

Should injunctions be available in SEP settings? The panel generally felt that they should, though there may be situations in which their availability should be narrow. "Without injunctions there is no way to bring the parties to meaningful negotiations". 

Validity was also discussed.  The same institution that grants a federal patent right -- the USPTO -- is the agency that keeps invalidating them in inter partes proceedings.  This, one panellist suggested, is a disaster.  Maybe it's not so bad, added another panellist. The USPTO provides an effective screening for more than half a million patents a year, most of which are never used, lapse and cause no-one any trouble. The proportion of patents invalidated is high, but the absolute number is small. The USPTO provides a robust back-room mechanism for correcting and adjusting the results of the initial screening.  But is the USPTO applying the right rules and does it have the right tools for the job?  As it is, the burden is on the USPTO to show that a granted patent is not valid, and this can be a tough task. With better initial examination there would be fewer patents challenged. 

The US system would be better if applicants threw fewer bad applications at the USPTO, which consume time and resources [and which are sometimes granted: Jeremy]. What about a non-mandatory 'opt-in' deeper examination by three examiners? An application that survives that should be more strongly presumptively valid and should fare better in court. 

Next discussed was the quantum and strength of patents. Whether patents should be strong or weak is not the right question. Rather, do we have the right balance between having lots of patents and having good ones. The fact that there is so much litigation is a sign that we've got it wrong, one panellist opined because it indicates a volume of uncertainty, in terms of infringement at any rate. The intellectual cogency of the Mayo and Alice decisions was then discussed, in the context of the general weeding out of non-patentable inventions under s.101 of the US patent code. 

The question of timing is also important, and it varies as between technological sectors and time spent in developing a patentable concept: "By the time you file a software patent, you are always talking about an old technology".  Apart from the time-frame, there are other analytical approaches. For example, patents can be viewed from three self-explanatory perspectives, the three "a"s: "assets, actors and actions".  Under the heading "actions", the impact of the courts was considered: were they beneficial or disruptive? The consensus of the panel was that, on the whole, they improved the system. As to legislative involvement, with the increased importance of patents comes more scrutiny -- and that's fine.

The session then closed with a wide-ranging Q and A with the audience. 

IPBC Global 2015: Conference report IV

By way of a change, and because it has a more mainline content, the report on the IPBC Global 2015 conference's "Validity is king" afternoon breakout session appears on the IPKat weblog here.

Reports on tomorrow's sessions will be split between the two blogs, depending on content.  Stay tuned!