IAM Issue 48

Telling it how it is

The annual IAM/Thomson Reuters benchmarking survey shows that while IP value creation is becoming an increasingly important part of strategic corporate thinking, there is still a way to go before it is a fully established and widespread fact of business life

Joff Wild

Columns

New copyright law stirs up controversy in New Zealand

A three strikes and you’re out law with
regard to illegal file sharing will come
into force in New Zealand in September.
It has attracted both strong support and
bitter opposition

Re-inventing the business of innovation

The greatest challenge – and
opportunity – facing the business of
innovation is to innovate around the
business models it employs

Cash: patents’ once and future king?

Equity investors are hot for the profit
potential of patents. IP holders are
hoping that cool heads will prevail

Features

Patents as weapons in economic warfare

National governments are beginning
to understand that patents can be
powerful economic weapons; not
just in encouraging local innovation,
but also in setting the global
technological agenda

PARC life

Damon Matteo has been guiding
PARC’s IP strategy since 2002. During that time he has acquired a reputation as one of the world’s most innovative and influential chief IP officers

Meet the elite

Each year, induction into the IP Hall of Fame is reserved for a select group of individuals. The achievements of the people
chosen this year certainly match
those of their predecessors

How a strong reputation creates freedom to operate

Although it is intangible, reputation allows businesses and executives operational freedoms that lead to very tangible results

“To innovate, we must make”

Innovation is not the be all and end all of a successful economy. As the United States is currently discovering, without significant
manufacturing capacity, jobs disappear and living standards
decline

IP market – present and future

The market for domain names is well established and highly lucrative; a market for patents has been harder to establish, but one is set to launch in the near future

New models in response to changes in the global IP market

IP investment models are changing.
This poses challenges, some of
which are unique to private equity
and others which are shared by all
in the IP acquisition and
monetisation marketplace

IP business models past, present and future

In the last 10 years, new business
models exploiting IP assets have
emerged; but unmet market needs remain

The evolving role of intellectual property in M&A transactions

The sea changes underway in the IP market – in particular, those involving patents – are increasingly having an impact on deal making in
significant M&A transactions

Growing IP with UGC

User-generated content has proved
to be among the most successful
ways of creating commercial
intellectual property ever developed

China’s emerging patent trading market

Although the Chinese patent
transactions market is currently
small and relatively unsophisticated,
over the coming years that is likely
to change

Industry insight

The strategy behind patent citations

For executive management to have a
clear understanding of its competitor’s
intentions in protecting an invention, it is important to look at the patent’s
citations, writes Bob Stembridge of the IP
Solutions business of Thomson Reuters

Management report

Pharma patents: tips and tricks to optimise and secure patent protection

The successful building and handling
of a strong pharmaceutical patent
portfolio requires a great deal of
engagement and proactivity.
Neglecting just one factor could be
sufficient to compromise an otherwise
high-quality patent; a patent is only as
strong as its weakest link

Regulatory activities and infringement of pharmaceutical patents in Sweden – what is the connection?

The EU IP Rights Enforcement
Directive makes interlocutory
injunctive relief available where
infringement has been attempted or
where preparations for infringement
have been made. So, can the act of
seeking and obtaining marketing
authorisation or price approval for a
generic product qualify as an
attempt to infringe or prepare for
infringement?

Patent licensing in the life sciences industry

It is not always easy to gain
ownership of valuable IP assets
through one’s own inventiveness.
As such, a key way of remaining
profitable and competitive is by
acquiring licences from the
legitimate owners of IP assets. In
recent years, many pharmaceutical
and biotechnology giants have
begun licensing Indian technology

Bilski’s impact on medical method patents

The Bilski court held that abstract
ideas cannot be patented, but
recent months have provided clear
indications that medical treatments
and methods are patentable.
However, patent applicants and
practitioners should not allow this to
distract them from the other
requirements for patenting; all
claims must still pass the novelty,
obviousness and disclosure
requirements

SPCs: uncertainties, opportunities and threats

Although supplementary protection
certificates (SPCs) have been
available since 1993, uncertainty
remains concerning their grant,
validity and scope. A number of
cases concerning the interpretation
of some fundamental aspects of the
SPC regulations are now before the
European Court of Justice

Approval of follow-on biologics in Mexico

Although the period for the Mexican
Ministry of Health to issue
regulations on the approval of
biocomparables has expired, the
draft regulations are still being
reviewed, with input from the
Mexican Association of
Pharmaceutical Research and the
National Association of Drug
Manufacturers

Patentability of stem cells

Stem cells can “transform into a
dazzling array of specialised cells
that make us what we are”. As
such, they have great potential in
many different areas of health and
medical research, but their
patentability has long been the
source of controversy

Insights

The valuable IP lessons to be learned from eight years of Skype

Microsoft has announced that it plans to pay US$8.5
billion to acquire internet
communications company
Skype. Had previous owners
been as zealous in assessing
Skype’s IP position as
Microsoft doubtless will be, it
is unlikely that the deal would
ever have been done

Seen and heard

A round-up of IP-related quotes, observations and opinions from the recent past...

They should hang their heads in shame …

In February 2011, the US SenatJudiciary Committee voted unanimously in favour of the America Invents Act. When the legislation went to the full Senate, it was passed by 95 voto five. Among the act’s most significant sections is one ending fee diversion from the selffunding US Patent and Trademark Office (USPTO).