IAM Issue 48

July/August 2011

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

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

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

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

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).