IAM Issue 66

Meet the IP market makers

There is a select group of
individuals whose connections,
decisions and actions drive
the ever-expanding global IP
marketplace. Over a three-month
period, IAM set out to identify them.
The names we came up with are
revealed on the following pages

Jack Ellis and Richard Lloyd

Management report

Key issues for senior life sciences executives

Deciding whether to proceed with
litigation or to forgo or settle an
infringement claim requires that
a broad number of factors be
carefully weighed

Chinese patent law and protection for genetic resources

New clauses on the protection of
genetic resources were added to
the amended Chinese Patent Law
four years ago. So far, it appears
that the new filing requirements – in
particular, the genetic source form –
are not placing an undue burden on
applicants

Federal court stakes new ground for reach-through claims

Reach-through claims – which
allow broad protection for
an invention – have been a
contentious issue for years. The
German Federal Court’s recent
decision on dipeptidyl-peptidase
inhibitors suggests that the matter
is far from settled

APIs, imports and the Bolar exemption: concerns and practical measures

The Mexican legal framework
requires some improvements
to grant legal certainty to both
innovators and applicants for
generic and biologic follow-ons

South Korea’s Patent - Approval Linkage System

Although South Korea’s new Patent-
Approval Linkage System will not be
fully implemented until 2015, there
is already keen interest from global
pharmaceutical companies. Yet
while the system should strengthen
patent rights, it may also increase
the number of disputes

Australia sets its own course on the patentability of biotechnology

Judicial, legislative and political
scrutiny of the patentability of
biotech and pharmaceutical
technologies is presenting
significant global challenges to
these sectors

Patent issues for the Indian life sciences industry

As the Indian patent regime is
continually evolving, applicants
seeking to protect their inventions
in India must pay careful attention
to the legislation and Patent Office
guidelines

Features

Big data solutions to determining IP risk and value

The significant increase in the
volume and availability of data
about intellectual property,
combined with major advances
in data science, make this the
perfect time to apply big data
solutions in order to produce
powerful analytics and IP
visualisations

Design in three dimensions: choices and challenges for legal protection

Product design is a key aspect of
competitiveness and differentiation.
Businesses are increasingly seeking
different ways to protect their
designs using IP rights. There are
a number of options to consider,
each with different implications for
value creation

What’s inside IV’s patent portfolio?

At the end of last year, Intellectual
Ventures launched a public
database providing details of
33,000 patent assets that it
currently owns and manages,
allowing an in-depth analysis of its
portfolio for the first time

The role of education in technology commercialisation

Experience, expertise and the
latest know-how are the keys
to success in turning R&D
investments into commercially
viable products and services

IP valuation in the digital economy

With more consumer activity taking
place online than ever before,
it is imperative to find ways of
measuring the economic value
added by technologies that enable
e-commerce, especially when it
comes to calculating awards for
patent damages

Effective patent first - filing approaches for international teams of inventors

Companies with R&D operations in
both China and the United States
can choose the best jurisdiction
in which to file their initial patent
application. This can have a major
impact not only on priority and
grant dates, but even on the quality
of the initial patent draft

Recognising the IP masters

While hundreds of nominations are
received, only a select few individuals
are chosen for induction into the
IP Hall of Fame each year. The
achievements of this year’s inductees
confirm their status as thought
leaders in their respective fields

Portfolio princes – the entities that own over half of all active US patents

Last issue, we revealed the
companies that own the 100 largest
portfolios of active US patents. Here,
we expand the list to name each of
the 344 entities holding portfolios of
over 1,000 assets, representing 55%
of all US patents currently in force

Sign of the times: trends in technology IP licensing

While large portfolios or
aggregations of valuable patents
continue to earn record-breaking
royalties, some rights holders are
looking at alternative means – such
as outright sale or privateering deals
to patent aggregators – to extract
value from small patent portfolios

Columns

Employee-inventor monetary award laws put Japan at a competitive disadvantage

Article 35 of Japan’s Patent Law –
giving employees patent rights in
their inventions – has come under fire
for its failure to define ‘reasonable
remuneration’ and lack of clear guidance,
which risks impeding economic growth

Using a patent roadmap to lay the ground for an IP strategy

While an IP strategy is the gold
standard, it is not always possible due
to constraints on time and resources.
However, a patent roadmap and partial
deployment by IP teams can still make a
difference to an organisation’s bottom line

Let the shake-out begin

Over the next three to five years, half
or more of the 30 or so public patent
licensing companies are likely to merge,
go private or otherwise disappear.
That’s not necessarily bad news for IP
investors or holders

Supreme Court lowers the bar for attorneys’ fees in patent litigations

The US Supreme Court has rejected
the existing standard set by the Court
of Appeals for the Federal Circuit for
attorneys’ fees under 35 USC §285
and mandated a more deferential
standard of review for district court
fee determinations. As a result, courts
will likely see an increase in claims for
attorneys’ fees under the US Patent Act

Insights

Seen and heard

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

It’s time for WIPO boss to stop shooting the messenger and deal with the message

Accusations made against
him by one of his deputies
have cast a shadow over
WIPO director general Francis
Gurry’s recent unopposed
re-election; while the
organisation’s response to
coverage of what is alleged
raises worrying questions
about its belief in the freedom
of the press to report the news

Data centre

IP-related statistics from the recent past

A selection of key IP facts and figures, as reported by IAM and other sources

Industry insight

The G20 innovation race

Emerging markets are closing in on
their more developed counterparts, with
China’s patent and research growth now
dwarfing that of the United States, writes
Bob Stembridge of Thomson Reuters