IAM Issue 66

July/August 2014

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

Richard Lloyd and Jack Ellis

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

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

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

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