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IAM Issue 97

August/September 2019

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The Boston Manifesto

While significant progress has been made in increasing and amplifying women in IP-related careers, there is still work to be done. Just before IPBC Global 2019, a group of leaders got together to discuss how best to do this. The result was the Boston Manifesto

Features

Diversity, buzz and brio in Boston for IPBC Global 2019

IPBC Global took place in Boston from 16 to 18 June. It was another sell-out event in the series and, by common consent, the best one to date
Joff Wild

A new approach to patent prosecution and portfolio development

To make high-cost, high-value patents more palatable to your chief financial officer, shift to a fixed monthly patent services subscription model
Ahsan Shaikh

Back to the future in patent licensing

In the wake of the patent market crisis, licensors can achieve success not with new business models but by re-embracing an old one from the 1990s – the IBM model of licensing
David Pridham and Marshall Phelps

Trespassing prohibited

The availability of injunctive relief varies widely around the world. In our first analysis of the global injunction landscape we lift the lid on which jurisdictions provide the best opportunity for a sales ban
Jacob Schindler, Joff Wild and Richard Lloyd

Born from business need

How business, innovation and intellectual property are evolving together at TD Bank
Jens Bördin

How many patents are enough?

It is generally accepted that an organisation can have too many or too few patents. While finding and maintaining the equilibrium will always be challenging, strategic patent intelligence offers the analysis required for evidence-based decisions which are capable of withstanding robust scrutiny
Nigel Swycher and Steve Harris

Why start-ups should get serious about patent protection

Only a small percentage of the world’s tech start-ups develop a patent portfolio of any depth, but failure to align IP strategy with long-term business objectives could cost companies millions down the line in litigation and licensing fees
Bridget Diakun

Has the promise of patent pools dried up?

Examining the past and present of patent pools suggests that there is a way forward for one of the licensing market’s oldest ideas
Jaime Siegel, Melissa Chen, Rayan Al Rubaish, Janista Lee, Saikrishna Upadhyayula, Valentina Polunina, Cecilia Choy, Kristina Martinez and Sean Gaffney

A profession transformed

How Australian IP firms have re-vamped their business models in the face of economic conditions and regulatory reforms, and what this means for practitioners and clients
Mark Summerfield

Benchmarking survey 2019 – Iancu and Campinos get off to flying starts, says IP community

IAM’s 2019 benchmarking survey shows growing optimism about the US patent system. Across the Atlantic, the EPO continues to shine under new leadership, but uncertainties remain regarding the prospects for the UPC and the effects of Brexit
Bridget Diakun and Adam Houldsworth

Huawei’s crisis and the future of standards

US sanctions on Huawei have created confusion and some dismay among standards-setting stakeholders, but Chinese companies gain too much from their participation in global standards development to walk away
Jacob Schindler

Licensing intellectual property in a changing trade environment

The US government is bringing export controls and Committee on Foreign Investment in the United States reviews to bear in its IP confrontation with China. IP executives must become familiar with these and other legal instruments, and how they affect R&D and licensing strategies
Mark Cohen

Columns

Guidance as a cultural tool at the USPTO

New guidelines on patentable subject matter have been welcomed by many, but arguably their biggest impact comes from the message that they send to patent examiners
Bob Stoll

SEP licensing lessons from the recent past

The landscape around SEPs is producing inefficiencies for licensees, licensors and other interested parties. A new approach is needed
Daniel P McCurdy

Of trade secrets, trade wars and trade-offs

The United States and China are locked in an escalating battle over trade secrets and other IP rights for which there will be no clear winner
Bruce Berman

Insights

The titanic patent auction that turned into the summer’s biggest flop

Intel set the patent market alight with news that it was putting a huge chunk of its portfolio up for sale, but the ending was all too predictable

IP market news highlights

Some of the major news stories carried on the IAM platform in June and July

Roundtable

Taken for granted

Patent prosecution remains a key part of IP practices at law firms all over the globe but as rights holders place more emphasis on the quality of their grants, specialists need to ensure that they stay up to date with the latest developments. In a co-published editorial, IAM brings together experts from top firms around the world to offer invaluable insight into how prosecution is changing.
Christian W Appelt, Olga Dolgikh, Marc Lorelli, Markus Engelhard and Michael MacCallum

Data Centre

NASA’s portfolio is the definition of ‘lean and mean’

The iconic agency is highly selective with the innovations it patents, and constantly reviews holdings to eliminate deadweight. Like any business, its goals are to create innovative technologies which have market relevance. However, it must do this within the context of the oversight placed on federal agencies. NASA must prove to the public that its portfolio has commercial potential.
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