September 2016

les Nouvelles – September 2016 – Full Issue

Advancing the Business of Intellectual Property Globally

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On The Use Of Preferential Rights In Intellectual Property Agreements
By Antoine Bellemare

This article reviews the four main types of preferential rights—options, rights of first refusal, rights of first offer and rights of first negotiation—and discusses their use, benefits and limitations in ntellectual property agreements.

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A Compilation of Practitioners’ Views—Life Sciences Dispute Resolution
By Judith Schallnau

This Compilation of Practitioners’ Views on Life Sciences Dispute Resolution was prepared in light of increasing numbers of life sciences mediations and arbitrations filed with the WIPO Arbitration and Mediation Center (WIPO Center), and in conjunction with a WIPO Center Conference on Dispute Resolution in Life Sciences held on May 22, 2015, in Basel, Switzerland. It serves to assess the current use of Alternative Dispute Resolution (ADR) processes and court litigation in life sciences disputes, as well as to shed light on party dispute resolution strategies and best practices in this area.

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Opt-Out and Transitional Period In The Unified Patent Court (UPC)
By Axel Casalonga

The UPC Agreement defines the principle of exclusive competence of the Unified Patent Court. This exclusive competence applies to both types of European patents i.e. Unitary patents (European patents with unitary effect in all Contracting Member States) and European patents having a national effect in specific designated EPC Member States including UPC Contracting Member States.

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What Happened and Is Happening To R&D And Technology Transfer
By Stephen A. Degnan and Christopher A. Wickander

Battelle estimates worldwide R&D expenditures in 2014 to be $1.6 trillion, which represents 1.8 percent of global GDP.1 Global R&D expenditures over the past decade have grown at a compounded annual growth rate (CAGR) of 6.7 percent and grew faster than global GDP, clearly an indication of widespread global efforts to make economies more knowledge- based and technology intensive.

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Exploring The New Dimension Of China’s Invention Economy
By Qinghong Xu Aand Patrick Terroir

While acknowledgement of intellectual property rights in China can be traced back as far as the Tang Dynasty (618-907 AD), the first patent- specific law in China was enacted in 1889, towards the end of the Qing Dynasty. Modern Chinese patent law, however, began with the issuance of the Provisional Regulations on the Protection of Invention Rights and Patent Rights in 1950, which provided rewards to inventors but left ownership of intellectual property in the hands of the State. The onset of the Cultural Revolution in the mid-1960s, however, brought an end to even this modest recognition of intellectual property.

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How to Find, Assess And Value Open Innovation Opportunities By Leveraging Ip Databases?
By Paul Germeraad and Wim Vanhaverbeke

An increasing number of companies are practicing open innovation by relying on external sources of technology.1 However, inbound open innovation is not always leading to the expected improvements in innovation performance. A key factor for success is quickly and reliably determining which technology or solution a company should source externally. In this study, we explore reliable ways of finding relevant technology using intellectual property databases.

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Exhaustion V. Non-Exhaustion—Deciphering The Federal Circuit’s Lexmark Decision And Its Implication On Technology Transactions
By Jiang Bian

On February 12, 2016, the United States Court of Appeals for the Federal Circuit issued its en banc (where a case is heard before all the judges of a court) decision Lexmark International, Inc. v. Impression Products, Inc., which confirmed that, despite recent decisions of the United States Supreme Court supporting exhaustion of intellectual property rights after the initial sale, the Federal Circuit’s patent exhaustion jurisprudence (or so called, “patent non-exhaustion doctrine”) enumerated in its prior rulings, Mallinckrodt, Inc. v. Medipart, Inc., and Jazz Photo Corp. v. International Trade Comm’n, remains good law (at least before the Supreme Court decides to explicitly override the two decisions) with respect to the following two issues, respectively: (1) whether accompanying product sales with lawful and clearly communicated restrictions could avoid patent exhaustion within such declared limits; and (2) whether foreign sales authorized by the owner could exhaust the owner’s U.S. patent rights when patented products are shipped back to the United States.

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To What Extent Are University IP Policies Legally Binding? Part 1: Staff
By Philip Mendes

All universities and other research organisations (for brevity, the term “university” is employed, and refers not just to a university, but to all forms of a non-forprofit research organisation) have intellectual property (IP) policies. Like other policies, they serve an important function, stating the university’s position upon diverse matters ranging from conflicts of interests, to paid outside employment by academic staff, and from campus security to the use of the university’s libraries.

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A New Look On Intellectual Property And Innovation In Africa
By Patrick Terroir

Africa is a large continent with 54 countries. A solid average growth rate of more than five per cent over the past 15 years bears witness to the region’s impressive economic potential. A growing labour force and a large and emerging consumer market hold the promise of significant further growth opportunities. Yet a myriad of challenges need to be addressed in order to reap these potential gains. Africa has all the ingredients to make this happen, and decisions and actions taken today will determine whether Africa will succeed in achieving higher levels of prosperity. (The Africa Competitiveness Report 2015, WEF)

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Strategies For Developing University Innovation Ecosystems: An Analysis, Segmentation And Frame-Work Based On Somewhat Non-Intuitive And Slightly Controversial Findings
By Mike Alvarez Cohen

Universities have been increasingly viewed as catalysts for regional economic vitality—especially related to innovation, entrepreneurship and startups. Accordingly, many universities have been increasingly trying to establish robust innovation ecosystems that drive local economic development (which in turn, bolster university research and education programs). This paper describes an analysis, framework and strategies for developing robust university innovation ecosystems (UIEs). The paper’s analysis reveals the following somewhat non-intuitive or slightly controversial observations that are leveraged in developing ecosystem strategies:

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Recent U.S. Court Decisions And Developments Affecting Licensing
By John Paul and D. Brian Kacedon

In Mars, Inc. et al. v. TruRX LLC et al., even in the absence of a written patent license agreement, a parent company successfully showed that its subsidiary had an implied exclusive license and therefore had standing to join the parent company as a co-plaintiff in a patent infringement case. According to the decision by a magistrate judge, if a subsidiary company has the right to practice the invention and an express or implied promise that all others will be excluded from practicing the invention, it has standing as a co-plaintiff. The magistrate judge also held, however, that the parent company could not recover the subsidiary’s lost profits from the infringer.

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