Archive | News RSS feed for this section

Gene-editing break-through: can a collision of science, ethics and (patent) ownership be avoided?

The USPTO decided in February that the rightful intellectual property owner of CRISPR in eukaryotes, a time-saving tool that makes it cheaper and easier to edit gene sequences, should be Feng Zhang, Ph.D., and The Broad Institute of MIT and Harvard, not Jennifer Doudna, Ph.D., and the University of California, Berkley, who had conducted the earlier research.

However, Doudna and her team, which included Emmanuelle Charpentier, now with Max Planck Institute in Berlin, are on track to obtain a European patent for CRISPR. They recently filed an appeal against the USPTO’s decision, setting the stage for a showdown.

CRISPR will allow an organism’s DNA to become “almost as editable as a simple piece of text.” Using CRISPR, scientists will have the capacity to alter, insert and delete genes in plants, animals and, even in humans.

The implications are very big indeed, both in terms of science and profits, and, especially, ethics. Universities and businesses stand to generate potentially billions of dollars. Medical research will never be the same.

[For a good description of how CRISPR-Cas9 works, go here. ]

The battle lines are being drawn to determine the rightful owner of aspects of the development: Berkeley and Dr. Charpentier vs. Broad Institute/MIT and Harvard. It could mean an eventual pay-out of billions of dollars.

World-Changing

In 2012, Cal biochemistry and molecular biology professor Jennifer Doudna and microbiologist Emmanuelle Charpentier, now of the Max Planck Institute, changed the world. They invented CRISPR-Cas9 (as opposed to eukaryotes, which is any organism with a nucleus enclosed in membranes), a gene editing tool that uses a protein found in Streptococcus bacteria to chop up and rearrange viral DNA with precision.

“The implications of the technology were immediately apparent, astonishing, and perhaps just a wee bit scary.” 

“The implications of the technology were immediately apparent, astonishing, and perhaps just a wee bit scary,” reports California Magazine. “Ultimately, CRISPR applications might be developed to wipe out genetic diseases, produce bespoke bacteria that could pump out everything from hormones to biofuels, and engineer exotic animal chimeras.”

It is one thing to use an editor to eliminate genetic mutations, such as those found in sickle-cell anemia, writes the Wall Street Journal, however, “it is quite another thing to edit the germ line—that is, to make changes that would be passed on to future offspring.

“Would it be permissible, Ms. Doudna asks, to lower an unborn child’s risk of Alzheimer’s disease? If so, would it also be permissible to edit for greater intelligence or athleticism or even, say, for a particular hair color? While all such uses would ultimately require regulatory and institutional review, it is the notion of building a social consensus that is particularly fraught.”

The three main researchers involved in these patent cases have developed their own companies that focus on CRISPR: Doudna developed Intellia Therapeutics, Zhang developed Editas Medicine and Charpentier, now at a Director at Max Planck’s Infection Biology, developed CRISPR Therapeutics. So, both universities and businesses stand to benefit.

These university-based cases often result in sharing through cross-licensing. Remicade, for example, a highly successful biologic for treating auto-immune responses like Crohn’s disease which has generated over a $1 billion so far, has multiple university participants, but is primarily owned by NYU.

Who Benefits?

Yet another question that is raised: Is it right for highly endowed universities like Harvard to get richer as a result of government-funded research? Almost 70% of university research is provided by the U.S. government. Harvard’s 2016 endowment was $36.4 billion.

With the potential impact on society so great, patents may play much more than a financial role. They depending who controls them, they may turn out to be the lynch-pin for ethical application of advanced gene-editing.

In the most interesting chapters of her new book, “A Crack in Creation,” Ms. Doudna wrestles with her ambivalence about the tool she has helped create. She concludes that she no longer feels comfortable operating inside her “familiar scientific bubble”: She must take on a role as a public citizen and address not just the power of gene editing but the ethics of it. At stake, she believes, is “nothing less than the future of our world.”

Image source: bloomberg.com; rsb.org.uk

Drops (& gains) in patent grants to top holders reflect changing times

Every picture tells a story. So does each increase or decrease in the number of U.S. patents major businesses receive over the prior year.

The recently published IPO Top 300 patent recipients for 2016 encourages scrutiny. While overall grants were up 1.6% over 2015, there were several unexpected swings, and a number of notable gainers and losers.

Only four of the top ten U.S. patent recipients in 2016 were foreign-based companies, down from 2011, when eight out of the top ten recipients were non-U.S. It is difficult to tell if that change reflects more filing on the part of U.S. companies or less interest on the part of foreign filers. Probably, the latter.

Those receiving fewer patents in 2016 over 2015 include Toshiba, -33.3%, GM Global Technology, -14.8%, Johnson & Johnson, -14.1%. Broadcom, -24.3%, Blackberry, -28.1%, and DuPont, -35.5%. ABB Ltd., down 142%, was still granted 317 patents. NXP Semiconductor, which was acquired by Qualcomm in the fourth quarter, was down 70.3% in U.S. patents received.

Multiple Factors

Depending on the company and industry the grant losses can be attributed to several factors, including reduced R&D budgets; a lower regard for the value of patents due to changes in the law and decisions in the courts; reduced concern over patent counts; and the desire on the part of more companies to obtain fewer, better quality patents.

“It is difficult to attribute reasons or trends as to why a company may have had more or less patents issued from one year to the next,” Brian Hinman, Chief IP Officer for Philips told IP CloseUp. “Patents issuing in 2015 may still be reflecting the impact of the patent application filing surge just prior to enactment of the AIA hence the decline in 2016.  

“We also may be seeing the impact of more companies deciding to maintain their innovation as trade secrets especially in light of enactment of the DTSA [Defend Trade Secrets Act].”

It should be noted that some companies choose to spread their patent grants among multiple entities, obscuring the actual number received. Companies which had been actively filing software and business method patents in previous years, are likely to be doing less of that, now that those types of patents are more difficult to obtain and uphold.

Notable Increases

On the upside, among the top 21 recipients, Intel was up 30.1%, Taiwan Semiconductor & Manufacturing, 28.6% and Ford Global Technologies, 27.6%.  Amazon, 15th on the overall patent recipient list for 2016 with 1,662 grants, was up 46.3 % over 2015. This may reflect a new seriousness about entering or acquiring other businesses.

Other notable gainers include Nokia, up 73.8%, GlobalFoundries, up 136.5% and Hyundai Motor Co., up 39.1%. (GlobalFoundries acquired IBM Microelectronics in 2015.)

Among financial institutions, Bank of America was up 20.8%, having received 279 patents.  Perennial annual U.S. patent leader IBM, was up 7.8%, receiving 8,023 patents, the most of any company.

For the complete list of top 300 patent recipients, go here 

For an interactive list of top 50 assignees, go here.

Image source: statista.com; wikepedia.com; public.tableau.com

Up to $600 billion in U.S. IP is stolen annually by foreigners, says report

An IP Commission study finds that foreign sources, especially China, are responsible for the bulk U.S. theft.

Counterfeit goods, pirated software, and theft of trade secrets together represent a “systematic threat” to the US economy of between $225 billion and $600 billion annually, according to the findings of a 2017 research report from the bi-partisan IP Commission, The Theft of American Intellectual Property: Reassessments of the Challenge and United States Policy.

The massive theft of American IP—from companies and universities across the country, from U.S. labs to defense contractors, from banks to software companies—threatens the nation’s security, says the report.

The research, and update of a 2013 report, is the work of the bi-partisan IP Commission and was published by the National Bureau of Asian Research (NBR) NBR conducts advanced independent research on strategic, political, economic and other issues affecting U.S. relations with Asia, including China and Russia.

The Intangible Investor in June’s IAM features a full perspective on the report, “Foreign sources responsible for most IP theft.” Subscribers can find a copy here.

Pioneering Research

Kudos to the IP Commission for establishing a beachhead in the global war to combat IP theft and cyber crime. Its pioneering research provides American and other lawmakers, businesses, investors and the public, with data about IP infringement that are cannot be ignored.

However, the report falls short. Identifying and stopping infringement, including cyber-espionage, should not be restricted to sources outside of the U.S.  The IP Commission’s research zeros in on foreign counterfeit, trade secret and copyright violations. It does not account for increasing domestic patent infringement and copyright abuses, which have profoundly affected the software, recording and other industries, and impacted U.S. jobs.

To be fair, this IP Commission’s focus is foreign IP threats, and it is a daunting task to estimate the financial impact of domestic invention theft on U.S. businesses – not just what gets reported in the press about settlements and licenses.

But speaking to a range of IP attorneys and holders, it becomes clear that much IP abuse comes from domestic IT businesses, Internet providers, streaming services, individuals and others that know they are unlikely to be caught infringing rights or will have to pay for a license. By the IP Commissions own admission, IP theft is less benign than it might appear.

The theft of American IP is not just the ‘greatest transfer of wealth in human history,’ as General Keith Alexander put it; IP theft undercuts the primary competitive advantage of American business—the capacity for innovation.

Inspiration and a Challenge

The IP Commission’s timely report is a challenge to IP holders, and lawmakers alike who are concerned about innovation and commerce. It is a call to examine the source, type, and level of domestic IP rights theft, including patents, on SMEs, inventors, and universities, and how they affect the economy now and are likely to in the future.

The full 24-page update, The Theft of American Intellectual Property: Reassessments of the Challenge of the United States Policy, is well worth reading. Visit  www.ipcommission.org.

The original 2013 report, Report of the Commission on the Theft of American Intellectual Property, is also available and useful for comparison. 

Image source: ipcommission.org; linkedin.com

Startup mentored by Brody/Berman and Center for IP Understanding (CIPU) is LES Business Plan Winner

Takachar, a small business working with farmers in Kenya to develop an inexpensive, ecologic method for turning biomass (waste) into fuel, is the Global Winner of the 2017 Licensing Executives Society (LES) Business Plan Competition.

The company, led by Kevin S. Kung, an MIT doctoral student, was mentored in the Business Plan Competition by Bruce Berman, CEO of Brody Berman Associates and President of the Center for Intellectual Property Understanding (CIPU), an independent, non-profit.

Takachar’s unique IP strategy provides farmers free open-source technology, followed by patents licensed to the company exclusively by MIT, trade secrets and trademarks. The goal is to provide affordable franchises in Africa, India and other parts of the world, where economical sources of fuel are crucial to the success of small farms and disposing biomass is a challenge.

The Global LES Business Plan winner receives a $5,000 cash award and in-kind IP support. For more information about Takachar, go here.

Second Global Winner

Berman also mentored the 2016 LES Business Plan global winner, Fruti-Cycle Project, an Ugandan start-up that provides affordable, portable refrigeration for delivering produce to market faster and with less spoilage. For more information about Fruti-Cycle, go here.

“It is a privilege to work with innovative and ambitious young people, like Kevin and Nelson,” said Berman, who has 25 years of IP consulting experience. “They have the right combination of vision, technical skill and tenacity to turn original ideas into businesses that provide timely products and solutions. Takachar and Fruti-Cycle Project are good examples of utilizing integrated IP rights strategies in diverse parts of the world.”

Takachar Strategy

Image source: Takachar

Michelle Lee to keynote “Patents for Financial Services Summit,” 7/19

The 14th Annual Patents for Financial Services Summit being held July 19-20 at the Sheraton Times Square Hotel will examine recent developments affecting banks and other financial institutions. 

The featured speaker for 2017 is Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office (USPTO).

Ms. Lee will address “The Current State of U.S. Patent Law.”

IP CloseUp readers can save $200. Use code IPCNYC. 

2017 program highlights include:

  • Consider the impact of recent and pending Supreme Court cases, including TC Heartland LLC v. Kraft Foods (venue and forum shopping), SCA Hygiene Products AB et al. v. First Quality Baby Products LLC (the availability of the doctrine of laches as a defense in patent litigation), and of Impression Products Inc. v. Lexmark International Inc. (patent exhaustion)
  • Evaluate best practices in oral argument before the PTAB and pinpoint the necessary information to communicate in an efficient and complete manner
  • Identify where changes have occurred in patentability and if additional clarity is available
  • Provide practical advice for weighing the costs and value of opinions of counsel, including when they should be obtained and from whom
  • Review the law of patent eligibility as it relates to FinTech in a number of jurisdictions outside of the U.S., including Canada, Australia, Japan, Singapore, and China
  • Earn CLE: This program was designed to satisfy approximately 13 hours of Continuing Legal Education credit requirements and is appropriate for both newly admitted and experienced attorneys

For a full list of speakers, go here; for the conference agenda, here.

To register as an individual or group, please go here.

Image source: worldcongress.com

“NPEs generate higher damages awards,” 2017 litigation study finds

The disparity in patent damages awards between non-practicing and practicing entities favors NPEs and is growing wider. 

These findings, counter-intuitive to some, are part of the useful, just-published report from PwC, 2017 Patent Litigation Study – Change on the Horizon.

PwC’s analysis shows the continuation of a trend that began in the early 2000s: significantly higher damages awarded to NPEs relative to practicing entities.

The median damages award for NPEs was significantly higher than PEs in the last 15 years. While this disparity had narrowed to about 1.6x in the 2007–2011 period, in the most recent five-year period, the NPE median damages award climbed to 3.8x the median for practicing entities.

It is not clear if the findings are a result of NPEs owning better quality, more highly infringed patents than PEs, or that NPEs are simply more adept at enforcing them.

“The disparity has perplexed us for some time,” stated Chris Barry, one of the 2017 Litigation Study’s authors and a partner in PwC’s Forensics Practice. “Operating business that asserts patents typically are more interested injunctive relieve – halting a competitor’s product sales – than in generating revenue. Most patent cases are dismissed on summary judgment or settled.”

Higher Success Rate

Over a 20 year period from 1997 to 2016, PE’s have a higher success rate at trial than NPEs at trial, 36% vs. 25%, but a significantly lower recovery rate, $4.9 million vs. $11.5 million. For the 2012-2016 period, NPEs out generated PEs in damages by almost 4 to 1 (see above infograph). 

Among NPEs, universities fare best at trial with median damages awards of $16.3M, as opposed to $13M for NPEs and just $6.7M for individual inventors who enforce.

No information on trial costs was provided, although AIPLA tracks them by the size of the case. There also was no tracking of PTAB results or influence on patent litigation. Many law firms address this, as does Unified Patents.

Despite a handful of large, headline-grabbing patent damages awards – most of which are never paid – patent trials have been flat for almost three decades, with a little more than 100 disputes going to trial annually.

There are an estimated two million plus active U.S. patents.

For the full 2017 patent litigation report, go here.

 

Image source: PwC

 

10th Intl Legal Alliance Summit in NY, June 15, will confer IP awards

The International Legal Alliance Summit & Awards will celebrate its tenth anniversary in New York on June 15, 2017 with approximately 500 in-house counsel and law firms from around the world.

Attendees will discuss such hot topics in domestic, cross-border and M&A intellectual property issues as IP strategies, patent eligibility and IP portfolio management. They will also be present to see honors awarded to the best legal departments and law firms in their respective fields.

Organized by Paris-based Leaders League, the interactive one-day program provided participants with networking opportunities by way of one-to-one meetings, expert-lead roundtables, and seated lunch and dinner and cocktail receptions.

The General Counsel Awards recognized the best legal, tax and intellectual property in-house departments, while the Law Firm Awards Ceremony in the evening will celebrate the best performing independent law firms. For nine years, the International Legal Alliance Summit & Awards has supported the players of the legal industry in the search of expertise, networking and achievement.

Fifty legal department from large international companies will run for the victory during the networking lunch and 150 law firms from more than 25 countries during the gala dinner.

Corporate IP Counsel

Speakers include senior counsel and IP executives from IBM, Philips, Microsoft, Mondelez, Caterpillar, Samsung, Canon, L’Oreal, Total, Lufthansa, MetLife, UBS, Open Invention Network and The Clearing House associations of banks. For the full list of speakers, go here.

The International Legal Alliance Summit & Awards is pleased to present its 10th edition of the Expert Insights conferences. Over 70 outstanding international speakers debated on the latest issues the industry is facing and highlighted the new challenges to overcome with their experiences, knowledge and analysis

Traditional conferences, say the producers, leave to chance finding the best networking opportunities. By using the internet platform, attendees can schedule one-on-one meetings of their choice.

The Expert Insights Conferences are the opportunity to benefit from 60+ experts of the legal industry. The ILA Summit will feature 14 panel discussions

For the 2017 program, go here;

To register, go here.

Image source: www.ilasummit.com

New book: tech elites’ disregard for privacy & IP must be managed

Can Internet monopolies – adept at providing at providing information – be prevented from violating the rights of individuals, businesses and IP holders, and impeding innovation?

They can if they are regulated like utilities, says Jonathan Taplin in his new book, Move Fast and Break Things.

In 2009, Mark Zuckerberg told Business Insider publisher and former Wall Street analyst Henry Bloget, “Move fast and break things is Facebook’s prime directive to developers. Unless you are breaking stuff,” Zuckerberg said, “you are not moving fast enough.”

Eight years later, this Facebook mantra has taken on a darker meaning. A new book by Hollywood producer and former USC Annenberg Innovation Lab director, Taplin (Mean Streets, The Last Waltz), offers a portrait of technology giants without restraints, routinely violating the rights of creatives, consumers and innovators, and propping up their own shares at the expense of investing in the future.

Subtitled How Facebook, Google and Amazon Cornered Culture and Under-mined Democracy, Move Fast and Break Things dissects the inordinate power of a handful of the popular companies and their founders, and what it means for culture, innovation, and personal freedom.

What Taplin does best is connect the dots by distinguishing between true break-through ideas and the ability to provide and mine data, especially personal information, for profit and dominate markets. The confluence of vision, ego, and wealth is for Taplin a dangerous mix that needs to be carefully watched if not closely monitored. Copyright and patent holders need to be especially wary.

Don’t Ask Permission

“The co-founder of YouTube, Chad Hurley, was a PayPal alumnus, schooled in Peter Thiel’s philosophy,” writes Taplin. “He built his company on the same ‘don’t ask permission’ ethic the Larry Page had embraced… ‘Who will stop me?’ [A phrase which can be found in Ayn Rand’s controversial novel, The Fountainhead.] This became the center tenet of Internet disrupters, from Thiel’s PayPal right up to Travis Kalanick’s Uber.”

Taplin writes that Google, who championed the tagline for its corporate code of conduct, “Do no evil,” controls 88% of online searches and search advertising, while Facebook has 77% market share in social media and Amazon a 70% share of e-book sales. He does not consider Apple a monopoly because its main hardware business has many competitors.

“The tech elites jealous guarding of its own monopoly platforms,” says Taplin, “is built upon a blatant disregard for the artist’s intellectual property.”

“More people than ever are listening to music, reading books, and watching movies, but the revenue flowing to the creators of that content is decreasing while the revenue flowing to the big four platforms is increasing. Each of these platforms presents a different challenge for creators. Google and YouTube are ad-supported ‘free-riders’ driven by a permission-less philosophy.”

Permission-less free-riding, or “efficient infringement” in has also come to dominate other parts of the IP workplace, rendering simple patent licenses more arduous than ever.

Consent Decree

How does Taplin propose we prevent Internet monopolies from violating the rights of individuals, businesses and IP holders, and impeding innovation? You regulate them like utilities.

It would be very difficult for many people and businesses to live without Amazon, Google, YouTube and Facebook, but it is becoming impossible for many who produce intellectual property to live with them.

This is not something that their founders and shareholders want to hear, but it may be inevitable. Europe is more apt to regulate BigTech than the U.S. – and it is not mere jealousy. If Google, for example, is indeed a monopoly, Taplin, a former tour manager for Bob Dylan, asks, would a consent decree like the one that the government made Bell Labs enter into in 1956 work? He believes it would.

Easy Ride is Over

The Guardian, the British daily, said “Move Fast and Break Things is a timely and useful book because it provides an antidote to the self-serving narrative energetically cultivated by the digital monopolies. They have had an easy ride for too long and democracies will, sooner or later, have to rein them in.”

It would be very difficult for many people and businesses to live without Amazon, Google, YouTube and Facebook, but it is becoming virtually impossible for many who produce intellectual property to live with them.

My full review of Jonathan Taplin’s new book can be found here, on IP Watchdog.

For more information or to buy Move Fast and Break Things, go here.

For a free preview chapter (via Google), go here.

Image source: jontaplin.com

 

97% of Europeans regard IP rights favorably; 41% ages 15-24 believe it is sometimes OK to buy counterfeits

When it comes to intellectual property rights Europeans are highly respectful, except among the young, where buying counterfeits has gown.

That is the primary take-away of an extensive European Community survey of attitudes toward IP rights delivered recently. The findings show that 97% of Europeans believe that IP should be respected, and that inventors, creators, and performing artists need to be paid for their work.

In contrast to the overall positive regard for IP rights, however, 41 per cent of young Europeans, ages 15 to 24, said they believed it was acceptable to buy counterfeits if the original product was too expensive. 15% of those surveyed in that age group said that they had intentionally purchased a counterfeit product in the past 12 months, 9% higher than in a similar 2013 study conducted by the European Union Intellectual Property Office (EUIPO).

“European Citizens and Intellectual Property: Perception, Awareness and Behavior,” a 205-page research report, updates the first EUIPO provides further evidence of how IP rights are regarded by EU citizens at a time when encouraging innovation and creativity is increasingly the focus of economic policy.

“In line with the 2013 results, people do not always act in line with their stated position,” said EUIPO Executive Director, Antonio Campinos, in summarizing the findings. “The key 15-24 age group seems to have become less convinced that fake goods are damaging and is buying more counterfeit goods, mainly for price reasons.”

Significant Sample

“European Citizens and Intellectual Property” surveyed people across all 28 EU Member States about their perceptions of intellectual property survey. It consolidates results of more than 26,000 interviews and confirms the global picture assessed in the EUIPO’s 2013 research.

“Even during a period of economic crisis when household budgets have come under pressure,” the report concluded, “the vast majority of respondents agree that it is important that inventors, creators, and performing artists can protect their rights and be paid for their work.”

Eighty-three percent said they prefer to access digital content through legal or authorized services whenever there is an affordable option available, and 71 percent of those admitting to using illegal sources say they would stop, if they could access affordable alternative options.

Confusion is growing about what constitutes a legal source. In 2016, 24 percent of respondents, five percentage points more than in 2013, wondered if an online source was legal, rising to 41 percent among young people.

Half of the Europeans queried believe that strict protection of IP rights may, in fact, curb innovation, and more than half feel that IP principles are not adapted to the Internet.

Neither the 2017 survey and previous study focused on counterfeits and copyrighted content, or examine attitudes towards patents or trade secrets.

An executive summary for “European Citizens and Intellectual Property” can be found here.

For the full 2017 EUIPO IP perception study, go here.

Image source: euipo.europa.eu

Fixing the patent system/ promoting jobs is focus of Capitol Hill event

An increasing number of experts say the U.S. has lost its edge in the battle to secure and defend meaningful patents that stimulate competition.

It is with making U.S. patents important again that “Promoting Innovation, Investment and Job Growth by Fixing America’s Patent System” is being held on Monday May 8 at the United States Capitol Building, Washington, D.C.

The invitation-only event hosted by the U.S. Chapter of the International IP Commercialization Counsel (IIPCC), will feature an all-star list of presenters from business, government and law.

Speakers Include

Dr. Carl J. Schramm, University Professor, Syracuse University; Former President of the Ewing Marion Kauffman Foundation for Entrepreneurship; Board Member IIPCC; David Kappos, Partner, Cravath, Swaine & Moore LLP; Former Under-Secretary of Commerce and Director of the USPTO; Q. Todd Dickinson, Senior Partner, Polsinelli, PC; Former Under-Secretary of Commerce and Director of the USPTO; Judge Randall Rader, Former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; Board Member IIPCC;  Judge Paul Michel, Former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; Charles Henry Giancarlo, Former CTO and Chief Development Officer Cisco Systems and former Managing Director Silver Lake Partners; Phil Johnson, Former Senior VP, Intellectual Property Strategy & Policy, Johnson & Johnson; Marshall Phelps, Vice-Chairman, Center for IP Understanding; former VP IP for Microsoft, IBM, Bob Pavey, Partner Emeritus, Morgenthaler Ventures; former Chairman of the National Venture Capital Association;

Manny W. Schecter, Chief Patent Counsel, IBM Corporation; Laurie C. Self, VP and Counsel, Governmental Affairs, Qualcomm; Bill Elkington, Chair & President Elect, LES USA and Canada; Senior Director, IP Management, Rockwell Collins; Orin Herskowitz, SVP of IP & Tech Transfer, Columbia University; Executive Director of Columbia Technology Ventures; Teaches ‘IP for Entrepreneurs’ in Columbia’s Engineering School; Professor Adam Mossoff, Director, Center for Protection of Intellectual Property, George Mason; Professor Jeffrey A Lefstin, Associate Academic Dean and Professor of Law, UC Hastings; Robert B. Aronoff,  U.S. Executive Director, International IP Commercialization Council; Managing Partner, Pluritas; Damon Matteo, CEO, Fulcrum Strategy; Robert P. Taylor, President, RPT Legal Strategies; Venture Advisor, New Enterprise Associates, Bruce Berman, Chairman, Center for IP Understanding; Publisher, IP CloseUp; Principal, Brody Berman Associates; Elvir Causevic, Managing Director, Houlihan Lokey Tech+IP Advisory, Art Monk, VP IP Transactions, TechInsights; Rob Sterne, Founding Director at Sterne, Kessler, Goldstein & Fox

Opening Panel

IP CloseUp publisher and editor, and Center for Intellectual Property Understanding Chairman, Bruce Berman, is moderating the opening panel at 2:00 pm: The business impact of IP uncertainty and negative attitudes. Panelists include:

  • Manny W. Schecter (IBM)
  • Phil Johnson (J&J)
  • Marshall Phelps (Center for IP Understanding)
  • Laurie Self (Qualcomm)
  • Bob Pavey (Morgenthaler Ventures)

“Our patent system may no longer be providing the protection and incentives necessary to entice investors and entrepreneurs to assume the enormous risks that inhere in the creation of many new technologies and new companies,” said Rob Aronoff, IIPCC U.S. Chapter Chair.

“In recent years patent reform initiative have resulted in significant unintended consequences, including a decline in the reliability of patents is contributing to a waning of entrepreneurial energy and a decline in the risk tolerance of American investors and entrepreneurs.

Profound Implications

“This shift has profound implications for the long-term U.S. economy, as China, Korea, Germany and other countries expand the role that patents play in their economies with ambitious plans to displace American dominance of technology in the years to come. This program will explore the direct and essential role that strong and enforceable ‘good patents’ play in allowing investors and entrepreneurs to justify the high levels of risk that drive innovation.”

Conference sponsors include Houlihan Lokey, TechInsights, Qualcomm and Pluritas.

Partners include IAM Magazine, the Licensing Executives Society, the Center for IP Understanding, USIJ Alliance for Startups & Inventors for Jobs and IP CloseUp.

For more information, go here.

Those interested in attending can request and invitation, availability permitting, by emailing rob.aronoff@iipcc.org.

Image source: iipcc.org; west-windsor-plainsboro.k12.nj.edu

 

 

Philanthropist & patent licensing pioneer, Eugene Lang, dead at 98

One of America’s most successful and charitable patent licensing strategists passed away last week. 

Eugene M. Lang, describe as “an American folk hero” for his generous philanthropy, grew up on Manhattan’s East 83rd Street in a $12 per month railroad flat.

He went on to donate more than $150 million to charities and institutions during his lifetime for educational causes, including the I Have a Dream Foundation, which he established in 1981; the Eugene Lang College, part of the New School in Manhattan; the Eugene M. Lang Center for Entrepreneurship at Columbia University School of Business; and Swarthmore College, which he entered at 15 on a scholarship.

Much of Lang’s fortune was derived from the Refac Technology Development Corporation, it was reported in his obituary, a public company he founded in 1952 that specialized in the licensing of patents and financing high-tech ventures.

Thousands of Suits

“REFAC held patents relating to LCDs, ATMs, credit card verification systems, bar code scanners, VCRs, cassette players, camcorders, electronic keyboards, and spreadsheets,” reports Wikipedia, “and filed thousands of lawsuits against other corporations to secure licensing fees or out-of-court settlements, a business practice of some very large corporations such as Microsoft and Google as well as large startups such as Intellectual Ventures, and sometimes criticized as patent trolling.

Some considered Refac International Ltd., known for suing thousands of big and small companies to protect its patents, the model on which other non-practicing entities (NPEs) were based. In 1990, the company was chastised by a federal appeals court in Washington after losing a major lawsuit it filed against 118 Southern California companies selling products with liquid crystal displays.

The New York Times reported that Refac — the name stands for resources and facilities — had made much of its money “by aggressively filing patent infringement suits against companies like IBM and Eastman Kodak and retailers like R.H. Macy and Radio Shack on behalf of inventors of a wide range of products: liquid crystal displays, automated teller machines, bar-code warning systems and spreadsheet software.”

In a letter to The Times [valuable for its historical and factual content], Mr. Lang called the article “grossly distorted” and pointed out that most of the clients represented in lawsuits had sought out Refac after offering licenses to the corporations for their inventions and being turned down.

He illustrated his argument by citing the inventor of the laser who had tried to get industry to recognize his role and succeeded only after Refac won validation of his patents in the courts.

“For Refac, the drama of litigation began in 1975 when Gordon Gould, after battling industry opposition since 1959, asked us to represent his claims as inventor of the laser,” wrote Lang.

“Concluding that Mr. Gould’s claims had genuine merit, Refac, against all odds, accepted the challenge. It took until 1987 and some $4 million, but the courts finally validated every patent of Mr. Gould’s. Despite vituperative reactions from the laser industry – analogous to quotations cited in your article – claims that in 1975 might have been labeled ”all but worthless” now generate annual royalties in excess of $12 million.

Impulsive Gesture

A self-made businessman who flew coach class and traveled on subways and buses, Lang is best remembered for his impulsive gesture in June 1981, when he was invited to deliver the commencement address to 61 sixth graders at Public School 121 on East 103rd Street in Spanish Harlem. He had attended P.S. 121 as a boy 50 years earlier.

He made himself personally available to the students, counseling them when they faced obstacles such as teen pregnancy, addiction, and delinquency. He cheered them at their graduations and helped arrange for jobs. When a student was incarcerated at Sing Sing, he helped him pursue college course work from prison.

In addition to his daughter, Jane Lang, a Washington lawyer and community activist, Lang is survived by two sons, David and the film and stage actor Stephen Lang (Avatar, Conan the Barbarian, Gettysburg); a sister, Barbara Lang; eight grandchildren; and eight great-grandchildren.

In 1996, President Bill Clinton awarded Mr. Lang the Presidential Medal of Freedom.

For more information about the Eugene M. Lang Foundation, go here.

Image source: thenewschoolhistory.org; newsworks.org

PIPX IP stock index down 8.7% in Q1 after being up 11.2% and 20.4%

The PIPX public IP licensing company stock index came back down to earth in the first quarter of 2017. 

For Q1 the PIPX index was down 8.7% after being up  11.2% and 20.4% in Q3 and Q4 2016. This compares to an up 5.5% quarter for the S&P 500.

The change in value of the component companies over Q4, range from 61.4% for Wi-Lan (WILN) to -40.7 for Marathon (MARA), Xperi (XPER) (formerly Teserra) experienced a 23.2% decline in its share. Finjan (FNJN), whose market cap does not currently qualify it for the Index, and sells cybersecurity products as well as engages in patent licensing, was 54% in the quarter.

Fewer companies are now responsible for the bulk of the performance, as size becomes even greater factor in this capitalization-weighted index and as the value of some companies lags.

After outperforming the S&P 500 in Q3 and Q4 2016, Q1 saw the PIPX decrease, but not as dramatically as in previous quarters. The value of $1 invested in the S&P 500 in Q3 2011 would now be $1.76 while the value of the same $1 invested in the PIPX would be $0.69.

Q1, gains in RPX (RPXC), which named a new CEO, and Wi-Lan shares represented substantially all the positive movement in the index, and was heavily outweighed by large decreases in valuation at Acacia (ACTG), Rambus (RMBS), InterDigital (IDCC), and Xperi carrying the index to a substantial loss.

InterDigital, Xperi, and Rambus continue to make up the lions share of the index because of their market cap,” said Dr. Kevin Klein, Vice President and GM of Products and Licensing at VORAGO Technologies, who compiled the IP stock performance data for IP CloseUp.

“These three companies accounted for 37% of the total value of the index at the inception in 2011, today they make up over 80% of the total value of the index. InterDigital alone now accounts for over 40%, up from 15% at inception.”

Quarterly PIPX Performance, 2011-2017

For the full Q1 PIPX report, go here.

Image source: PIPX IP Stock Index

 

%d bloggers like this: