Patent Licensing Research Articles

Imperfect patent protection, licensing, and willingness to pay for the innovation

This article analyzes the ways in which imperfect patent protection affects patent holders’ licensing decisions, firms’ willingness to pay for the innovation, and social welfare. We consider a cost-reducing innovation by either an incumbent or a (potential) entrant. According to our analysis, when patent protection is high enough, the entrant is willing to pay more compared with the incumbent, it licenses the innovation exclusively, and it acts as a non-practicing entity. In the case of low patent protection, the threat of imitation discourages licensing agreements, and consequently, the incumbent ends up investing more. Thus, the level of patent protection impacts the structure of the market, affecting R&D appropriability and social welfare.

Изобретательская и патентно-лицензионная деятельность в НАН Украины

Изобретательская и патентно-лицензионная деятельность в НАН Украины

A CRITICAL CASE STUDY ON QUALCOMM AS PIONEERS OF WIRELESS REVOLUTION

The company Qualcomm established in July 1985 by Irwin Jacobs and Seven at San Diego, California, the United States. Qualcomm is an American multinational company, it aims to design, develop semiconductors and market wireless telecommunications equipment's and services. Qualcomm derives most of its revenue from chip making and patent licensing businesses. Qualcomm has offices at almost 33 countries with a global workforce of approximately 35,400 employees. For the fiscal year 2018, Qualcomm reported annual revenue of US$21.301 billion, an increase of 2% over the previous fiscal cycle. Its shares traded between $51 and $75 per share, and its market capitalization at the end of fiscal 2018 was valued at US$105 billion. In the Fortune 500 list, the company ranks as 133rd in revenues among the largest US corporations. The company is focused on various industries like automotive, education, healthcare, networking, Internet of Everything, mobile computing, smart homes, smart cities, smart homes, and wearables. Qualcomm’s products include Gobi, Hy-Fi, IPQ, IZat, Powerline, Snapdragon, Small Cells, VIVE, Wi-Fi platforms , Mirasol, Pixtronix, AllPlay, 2net, Brew, HealthyCircles, QChat, QLearn, RaptorQ, Vuforia, Halo, and WiPower. In this paper, we are analysing business strategies of Qualcomm by studying various things like the corporate history, financial strategy, STEEP and SWOT analysis, target markets, key company challenges and legal issues o f Qualcomm.

Determining whether a given cryptographic function is a permutation of another given cryptographic function—A problem in intellectual property

Imagine that, in order to avoid patent fees, licensing agreements, or export restrictions, someone permutes the plaintext bits, ciphertext bits, or key bits of a block cipher. All security properties of the block cipher would be preserved. There are many possible such permutations (e.g. 23116.32 for the Advanced Encryption Standard, AES-256). It might seem infeasible to detect this fraud, and even harder to determine the permutation matrices used. Instead of a block cipher, it could be the compression function of a cryptographic hash, or any other cryptographic function.This paper presents an algorithm whereby this fraud could be easily detected, by means of a SAT-Solver—a standard off-the-shelf software package that solves small-to-medium sized instances of the logical satisfiability problem. This paper also presents how this problem can be modeled in a system of polynomial equations (e.g. in the context of algebraic cryptanalysis). Moreover, this problem is related to the “isomorphism of polynomials” problem and that connection is explored at length.

R&D financing and growth

ABSTRACT R&D investment are an important engine of growth and development. Yet economists have often claimed underinvestment, based on the consideration that these projects are more costly to finance, especially, due to the asymmetric information between inside and outside investors. Coherently, a recent empirical evidence has shown that firms intensively active in R&D are less leveraged and rely more heavily on internal finance. Motivated by this evidence, we study the effects of asymmetric information and financial frictions within a GE economy of Schumpeterian tradition. The model and equilibrium concept are rich enough to represent investment and innovation decisions, technology adoption/diffusion through patent licensing and, most importantly, firms' financial decisions. In this representation, R&D-intensive firms might effectively rely more on internal sources and equity than on debt financing, relative to what would happen in frictionless markets. Further, financial decisions affect aggregate investment and income dynamics.

Decentralized Patent System

The patent system features a centralized structure almost from end to end. The United States Patent and Trademark Office (PTO) possesses power to examine inventions, publish patents, and increasingly manage post-examination proceedings. The centralized nature of the patent system leads to well-known inefficiencies, including production problems, low quality patents, and information inefficiencies. Yet, despite intense criticism, and even proposals to ‘demonopolize’ the agency, the PTO’s dominance persists, and has in fact increased with the recent enactment of the America Invents Act (AIA). This Article considers an alternative, decentralized, patent system. Harnessing new developments in database technology, I propose that inventors would submit patent applications to a shared patent record instead of to the PTO. After a grace period, in which inventions would remain secret, the record would open to the public and the patent examination process would ensue. Following the examination, granted patents would be published to the record. During the examination process and throughout the lifetime of the patent, industry and state actors would be able to dynamically update the record. For example, third parties would be able to submit prior art, scientists — to weigh in on obviousness, patentees — to offer licenses, and courts — to list decisions and outstanding cases that pertain to the patent. A decentralized patent model fosters a participatory and dynamic patent record and promises to transform the record into a central tool in the innovation economy. This strategy would yield several key benefits. First, it would boost the quality of patent examination and improve productivity, by allowing knowledgeable parties to shoulder some of the tasks that examiners now perform alone. Second, it would spur innovation by advancing information on new inventions, and reduce waste by preventing a race for patents that have already been filed. Third, it would allow inventors to avoid innocently infringing patents that are strategically held by ‘patent trolls,’ tackling one of the most troubling issues in patent law. Finally, decentralization would facilitate patent licensing, thus driving the adoption of new inventions in the market. Improved licensing forecasts would also produce a dynamic effect: increasing the potential reward of patents ex post, thus boosting the incentive to invent ex ante.

Farsighted stability in patent licensing: An abstract game approach

This paper analyzes the negotiations made by an external patent holder and potential licensee firms in a new model of patent licensing, assuming that they are all farsighted, and characterizes the symmetric farsighted stable sets. Given a net profit of each licensee firm, a set of outcomes is a symmetric farsighted stable set if and only if, at any outcome in the set, each licensee firm receives the net profit and the number of licensee firms maximizes the patent holder's profit provided that licensee firms obtain the net profits. We also show the close relationship between the symmetric farsighted stable sets and the relative interior of the core. Further, we confirm that the symmetric farsighted stable sets are the absolutely maximal farsighted stable sets (Ray and Vohra, forthcoming) as well as the history dependent strongly rational expectation farsighted stable sets (Dutta and Vartiainen, forthcoming).

Arbitration in SEP/FRAND Disputes: Overview and Core Issues

This article takes a look at arbitration in intellectual property matters with regards to the licensing of standard-essential patents (SEPs) on fair, reasonable, and non-discriminatory (FRAND) terms. Due to the digital transformation, the importance of FRAND licensing of SEPs is likely to increase and with it the need for appropriate conflict resolution. This is where arbitration can come into play due to its flexibility and efficiency. The resolution of SEP/FRAND disputes through Alternative dispute resolution (ADR) is also supported by administrative and judicial bodies and institutions such as the International Court of Arbitration of the International Chamber of Commerce (ICC) or the World Intellectual Property Organization (WIPO) have already gained experience in this field. The article lays down particularities regarding the scope of arbitration in such disputes before briefly touching upon the question of arbitrability. Due to the lack of a law applicable to a pre-existing contract in prototypical SEP/FRAND constellations, the choice of law is also of importance. A special emphasis is put on the issue of confidentiality in view of a public interest in having access to key results of SEP/FRAND arbitration proceedings. As set forth in the article, the FRAND ADR Guidelines authored by the Munich IPDR Forum propose a solution in the form of disclosure of the FRAND determination methodology to a neutral instance, subject to party approval. Lastly, the article looks at how state courts might assess licenses reached in alternative dispute resolution and examines whether EU competition law is a public policy hurdle in subsequent enforcement proceedings.

Arbitration in SEP/FRAND Disputes: Overview and Core Issues

This article takes a look at arbitration in intellectual property matters with regards to the licensing of standard-essential patents (SEPs) on fair, reasonable, and non-discriminatory (FRAND) terms. Due to the digital transformation, the importance of FRAND licensing of SEPs is likely to increase and with it the need for appropriate conflict resolution. This is where arbitration can come into play due to its flexibility and efficiency. The resolution of SEP/FRAND disputes through Alternative dispute resolution (ADR) is also supported by administrative and judicial bodies and institutions such as the International Court of Arbitration of the International Chamber of Commerce (ICC) or the World Intellectual Property Organization (WIPO) have already gained experience in this field. The article lays down particularities regarding the scope of arbitration in such disputes before briefly touching upon the question of arbitrability. Due to the lack of a law applicable to a pre-existing contract in prototypical SEP/FRAND constellations, the choice of law is also of importance. A special emphasis is put on the issue of confidentiality in view of a public interest in having access to key results of SEP/FRAND arbitration proceedings. As set forth in the article, the FRAND ADR Guidelines authored by the Munich IPDR Forum propose a solution in the form of disclosure of the FRAND determination methodology to a neutral instance, subject to party approval. Lastly, the article looks at how state courts might assess licenses reached in alternative dispute resolution and examines whether EU competition law is a public policy hurdle in subsequent enforcement proceedings.

TECHNOLOGY FORESIGHT OF PATENT MANAGEMENT: AN OVERVIEW ON BIG DATA FOR REPOSITORY FIELDS

The development of technology for entering the revolution industries 4.0 era nowadays becomes a hot issue in all industries. This condition is more interesting to discover in reducing budget expenditure, especially in the production process and obtaining raw materials. One of the tools that can be used is through technology foresight in patent management to see more information and predict the advanced technology which brings a competitive advantage in the digital era. Big data in fields of the repository is an urgent requirement, especially in collecting data from R & D results. So, it will facilitate data retrieval within a specific time. This paper discusses how a user knows the development and predicts technology for market segmentation through a patent portfolio, licensing, status, competitor, innovation, and monitoring emerging market with a patent database registered on WIPO. The methodology used software Innography (Licensed). This paper aims to analyze patent database of big data for repository, related to the development of technology foresight products that have been produced, as well as to study the competitors’ movement. The result shows that there are 1262 registered patents with seventeen patents and six organizations acting as assignees from 2004 until 2018. This paper is beneficial to the industry and stakeholders needing the impact of the implementation of the latest technology and the appropriate level of competition in the commercialization of big data for the repository as a digital system for information technology.

Patent pledges, open IP, or patent pools? Developing taxonomies in the thicket of terminologies.

Recently, a range of organisations, including car and consumer electronics manufacturers, have applied so-called patent pledges. A patent pledge is a publicly announced intervention by patent-owning entities (‘pledgers’) to out-license active patents to the restricted or unrestricted public free from or bound to certain conditions for a reasonable or no monetary compensation. Despite growing research to better understand this phenomenon, the underlying terminology remains contradictory. We apply an inductive research approach using qualitative coding to analyse 60 patent pledges made by 80 organisations. Based on this analysis, we propose a three-dimensional taxonomy that distinguishes eight types of patent pledges. Extending this taxonomy using case examples, we then propose a generalised patent licensing taxonomy. This second taxonomy can be used to distinguish patent licensing strategies, including other frequently used approaches, such as patent pools and cross-licenses. Finally, we use the patent pledge taxonomy to illustrate how patent owners change their licensing strategies over time and how it can support strategic decision processes within an organisation. We contribute to the field of patent management by building an ontology of patent pledges through proposing a definition and eight types. The patent licensing taxonomy enables organisations to devise and choose licensing strategies, and to illustrate licensing approaches of competitors, for instance.

Key licensing technologies for patents based on university– industry collaboration

PurposeAs the university–industry collaboration (UIC) gradually attracts the attention of various national governments, the number of studies on UIC has increased substantially. Past UIC studies have mostly focused on investigating the incentives and the motivation for UIC, forms of UIC and performance output of UIC. However, they have not actively identified the key technologies and technology distribution that are conductive to the commercialization of UIC outcomes. Therefore, this study aims to adopt the licensed UIC patents as the basis for analysis and to construct a patent licensing technology network.Design/methodology/approachThis study focused on licensed patents because past studies have indicated that such patents usually have higher value. Moreover, patent licensing can be seen as the final step for the commercialization of UIC outcomes. Finally, past studies have rarely explored patent examiners’ views on key technologies. However, during the substantive examination of patents, patent examiners often use their background knowledge regarding the technology to include citations to other patented technologies that they consider valuable or indispensable. Therefore, this study focused on investigating the patents recognized and cited by patent examiners and conducted key technology identification.FindingsThe results indicated that past key technologies in UIC focused on surveying, medicine, biochemistry and electric digital data processing; these fields are crucial to the commercialization of key UIC technologies. Finally, the USA, Japan, Sweden and Germany play critical roles in the network of global university–industry cooperation and technology licensing.Originality/valuePatent examiners’ perspectives were adopted to establish a patent licensing technology network, through which the key technologies that could promote UIC patent licensing were mined. This study can also serve as a reference for resource allocation in university research and development and for governments to promote new technologies.

Technology transfer at the US National Institute of Standards and Technology

Abstract This article analyzes the interrelationship among technology transfer mechanisms using data specific to the US National Institute of Standards and Technology (NIST). An overview of the history of NIST and US policies that emphasize the economic importance of technology transfer are discussed. The empirical analysis focuses on NIST investments in research and development (R&D) and the cascading impact of those investments on new inventions disclosed, new patent applications, new patents issued and new patent licenses; and accounting for the effects of R&D on these three investments, an overall estimate of the R&D elasticity of new patent licenses is calculated to be 0.7976. The article concludes with a policy-focused summary of the implications of the empirical findings, and a suggested road map for future research related to technology transfer from US federal laboratories.

Research funding and academic engagement: a Singapore case

ABSTRACT Universities have been called upon to work more closely with the industry and actively take part in economic development. Research funding has been used as an instrument to direct research agenda and promote technology partnership. The study examines how research funding is associated with various academic engagement in the context of Singapore, a country with explicit policies to encourage university-industry collaboration. Based on a survey with 276 academics in STEM fields, we find that research funding does play a role in academic engagement. In particular, funding from industry is observed to have a significant correlation with patent licensing, consultancy, and serving on advisory board. In addition to funding, more on-the-ground university and government effort to support academic scientists in their commercialisation activity, in particular, new ventures, would be helpful.

Participation of women in doctorate, research, innovation, and management activities at Universidad Politécnica de Madrid: analysis of the decade 2006–2016

This article studies the participation of women in doctorate, lecturing and research, innovation, and management activities at Universidad Politécnica de Madrid (UPM), the most important and largest university in Spain devoted to engineering and architecture. The analyses revealed significant differences in the ratio of male (76%) and female (24%) lecturing and research staff. This unequal ratio conducted to women underrepresentation in other actions such as coordination of international projects, decision-making designations, patenting and software licensing, collaboration with companies, and PhD supervision. PhD enrolment and PhD defence data, disaggregated by gender and by technological area, were also analysed as they are the starting point of the academic career, and showed a widespread male prevalence over women (ca. 70% men vs. 30% women). The aim of this paper is to present actual, accurate, objective, and gender-segregated information extracted from UPM databases, to carry out a qualitative study drawing on an opinion survey and a “gap” analysis, and to undertake a critical examination of the historic, political, sociocultural and personal factors affecting gender inequalities in academia. Policy recommendations to improve the situation of women and to achieve gender balance in the disciplines of engineering and architecture are also provided.

Research on Key Patent Licensing Strategy of 3D Printing Technology

Patent licensing is one of the most important means to gain profits from the commercial application of patents. Based on the analysis of the market sales price, volume and profit of key patented 3D printing technology products, the profit of patentee under the mode of exclusive licensing, sole licensing and general licensing is studied in order to provide reference for formulating the best licensing strategy for key patents of 3D printing technology and speed up the application of patents.

Spatio-temporal evolution of technology flows in China: patent licensing networks 2000–2017

Technology transfer has become a vital pipeline for acquiring external knowledge. In this study, we propose new evidence on Chinese knowledge flows at a provincial scale based on patent licensing data at the China National Intellectual Property Administration, involving 31 Chinese provinces and all foreign entities. For temporal features, licensing frequencies, the type of patent licensors, the distribution and transfer speed by technical fields were first present. Then, topological structures and centrality rankings, spatial evolution and reciprocity, and blockmodeling were performed in sequence for network analysis. The major findings are: (1) foreign technology played an important role in China and is still an important knowledge source; (2) individuals and enterprises dominate the technology output, and the role of universities and research institutes as innovation engines has not been fully realized; (3) the technical fields of performing, operations, and transporting have extremely active market performance and are favored by market players; (4) patent licensing networks present clear small-world phenomenon, and there is a conspicuous regional hierarchical structure for patent-expanding capabilities in various provinces; (5) an integrally compact, locally dispersed, and multi-core structure centered on Guangdong, Zhejiang, Jiangsu, and Beijing is being formed in the networks; (6) three blocks that play different roles in the patent licensing network are distinguished: source, absorber and beginner. This paper provides important implications for considering the impacts of technology transfer policies implemented so far, and can be useful for making evidence-based policies to establish a more effective national technology transfer system.

Negotiating FRAND Licences – A Global Solution to a Global Challenge following Huawei/ZTE

The legal and economic framework of intellectual property rights in general, and standard essential patents in particular, are a complex conundrum of interests, rights and obligations. Some of these are complementary, while others stand in stark contrast with each other. Hence, there has been much controversy on different aspects of licensing standard essential patents. In the EU the decision adopted by the European Court of Justice in Huawei v ZTE in 2015 marked a milestone in the debate. Even three years after its adoption, discussions on how to interpret this seminal judgment are ongoing. This paper investigates the implications the Huawei v ZTE had on the enforcement environment of standard essential patents, and in doing so primarily examines the judgment’s influence in the context of the EU. However, enforcers across the globe have also taken note of the developments in the EU and some are in the process of reviewing and in places revising their existing policies around licensing of standard essential patents. For this reason, the paper briefly reviews impacts in the USA, Japan and China. The paper concludes that the rights and obligations of patent holders and implementers are not entirely clear. While much has been done in recent years to remedy this situation, the shortcomings demonstrate that more still needs to be done. This is also evidenced by the fact that regulators in major economies are reviewing and in places revising existing policies. As commendable as these initiatives are, what is required is a global approach that recognises the worldwide scope and significance of the topic. While competition policies will continue to be shaped at national level, global advocacy and the ongoing dialogue between policymakers at least in Europe, the U.S., Japan, China could counteract the potentially distortive effects of domestic policies by exploring common ground and identifying best practices that safeguard the interests of society as a whole. The paper therefore recommends a globally developed guidance focusing on key aspects that are common to any FRAND licensing dispute, emphasising procedural guidance over substantive guidance.

Licensing Standard Essential Patents: What is Fair, Reasonable, and Non-Discriminatory?

The 5G mobile telecommunications standard is focusing increased attention on licensing of Standard Essential Patents (SEPs). SEP holders and technology implementers commit to negotiate license agreements on terms that are Fair, Reasonable, and Non-discriminatory (FRAND). Standard Setting Organizations (SSOs) establish coordinated FRAND commitments by consensus decision making. SEP holders and implementers create negotiated FRAND commitments through patent license agreements. Courts specify adjudicated FRAND commitments in SEP license disputes. The article argues that SSO coordination, market negotiation, and adjudication precisely define FRAND commitments. The courts have successfully applied common law principles and comparable license agreements to interpret FRAND commitments. The article argues that administrative or judicial regulation would reduce standardization, impede innovation, and constrain market negotiation of patent license agreements. The article introduces the concept of the “patent run-around” to describe potential effects of “licensing to all” regulations. The article cautions that because of some landmark court decisions, there is a risk that the provisions of patent license agreements could be determined more by judicial regulation than by negotiation in competitive markets. Problematic developments include the imposition of arbitrary aggregate rate caps and basing royalties on the estimated incremental value of standardized technology. The article recommends that courts avoid formulating one-size-fits-all FRAND commitments in 5G mobile telecommunications and other innovative industries. Licensing SEPs does not justify increased antitrust enforcement or administrative regulation.

Patent Pooling In Public Health

In recent years, patent pooling has emerged as a mechanism to address some of the innovation and access challenges relating to health technologies. While patent pools have existed for several decades in other fields of technology, it is a relatively new concept in the biomedical and public health fields, where it has been adapted to pursue public health objectives. The patent pooling model represents a new type of public–private partnership (PPP) in health that relies on the licensing of patents on access-oriented terms to enable multiple third parties to develop and/or supply patented health technologies in a given geography. This chapter first outlines the concept of patent pooling as it has evolved over recent years in the public health field. It then reviews its practical application in HIV through the establishment of the Medicines Patent Pool (MPP), and its subsequent expansion into hepatitis C and TB. The MPP is the first patent pool in public health designed to enhance access to affordable medicines in developing countries through the negotiation of access-oriented and transparent voluntary licenses with the pharmaceutical industry. The chapter concludes with an analysis of the potential applicability of the patent pooling model in other areas by identifying the kinds of public health challenges that such a model could contribute to addressing in the context of meeting the health-related sustainable development goals (SDGs).