Patent License Agreements Research Articles

Unveiling predictors influencing patent licensing: Analyzing patent scope in robotics and automation

Ensuring the sustainability of technology transfer offices depends on effective patent licensing strategies. This study investigates novel predictors for patent licensing prediction. It emphasizes the importance of judiciously selecting suitable patent-scope metrics to enhance the likelihood of successful patent licensing agreements. This work focuses on a critical aspect of patent scope, specifically examining the number of independent claims, the length of the first claim, the depth of the claim, the Cooperative Patent classification count, the non-US family count, and the family independent count. Additionally, we consider conventional metrics previously investigated in prior research, such as claim count, the count within the International Patent Classification, and Simple Family Application. Our empirical analysis harnesses a dataset comprising patents from university technology transfers within the robotics and automation domain. We analyze the relationship between patent scope measures and licensing outcomes using data visualization and statistical techniques, including the point-biserial correlation coefficient and the t-test. Comparative analysis of the statistical results is performed to identify the most impactful predictor. Our study reveals a correlation between the number of independent claims and the success of patent licensing. In contrast, the rest of the investigated measures do not impact the success of patent licensing.

The heterogeneous effects of patent scope on licensing propensity

How does patent scope influence licensing propensity of inventions? Prior studies have often been confined to specific industries or settings, and their results have been mixed with studies showing a positive, a negative, or even no significant relationship. Also, while some have explored moderating factors that might influence the patent scope-licensing relationship, a systematic investigation of the heterogeneous effects of patent scope on licensing at the invention level has not been undertaken. This study combines a broad sample of publicly reported patent licensing agreements and a novel methodology that captures an exogenous variation in patent scope to re-investigate the relationship between patent scope and licensing and to explore key invention and inventor characteristics that could influence this relationship. The results show that narrowed patent scope leads to a substantial decline in licensing propensity of inventions and that the effect is stronger for high-quality, science-based, and novel inventions as well as for inventions generated by small inventors.

Technological Leadership and 5G Patent Portfolios: Guiding Strategic Policy and Licensing Decisions

Whether it’s mobile phones or autonomous cars or telemedicine, a well-functioning robust 5G ecosystem will require licensing executives to have a deep understanding of the need for timely licensing to support technology development and adoption. It is important that the parties to patent licensing agreements understand that value doesn’t depend on the numerosity of patent portfolios, but on use value. The ecosystem is impaired when parties to licensing transactions are recalcitrant and advance bogus indicia of value. The 5G stakes are sufficiently high that top management oversight is likely required.

Perlindungan Hukum terhadap Penerima Lisensi Paten dalam Alih Teknologi

License is a contract between the licensor (Licencor) with the licensee (License) in which the licensor with a payment and in certain circumstances gives permission to the licensee to use an intellectual property rights (intellectual property rights). Regarding the types of licenses according Lee and Davidson, differentiate into 2 (two) types of licenses, namely Exclusive and Non Exclusive licenses. Patent license agreements are basically subject to and refer to the provisions of the agreement adopted by the Indonesian State in the Indonesian Civil Code. In this day and age the licenses as outlined in the agreement have the form of standard agreements or standard contracts, in a licensing agreement because it uses a standard contract, it has the potential to cause an imbalance of the parties because some licensing agreements (Lisensor) use clauses that can harm the licensee (License). Refressive legal protection is used, if a license agreement with a standard contract or standard contract used by the licensor of the patent (Licencor) to the recipient of a patent license (License), if it violates a subjective condition in making a patent license agreement then it will cause legal consequences can be canceled (Vernietigbaarheid) whereas if it violates an objective condition it will have legal consequences null and void (Neitigbaarheid).

University Regulations, Regional Development, and Technology Transfer: The Case of Brazil

In this study, we explore how the quality of university internal regulations and regional economic development impact new patent applications and licensing agreements in the context of Brazilian universities. To do that, we rely on data from a recent survey conducted by the Brazilian Innovation and Technology Transfer Managers National Forum (FORTEC Innovation Survey). Employing negative binomial models, we find that the quality of technology- transfer-related regulations has a positive impact on both patenting and licensing activities. In turn, the availability of regulations per se has no (or only little) effect on technology transfer outcomes. We also find that regional economic development has a negative impact on patenting outcomes. On the other hand, universities located in regions with higher levels of economic and innovative activity generate more licensing agreements. Finally, our results suggest that the marginal effects of the quality of both IP protection and licensing regulations is higher in more developed regions. These findings have important implications for both theory and practice.

University regulations, regional development and technology transfer: The case of Brazil

In this study, we explore how the interplay of the quality of university regulations and regional economic development impacts new patent applications and licensing agreements in the context of Brazilian universities. To do that, we rely on data from a recent survey conducted by the Brazilian Innovation and Technology Transfer Managers National Forum (FORTEC Innovation Survey). Employing negative binomial models, we find that the quality of technology-transfer-related regulations has a positive impact on both patenting and licensing activities, whereas the mere existence of those regulations has no (or only little) effect on technology transfer outcomes. This suggests that the presence of regulations per se may not provide (i) the incentive necessary to outweighing the opportunity costs and motivate academics to engage in technology transfer; and/or (ii) the necessary level of clarity, flexibility and consistency to mitigate uncertainties and transaction costs for both firms and university inventors. We also find a negative relationship between regional economic development and patenting outcomes. In contrast, we determine that universities located in regions with higher levels of economic and innovative activity generate more licensing agreements. Finally, our results suggest that the marginal effects of the quality of both IP protection and licensing regulations are higher in more developed regions.

Kimble v. Marvel: A Misconceived Affirmation

A clause in a patent license agreement which requires the licensee to continuously render royalty payments even after the intellectual property rights have expired has been a very controversial issue in practice. With the infamous United States Supreme Court Ruling of Brulotte v. Thys, and its subsequent affirmation in the case of Kimble v. Marvel, the legality of continued royalties seems to be a settled provision of law in the American Jurisprudence. However, the judgement rendered in the case of Kimble v. Marvel begs the question as to whether the affirmation was by reason of sound judicial interpretation or the coercion of stare decisis. The interplay between the rule of reason and the per se rule on one hand, with that of the patent misuse theory on the other, was alarmingly unclear. The three were presented as being so closely related that the two distinct dynamics of law could very well be addressed as excessive legislation on the same subject-matter. The present research seeks to analyze the 2015 ruling of Kimble v. Marvel, without the interference of stare decisis and defines the contours under which the judgement was rendered (patent law or anti-trust). Most importantly, the paper will assess the Indian jurisprudential stand with reference to continued royalties, both within patent law and the competition law.

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.

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.

Decreasing Returns, Patent Licensing, and Price-Reducing Taxes

Patent licensing agreements among competing firms usually involve royalties which are often considered to be anticompetitive as they raise market prices. In this paper we propose simple tax policies than can alleviate the effect of royalties. Considering a Cournot duopoly where firms produce under decreasing returns and trade a patented technology, we show that the interaction of royalties with decreasing returns may generate the counter-intuitive result that market prices decrease in the magnitude of diseconomies of scale. In such cases there exist progressive quantity taxes on firms that weaken the effect of royalties and lower the market prices. These taxes collect sufficient revenue to compensate firms for their losses. As a result, it is possible to design deficit neutral tax-transfer schemes that strictly Pareto improve the welfare of consumers as well as firms.

Strategies on Technology Transfer and Patents Commercialization for Nanotechnology at the Spanish National Research Council.

Internal methodologies used in CSIC in order to protect and commercialize nanotechnology based intellectual property as well as their effects are reviewed. The evolution of CSIC nanotechnology patents portfolio is also analyzed. There has been a clear increase in the patent license agreements of CSIC in the period 2002- 2015 in the field of nanotechnology. This increase is correlated to these facts: (i) Highly qualified team managing Intellectual Property issues, (ii) The presence of CSIC in international fairs, and (iii) Proactive search of companies and investors. Successful results can be achieved in technology transfer when the appropriate resources are available and properly organized with an adequate combination of efforts in knowledge protection, promotion and commercialization of technologies and support to the scientific entrepreneurs of the institution.

Assessing the Impact of Field-of-Use Restrictions in Patent Licensing Agreements: The Ethical Pharmaceutical Industry in the United States, 1950–1962

There are a number of strategies employed by companies to limit price competition, including patenting. This article investigates patent licensing restrictions as a strategy to erode price competition, using mainly information gleaned from the 1960–1962 Kefauver Committee hearings. The article deals with the pharmaceutical industry, which is one of the few sectors in which patents are essential to the development and introduction of innovations. The current study adds to a body of literature that has yielded mixed results with respect to the role of patents in this industry. The main contribution of this research is that restrictive licensing clauses, specifically field-of-use restrictions, are found to be relevant in eroding price competition in the institutional market. However, in the retail ethical market, price competition was absent even when no field-of-use restrictions were included in licensing contracts, although product competition was relevant between patented drugs.

Contracting for technology transfer: patent licensing and know-how in Brazil

Using contract-level data, we study the relation between the inclusion of know-how in cross-border patent licensing agreements and the contractual terms used by firms to deal with moral hazard risks. We use official data on international technology contracts with patent licensing terms registered by affiliated and unaffiliated parties before the Department of Technology Transfer of the National Institute of Intellectual Property (INPI) in Brazil between 1996 and 2012. We find that contracts between unaffiliated parties involving know-how transfer show distinctive contractual and technology features compared to the rest: (i) they involve younger but lower quality technologies (compared to contracts without know-how); (ii) they are more prone to up front lump-sum payments than royalty or combined payments (royalty and fixed); and (iii) they are more likely to be accompanied by the licensing of other IPRs, in addition to patents, such as trademarks.

Perjanjian Lisensi di Indonesia

The birth of a license agreement can not be separated from the fact that the invention patent holder of technology and very little comes from Indonesian society it proves that the Indonesian people's ability to produce a new invention that can be obtained patent rights have not shown great progress and development. These conditions support and open the occurrence of an agreement on a patent license that comes from abroad. The entry of the birth of various patents and license agreement is a logical consequence of the enactment of patent laws and the globalization of the economy are on the growth and development of industrialization. The license agreement in view of the civil law, the types of agreements innominant that kind of agreement or agreements which are not regulated outside the Civil Code. Although this type of agreement is not set, but the general provisions in the preparation and execution of this patent license agreement apply the general principles of the agreement in the Civil Code.

Antitrust Correction for Qualcomm’s SEPs Package Licensing and Its Flexibility in China

China’s National Development and Reform Commission (NDRC) issued its first antitrust administrative sanction decision relating to SEP licensing in 2015, finding that Qualcomm had abused its dominant position in the CDMA, WCDMA and LTE wireless communication standard-essential patents (SEPs) licensing market and baseband chip sale market by: (a) charging unfairly excessive royalties, (b) unreasonably bundling SEPs licensing with non-SEPs, and (c) making the sale of baseband chips conditional upon the buyer signing a patent license agreement with a patent no-challenge clause and other unfair clauses. As a result, Qualcomm was ordered to cease its abusive acts and was fined RMB 6.088 billion (approx. USD 975 million), the severest ever imposed by the NDRC or any other Chinese Anti-Monopoly Enforcement Authorities (AMEAs) under its Anti-Monopoly Law (AML). This article provides a structured description of the NDRC’s findings, explores the NDRC’s two-step approach of “the rebuttable assumed dominance” for SEPs and its flexible antitrust approach to correct Qualcomm’s SEPs package licensing practice, and lastly comments on the commercial and industrial significance of this decision in China and beyond.

The Expanding Significance of Arbitration for Patent Licensing Disputes: from Post-Termination Disputes* to Pre-Licensing FRAND Disputes

In its recent decision ATF 140 III 134, the Swiss Federal Supreme Court held that certain claims raised by patent licensors against their exlicensee after the termination of their patent license agreement were within the jurisdiction of the arbitral tribunal notwithstanding a contractual provision which seemed to limit the submission to arbitration of only pretermination disputes. This interesting decision confirms that courts can consider adequate to confer to arbitral tribunals the jurisdictional powers to decide on patent-related claims after the termination of the patent license agreement at issue, even in the presence of contractual limits to the jurisdiction of the arbitral tribunal. This note further discusses the opposite scenario in which certain disputes arising before the conclusion of a patent license agreement can be submitted to arbitration. This peculiar situation arises in connection with so-called standard essential patents (which are quite common in the information technology / telecommunication industries) which must be made available to willing licensees under fair, reasonable and non-discriminatory terms and conditions (FRAND) and for which arbitration can be used in order to determine the FRAND-compliant terms and conditions of the patent license agreement (specifically the royalties to be paid by the licensee for the use of the standard essential patents). This note analyses this scenario in the light of the recent commitments made by Samsung (in its high profile dispute with Apple) which were validated by the European Commission on April 29, 2014 and which contains very interesting arbitration-related features which deserve to be presented. In sum, this note illustrates the expanding significance of arbitration for patent licensing disputes with respect to both post-termination disputes (as decided in ATF 140 III 134) and pre-licensing disputes (as contemplated for FRAND disputes).

An Updated Proposal for a License on Transfer (LOT) Agreement

This paper proposes a standardized, networked, royalty-free License-On-Transfer (LOT) patent license agreement. Under the LOT Agreement, each LOT User grants a license to the other LOT Users existing at the time of transfer of a patent by the LOT User, where the license automatically becomes effective when the patent in question is transferred to a non-LOT User. Exceptions exist for (i) transfers that are part of a legitimate spin out or of a Change of Control to a Non-Assertion Entity or (ii) transfers to another LOT User. This structure protects LOT Users from being subject to the extraction of patent rents by the entity (e.g., a patent assertion entity) to which the patent is transferred. The licenses are subject to defensive termination, e.g., in the event that a LOT User brings an offensive patent suit against a non-assertion entity to which a patent subject to the LOT has been transferred then, at any time after the institution of the offensive patent suit, the non-assertion entity can terminate the license for the subject patent granted to the LOT licensee bringing the offensive action. The LOT Agreement is open to any Entity. Appendix I provides a model LOT license agreement.

Quanta v. LG Electronics: Frustrating Patent Deals by Taking Contracting Options Off the Table?

The Supreme Court's unanimous decision in Quanta v. LG Electronics may make it significantly more difficult to structure transactions involving patents. While this decision does make a group of players into winners in the immediate term for existing patent deals (this group includes any customer who, like Quanta, buys patented parts without buying a patent license), almost everyone is likely to come out a loser going forward. The Court in Quanta decided that a patent license that LG Electronics sold only to Intel - and explicitly limited to exclude Intel's customers, like Quanta, and priced to reflect these modest ambitions - would be treated by the Court as extending permission under the patent to those Intel customers. The legal hook on which the Court hung its decision is the patent law doctrine called first sale or exhaustion. The Quanta decision is likely to have a serious negative effect on the nuts and bolts of patent licensing agreements. On one reading, it stands for little more than the unremarkable proposition that the actual patent license contract at issue was just badly written. But that would be a simple matter of applying state contract law to the underlying facts of the contract - not the type of issue that typically gains the Supreme Court's attention. So the real motivating force behind the Court's decision to take the case is probably something else. The extensive briefing and commentary, as well as the opinion's colorful dicta, all suggest that the true import of the case is the way it speaks about what patent contracting can be done - as a matter of Court-created policy for federal patent law. If this view of Quanta is correct, then the decision may be remarkably important in several respects. It may greatly frustrate the ability of commercial parties to strike deals over patents. It may also stand as an example of a seemingly conservative Court acting in direct contravention of clear congressional action.

In Search of Patent Republics

This Article presents an original study of the internal governance of patent licensing collectives. This investigation is prompted by a developing belief among legal commentators that cooperative institutions such as patent pools and research consortia point the way forward for American innovation. Until now, however, scholars have not examined the internal governance of such groups. As a result, it has remained unclear whether patent pools encourage innovation, and if so, how. Drawing on fifty-two collective patent licensing agreements in force between 1856 and 2013, this Article shows that patent pools arguably have not encouraged innovation by serving as forums for collective patent valuations. Instead, many such groups incorporate “rough and ready” rules that offer the greatest innovation incentives to repeat players. In light of the unappreciated impact that patent pool design has on innovation, this Article presents a new proposal to mandate the recording of collective patent agreements with a federal agency.

Alnylam Can Sue for Violation of Patent License Agreement

Biotechnology Law ReportVol. 32, No. 1-2 Patent LitigationAlnylam Can Sue for Violation of Patent License AgreementPublished Online:4 Apr 2013https://doi.org/10.1089/blr.2013.9935AboutSectionsPDF/EPUB Permissions & CitationsPermissionsDownload CitationsTrack CitationsAdd to favorites Back To Publication ShareShare onFacebookTwitterLinked InRedditEmail FiguresReferencesRelatedDetailsCited byThird Party Beneficiaries and Contractual NetworksSSRN Electronic Journal Volume 32Issue 1-2Apr 2013 InformationCopyright 2013, Mary Ann Liebert, Inc.To cite this article:Alnylam Can Sue for Violation of Patent License Agreement.Biotechnology Law Report.Apr 2013.46-46.http://doi.org/10.1089/blr.2013.9935Published in Volume: 32 Issue 1-2: April 4, 2013PDF download