• entrepreneurs and IP;
• are brands really that important to smaller entities and entrepreneurs?;
• recent changes made at the UK IPO to assist smaller entities;  and
• 'mosaicing' in patent cases.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu;  http://ipkitten.blogspot.com/

Barbara Cookson - http://www.filemot.com/

Other

Entrepreneur site - www.thefunded.com

Woolworths twitter feed - http://twitter.com/#search?q=woolworths

Wellworths twitter feed - http://twitter.com/#search?q=wellworths

School for Startups - http://www.schoolforstartups.co.uk

• The recent New York times article on non practicing entities;
• The new IP law in China;
• Adwords and trade mark infringement in China, the US and Europe; and
• A hopeless appeal attempt in Europe.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu;  http://ipkitten.blogspot.com/

William Yang - http://www.panawell.com/

Bruce Berman - http://www.brodyberman.com/

Other

The New York times article - http://www.nytimes.com/2009/09/21/technology/21patent.html? r=1&dbk

The Google Adwords post on IPKat - http://ipkitten.blogspot.com/2009/09/google-adwords-wait-is-over.html

• the impact of the recession on IP Strategy in Japan;
• IP in Japanese service companies;
• Patent quality in Europe, the US and Japan; and
• Nude trade mark developments in Europe.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu;  http://ipkitten.blogspot.com/

Philip Parker - www.pjparker.com

Dave Donoghue - www.chicagoiplitigation.com

Let me know what you think. 

Don't be fooled by the 140 characters - there is quite a lot to digest in all of this.  (Note for those trying to follow in Twitter - @DuncanBucknell has changed to @IPThinkTank.)

CIP Forum in Sweden is coming up in early September - it promises to be an incredible few days. I'll be presenting on IP Management and tweeting in between times.

DuncanBucknell can we leave the baggage of the industrial economy behind and instead focus on the benefits of IP in the knowledge economy? #IPBC

DuncanBucknell what processes are you putting in place to get the ROI you should demand for your IP investment? #IPBC

DuncanBucknell LESI's 1 day licensing course sounds like a great idea - #IPBC

DuncanBucknell the relationship between Strategy and Process - combine the 6 sigma blackbelt with IP Strategy - #IPBC

DuncanBucknell Need to further away from allowing IP to managed by legal & as a cost to by business and as a profit centre - #IPBC

DuncanBucknell HP built a separate IP Strategy grp with diverse skillsets (but not legal) - they report into business and work closely with legal #IPBC

DuncanBucknell B4 IP protected the business, now IP is the business - but who will manage these - IP people or Bus people - #IPBC

DuncanBucknell & choosing those to speak @ RT @thinkfireip: #ipbc meta observatin: speaking at conferences can be part of the communication strategy for ip

DuncanBucknell AST (defensive patent aggregator) type of strategy is not about being a long term player - more about short term freedom to operate #IPBC

thinkfireip #ipbc bill Barrett of liquid logic: you must convey value through a story

DuncanBucknell IP Strategy plays a bigger role in smaller businesses - #IPBC - not sure I agree...

DuncanBucknell Chicken or egg - IP strategy first or business strategy first - #IPBC - has to be iterative - each informing the other

DuncanBucknell how can 'IP bubble' ask for more prominence if can't get this right - RT @thinkfireip: #ipbc 2/3rds of deals have title issues initially

DuncanBucknell Flexibility in deploying different approaches over time and across aspects of your business re IP - #IPBC

DuncanBucknell The term 'strategy' is definitely overused in the context of IP - #IPBC

DuncanBucknell do knowledge based businesses need a portfolio of strategies applicable to each area of business? #IPBC

DuncanBucknell understanding which technologies you need to control to achieve your goals is key skill in knowledge economy #IPBC - applies 2 open innov 2

DuncanBucknell So why buy at all? RT @DuncanBucknell: Defensive patent aggregators will take a license if necess isntead of purchase - #IPBC

DuncanBucknell Acacia model - later you leave it in neg & lit the higher price they ask - how doe this relate to damages calculations - #IPBC

DuncanBucknell Is it only after being rebuffed that an inventor will go to an NPE such as ACP or Acacia? Don't they also look for IP? #IPBC

DuncanBucknell Freedom to operate analysis - some industries v complicated, sure but simply ignoring the issue is fraught #IPBC

DuncanBucknell Freedom to operate - steering clear sounds like a v bad idea - wilfullness spectre alone is not sufficient - need to do at least some #IPBC

DuncanBucknell Freedom to operate / freedom of action - are large companies not clearing sufficiently? - #IPBC is this a factor in rise of NPE?

JackDTodd Acacia: no one wants to enforce "weak" patents; no one signs up with an aggregator unless there is actual liability. #IPBC

JackDTodd Defensive patent aggregators ought to engage offensive NPEs to pursue the companies (potential clients) who have not signed up. #IPBC

DuncanBucknell Why don't defensive patent aggregators withdrawing these patents to stop maintenance fees? Bc they want to try recover some $ - #IPBC

DuncanBucknell Is dis-aggregated R&D together w low willingness of larger companies to license driving NPE phenomenon & impact of open innovation? - #IPBC

DuncanBucknell non practiced patents from entities who are making other products - an interesting corollary to NPE issue - #IPBC

DuncanBucknell RPX - past activities of pat owner is impt part of assessing whether to buy - does this incent NPEs to sue 1st so can sell later - #IPBC?

DuncanBucknell defensive patent aggregators - maybe it's ok to focus on US - NPEs aren't as much of a problem elsewhere - #IPBC

DuncanBucknell defensive patent aggregating companies - are they really thinking about global patent portfolios as well or just US? #IPBC

DuncanBucknell Subscriptn services like RPX and AST - if you subscribe for 1 year do you get all prev licences, and do they continue after that year? #IPBC

DuncanBucknell If RPX sell patents - will protect members with perpetual licence - #IPBC - this won't be an effective assignment in many countries, guys

DuncanBucknell RPX takes patents off the market for benefit of members (don't assert them) - so also benefiting others - #IPBC

DuncanBucknell Esp. if around IP reputatn RT @tuyettran: What about discussn of brands & IP that includes how social networking affect reputatn at #IPBC?

JackDTodd IP Practioners have allowed IP to become "commoditized." If a commodity, then it must not be valuable. That is the problem. #IPBC

DuncanBucknell It's a great point that people still seem to talk only about patents and trademarks when discussing IP - v narrow - #IPBC

DuncanBucknell Is the new media currently saturated with the point of view that IP is bad? Certainly in online world that must be right. #IPBC

DuncanBucknell Sure - v different models, regulation, etc - RT @DuncanBucknell: Are the IP issues completely different in green tech vs pharma? - #IPBC

DuncanBucknell Brand IP working group - a v useful initiative - get in touch with Caroline Kamerbeek at Philips to join - #IPBC

DuncanBucknell How does the IP industry, with its varied interests etc. get better at coordinating on key issues (eg. software patents) - #IPBC

DuncanBucknell Distinctiveness - anti IP movement uses emotive messaging - which works - #IPBC

thinkfireip #ipbc kamerbeek "stop the legal talk" be open about deals link to innovators, opportunities created.

thinkfireip RT @DuncanBucknell: Has Rembrandts in the Attic done more damage than anything else to the IP function - CEOs all want a Rembrandt - #IPBC

DuncanBucknell Most messages in mainstream media about IP are about fights and litigation - #IPBC

DuncanBucknell Microsoft regularly reporting metrics to Seniro Execs on patent quality, quantity, costs (inc. perception of quality externally) - #IPBC

DuncanBucknell Fearlessness as a critical requirement for CIPOs - comment on Sunday was build the parapet then stand on it, not just head above it - #IPBC

DuncanBucknell Role of lobbying and communications as part of the IP function? - #IPBC

DuncanBucknell Pt about call otions is that there isn't on;y one 'event' in IP - value goes up w each event - file, issue, enforce, licence, etc - #IPBC

DuncanBucknell Call option approach to valuing IP - sure but only as analogy to make the pt that value is uncertain now and will crystalise later - #IPBC

DuncanBucknell As in many situations, demonstrating IP value is easiest done in hindsight and v hard to do propsectively - #IPBC

DuncanBucknell Is internal or external communication more difficult for the IP function? Doesn't this depend on stage / sophstication of the entity? #IPBC

DuncanBucknell Not sure that I agree that you can't over communicate an IP metric you've picked - you have to pick a good one 1st - #IPBC

DuncanBucknell Tying IP value to margins - ie what premium do we get bc we have this IP for this product - #IPBC - sounds easy huh? it's not.

DuncanBucknell Keep reassessing and iterating your IP valuation model - this is to prove value to internal stakeholders so they get it - #IPBC

DuncanBucknell Creatie your own metrics internally if you need to measure value delivered by IP organisation #IPBC

DuncanBucknell Shouldn't companies be sharing their internal IP valuation models - even within industries to start with? #IPBC

AwakenIP Phelps: IP provides legal scaffolding for creating relationships. If open source & msft (oil & water) could get together, anyone can. #ipbc

DuncanBucknell As you set out to navigate your internal organisation - think about how you can help each of the stakeholders - #IPBC

JackDTodd Microsoft: IP/CIPO must be evangelist for IP and must be able to politic with the business units. Must overcome the internal "No." #IPBC

DuncanBucknell biggest mistake in IP - hiding IP function and hiding IP within organisation - #IPBC

DuncanBucknell Critical that you work on gaining trust and credibility within your organisation is just as important as externally - #IPBC

DuncanBucknell it's not so much how IP function is structured but how well you do your job - Ruud Peters #IPBC

JackDTodd Philips: IP team in company must be "connected" or closely aligned/in synch with business units. #IPBC

jmattbuchanan RT @JackDTodd: MUST capture IP internally when it is created or it will be lost and dissipated. CAPTURE, OPTIMIZE, PROTECT/PATENT. #IPBC

AwakenIP Phelps: Having patent licenses with customers and competitors in other countries can help with governmental relationships abroad. #ipbc

DuncanBucknell Depends on context? RT @AwakenIP: Should CIPO come from business, law or technical backgrounds? Split voting results at #ipbc audience.

DuncanBucknell Same for those tryign to implement open innovation RT @DuncanBucknell: Do wanna be CIPOs need to bc students of change management? #IPBC

DuncanBucknell add - don't care about job title - RT @thinkfireip: #ipbc Cipo qualities: communicatn, negotiatn, taking arrows in back, educate, fearless

DuncanBucknell global, explosive, viral - some of the best of open innovation #IPBC and just try to apply old world IP principles to that :)

DuncanBucknell Do you need to be able to protect with patents to do open innovation? #IPBC

DuncanBucknell Imperative for P&G to tap international networks to spread their open innovation efforts - which networks is an interesting qn #IPBC

DuncanBucknell & industry RT @JackDTodd: Session/CIPO: role of CIPO differs based on company (start-up, large company; M&A activity). #IPBC

DuncanBucknell but how to get them to let you speak? RT @thinkfireip: #ipbc being at right meetings to elevate ip function as critical element.

DuncanBucknell Question = how much of this is true open innovatn & how much just collaboration? RT @DuncanBucknell: open innov in pharma Exelixis #IPBC

DuncanBucknell Also attorney's fees if lose, RT @DuncanBucknell: reducing cost of US pat litigati - discovery, court appointd experts? #IPBC

ipdotcom RT @DuncanBucknell Disconnect between IP industry and CEO's understanding of importance IP - a big theme of this conference #IPBC

DuncanBucknell patent litigation cost in the US is a little out of control - Duane Valz (Yahoo) - yeah but what do we do about that? - #IPBC

DuncanBucknell "If you want to get rid of the NPEs, you're burning down the house to get rid of mice" - Ralph Eckardt #IPBC

DuncanBucknell Getting IP on to the balance sheet - sure - but don't we have to agree on some valuation first? #IPBC

DuncanBucknell Ralph Eckardt building a case that enforceability of patents increases R&D spending - (of course), what's next though? #IPBC

DuncanBucknell Incredible that USPTO may be become more application friendly just because they have budget shortage as a result of many abandonments #IPBC

DuncanBucknell Like many, GSK are abandoning many patents & TMs - impressive that they are also bundling some with data for proposed outlicense - #IPBC

DuncanBucknell Damages apportionment - I don't think it is a good idea to have different patent systems for different industry segments - #IPBC US patents

riemannzeta MFM: based on description by panelists, Chinese IP Office may within 10 years become the most important in the world. More efficient. #IPBC

So what’s this all about?

The IIPA recently released a commissioned report (the twelfth in the series) on the performance of US “copyright industries” compared to the US GDP. According to the report, the copyright industries continue to boom, contributing disproportionally to the US GDP and, with continued vigilant fight against copyright infringement, see a rosy future.

It’s a convenient conclusion. And it may be true. But it’s just not possible to tell from the information examined by the report.

The report first groups industries based on whether a significant proportion of the goods they sell would qualify for copyright protection. If most of an industry’s goods would qualify for copyright protection, then it’s part of the “core” (such as movies, music and software). If an industry sells goods which only partly qualify, then it’s part of the non-core copyright industries. Performance of the core and non-core industries is then measured and compared to GDP.

Ars Technica points out some issues with the numbers and comparative growth rates. However, there is a much more fundamental issue before you even get to the numbers.

Inclusion in the core and non-core categories should be based on the extent to which copyright protection actually contributes to or detracts from the business performance. It’s a much harder question, but only then can you start to discuss the contribution copyright regulation makes to the economic performance of a country. For example, there would be significant service related revenues from elements within the core industries which do not rely on copyright. There are also business models which rely on fair use, or are even disadvantaged by copyright, but still within the core. Finally there are also businesses which qualify for copyright protection, but which do not benefit (as significantly as they should) due to the practical difficulties of enforcement. It’s difficult to justify the those elements being counted towards an overall “copyright performance” measurement. Finally, as a measurement, the Gross Domestic Product includes a number of factors which are not directly relevant to copyright including, for example, government spending. It’s therefore not clear exactly what the comparison of “copyright industry” revenue compared to GDP actually means in practical terms – variations in unrelated issues like heath care and defence make the comparison meaningless without a very detailed explanation for cause and effect (which may have been prepared, but wasn’t included).

It will be interesting to see how the report is framed as the global financial crisis has a larger than normal impact on GDP independent of material changes to copyright regulation, enforcement or infringement.

Post by Ben Lehman

(Photo credit: treadrinker)

Associated Press v All Headline News Corp., 2009 WL 382690 (SDNY, 17 February 2009)

Ben and Marie-Louise provide an update on the 'Hot News' doctrine and the recent District Court of the Southern District of New York case which considered the application of ‘hot news’ misappropriation in the context of an internet-based news headlines aggregation service.

You can obtain a copy of this article in the Oxford University Press  'Journal of Intellectuap Property Law & Practice' in Volume 4, Number 7, July 2009.

3 interesting things in this issue of IAM Magazine were:
(1) The twice yearly ‘Practice Business Review’ sessions held at Microsoft and their ongoing efforts to quantify the value that the IP function adds;
(2) Despite great strides made by numerous large pharmaceutical companies, Oxfam still finds much to complain about rather than congratulate and collaborate about; and
(3) William Barret’s piece on crazy inventions and their place in allowing innovation (and invention?) to flourish – particularly when contrasted with Craig Opperman’s piece on the ‘Elephant in the Room’ (which basically highlights the elderly chestnut that senior executives should focus on patent quality, not quantity).

Most surprising was the quote: “At present we don’t have a coherent, unified approach to applying antitrust principles to IP-related activities and transactions.” from Horacio Gutierrez, Microsoft’s Chief Intellectual Property Officer.  Actually, after the initial surprise, it makes a great deal of sense.  The overlap between IP and Competition law is incredibly complex, particularly when you overlay the many differences that arise across national boundaries.

Find out more at: www.iam-magazine.com 
 

• Pharmaceutical and biological data exclusivity in the United States and Brazil;
• Geographical Indications in Europe and Brazil;
• European Court of Justice decisions on the Madrid protocol, ownership of Community Designs and Geographical Indications;
• Communicating IP Value; and
• Using social networking for good - Jeremy's Tweet and Retreat principle.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu;  http://ipkitten.blogspot.com/

Jose Carlos Vaz e Dias - http://www.diblasi.com.br/?mod=profissionais&sec=escritorio&prof=Jose-Carlos-Vaz-e-Dias

Firstly, thanks

In our opinion, the biggest news in the IP world this month was the Swedish Pirate Party winning a seat in the  EU parliament.

There were also some big IP wins for some of our clients in the news, but we can’t mention them here, except to say congratulations again.

The best podcast moment was the US, Europe and China discussion with Hal Wegner, Weijiang Si and Jeremy Philips.

In other news we’re delighted to be adding a second outstanding Indian team member to our firm.  We’re looking forward to when she can start.  We’re currently in discussions with potential team members from China and the USA.

Finally, we’ve decided to open up the IP Think Tank’s virtual doors to allow others to publish high quality articles in our articles area.  We have a number of research projects ongoing and will be keen to collaborate when appropriate as well.  Please do let us know if you would like more information about this initiative.
 

(Photo credit: marcelgermain)

• The draft patent enforcement and validity principles released for comment in China;
• David Kappos's nomination to head the USPTO and the likely impact;
• The impact of civil servant appointments in China;
• Comparative advertising in Europe and China; and
• Potential fallout from the digital Britain.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Stay tuned for an upcoming panel on Bio-similar molecules in the pharmaceutical industry.

Links:

People

Jeremy Phillips - http://www.jeremyphillips.eu;  http://ipkitten.blogspot.com/

Hal Wegner - http://www.foley.com/people/bio.aspx?employeeid=16338

Weijiang Si - http://en.debund.com/website/team-1.html

And, yes, we're opening our virtual doors to publish (or republish) high quality, research based articles from others.  We will collaborate on some of these articles, when appropriate.)  

Here are a few interesting excerpts from the article:

'What can be done to calm the situation and to stop the international “IP war”? The crucial element in this exercise is to understand the concept of “incentives”. Both, business and civil society have an “incentive” to move from a stage of war to a constructive, solution driven approach.'

'So far, IP has been largely looked upon from a legal perspective, which comes as no surprise since current educational systems worldwide only train lawyers in IP.'

'A different perspective on IP, one that looks at it as a strategic asset more than a legal framework gives way to new managerial perspectives on intellectual property.'

'It needs political will, business initiative and the concerted effort of both business and the public sector to foster inclusion and knowledge equity rather than further marginalization and discrimination.'

Please do come and add your thoughts to the debate.

(Photo credit: ~jjjohn~)

• The rise and rise of the Pirate Party in Europe and future implications;
• The demise of Loi Hadopi (France's 3 strikes law); and
• Seizure of generic drugs transiting through Europe.

We hope you enjoy this week’s show, and as always, we look forward to your comments and feedback.

Stay tuned for popular guests Hal Wegner and Weijang Si on next week’s show.

Having said that, if you're so minded, by all means, please do head over to Gene's blog and vote for IP Think Tank - much appreciated.

It's also a great way to discover some great patent blogs, so take a look.

(Photo credit: farlane)

In this presentation Duncan reviews the current contentious strategic approach to intellectual property in the pharmaceutical industry.  He then looks at the fast paced change that is already overwhelming some parts of the industry and, looks to other industries for examples of alternative strategic approaches.  The presentation finishes with some key suggestions and practical examples relating to much greater and more open collaboration between pharmaceutical companies.

Click here or on the 'download media' link at the top of this page for a copy of the slides.

You can download and listen to a podcast of Duncan presenting this material in our podcast area.

• The directive on famous marks recently promulgated by the Supreme People's Court;
• Pragmatic differences between Western Chinese and Coastal Chinese Courts;
• Background to the enormous settlement amount in the recent Chint v Schneider case;
• Damages awards in China; and
• Some recent cases on Architectural drawings and trade marks.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links:

People

Weijiang Si - http://en.debund.com/website/team-1.html

Half of all US patents will lapse at the 12 year mark, and the number will be significantly higher the longer you leave it.  The numbers are higher in other jurisdictions where maintenance fees are payable each year.

So next time you identify a patent that looks to be of concern during a freedom to operate exercise, think carefully about the actual future date that you will be wanting to launch. 

It may well be that you can wait it out a while before deciding whether to 'invent around' or develop an invalidity position for the patent.  (And, sure, if you have the funds now, then go ahead and develop an invalidity position as well - but that's not everyone at the moment...)

(Photo credit: Patrick Q)

Here are the slides from Duncan's presentation at Medical Devices Law & Policy Conference in Sydney, Australia.  (Click here or the 'download media' link to the right of this page.)

You can download and listen to a podcast of Duncan presenting this material in our podcast area.

Amongst other things, Duncan discusses:

• Whether medical devices are like pharmaceuticals when it comes to IP strategy;
• The downside of confining patents to being competitive weapons;
• The top things to consider in contentious IP Strategy;
• Using IP to add value;
• IP systems and processes; and
• Cross licensing.

Amongst other things, Duncan discusses:

• Whether medical devices are like pharmaceuticals when it comes to IP strategy;
• The downside of confining patents to being competitive weapons;
• The top things to consider in contentious IP Strategy;
• Using IP to add value;
• IP systems and processes; and
• Cross licensing.

You can obtain a copy of Duncan's slides for the talk from our articles area.

We hope you enjoy this week's show, and as always, we look forward to your comments and feedback.

Links to articles mentioned in the presentation:

• The '6 T's' - Analysing IP - put simply
• Relative cost and time to judgment in IP litigation - Value for money in global patent litigation
• IP Strategy and the Art of War (I) - External Advisors - http://www.iam-magazine.com
• IP Strategy and the Art of War (II) - In House Team - (soon to be published)

Last week Australia's Highest Court delivered a rare unanimous (6-0) decision in a long running legal battle between IceTV and Australian broadcaster Channel 9.  The decision permits IceTV to continue publishing electronic TV program guides incorporating Channel 9’s programming information.  Channel 9 had previously been successful in arguing that IceTV had infringed copyright by taking time, date and title information from its official program guide, notwithstanding that the information was merely factual.

It’s now clear that the Australian Courts have cooled on following a UK style “sweat of the brow” approach to identifying originality.  Notwithstanding that there was some effort involved in producing Channel 9’s guide, the elements copied by IceTV were not sufficiently “original” such that they could be said to constitute a material part of the copyright work.  This obviously has significant implications for other works which are labour intensive to create, but of themselves, do not contain significant original information.  (Note that Australia does not have an EU style protection of databases).

While the US takes a similar approach to identifying “originality”, the decision has caused us to wonder whether Channel 9 would have been successful under a US style “hot news” misappropriation.  Misappropriation is not copyright based, but rather based on one party “free-riding” the efforts of another.  Misappropriation has much less emphasis on originality and more on timeliness, competition and incentive.  TV guide information certainly satisfies the first four elements:

1.    It’s generated at a cost;
2.    The information is time sensitive;
3.    Use of the information would constitute a “free-ride”; and
4.    Use would be in direct competition with the original product.

However the fifth element – that permitting the “free ride” to occur would reduce the incentive of the originator – might be difficult to establish directly.  Presumably Channel 9 has two concerns – protecting revenue from licensing the TV guide and, perhaps more importantly, the potential for end users to skip advertising content when using an electronic guide together with computer based recording solution.  

Would allowing IceTV to continue reduce the incentive for Channel 9 to continue producing the guide?  Or is the incentive less about the TV guide and more about the advertising supported broadcast business model?

(Photo Credit: TheCureMX)