IP Recap #17

November 2, 2016


An Ever Changing Litigation Landscape

Can we expect an NPE migration?

NPEs finding new home in asia

IP News Patent Assertion entities NPEs looking for success in Asian IP market

The Story

The European Commission recently published a study on Patent Assertion entities within Europe, which was looking at the impact of PAEs in the region and can be considered a complementary study to the FTC’s recent publication looking at PAEs in the US. Interestingly, they conclude that Europe is far from an ideal environment for NPEs, with relatively low costs for discovery and the winner being able to claim fees, there isn’t the same cost-driven attraction towards quick licenses to avoid litigation expenses. Effectively, these reduced fees increase the quality required for filing cases, and if these advantages carry over in the Unitary Patent system then the regime could prove to be extremely attractive for defendants.

Why it’s interesting

At the same time, Siemens recently sold a large portfolio to Marathon Patent Group, containing over 200 telecoms patents and 86 IOT patents. In his statement after the deal, Marathon’s CEO implied that one of the major attractions of the deal was the large number of Asian patents that were included, which suggests that with the Unitary Patent facing a hurdle due to Brexit, and the US introducing measures in an attempt to reduce NPE activity, the Asian markets could prove to be an important lifeline for patent assertion.

Efficient Infringement

Is that a nice name for theft?


The Story

IPWatchdog recently posted an interesting take on large businesses operating in a somewhat crowded IP space. In short, a business may choose to “efficiently infringe”, whereby a major operating company can take a somewhat cold-hearted view of rival IP. The suggestion is that a company could deliberately copy existing IP owned by small, litigation-shy entities such as universities, who may struggle to find the funds for a litigation campaign and might be wary of the subsequent “troll” accusations that may damage their reputation. They suggest that companies can calculate the probability of litigation coming their way, and choose to deliberately infringe under the right combination of risk and return. As a defendant, the thief can use certain tools to their advantage should the IP owner challenge them, with IPR petitions delaying proceedings, legislative measures such as HR9 that can protect shareholders from damages.

Why it’s interesting

The IPWatchdog article definitely makes a compelling case, which shows why many universities make use of PAEs to help protect their IP from such occurrences but leads us to the next story…

A Dive Into IV’s Portfolio

Looks like they own a good bit of innovation developed by universities

The Story

IPFrontline recently posted an article looking at Harvard researcher Yarden Katz’s analysis of IV’s portfolio. Their portfolio is notoriously difficult to mine, as the patents are hidden in over 2000 subsidiaries, which they have not publically declared. They do however, have a published list of some 30,000 of their patents on their website. The study looked at the original assignees of these 30k patents and found that approximately 500 of them came from universities. As for the remaining patents, these are likely from operating companies that have sold patents to IV, as well as a number of self-filed assets, which shows that the patents from universities are just a drop in IV’s ocean.

Why it’s interesting

Universities have been asked to pledge not to sell or license to NPEs or trolls. Some 100 universities have agreed to a specific set of principles regarding academic IP practices. Somewhat controversially some of the universities who have sold patents to IV had signed an agreement in 2007 aimed at preventing university IP from ending up in the hands of PAEs. Their patents were sold to IV in 2010.


ClearViewIP and PatSnap webinar

PatSnap Webinar

IP considerations and due diligence when investing in start-ups

In partnership with PatSnap, ClearView IP will be participating in a webinar on the IP due diligence best practices investors should consider when investing in a startup.

About this webinar

Prior to making an investment in a start-up, investors look to ensure that the team, product, and market aspects are all strong. They then carry out due diligence to expose and plan for potential risks. These usually include financial and legal risks, but more and more investors are focusing on IP too.
PatSnap will be teaming up with Jon Calvert, Managing Director at ClearView IP, to discuss what aspects should be considered when beginning due diligence and how a rigorous approach can secure a greater likelihood of realising substantial investment returns.
In this webinar we will explore:
  • What kind of IP does a startup actually have?
  • How do I know if the IP position is strong?
  • What kind of things should be on my IP due diligence checklist?
  • How can I put a financial value on the IP?

Register Here

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