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LICENSING EXECUTIVES SOCIETYBritain and IrelandNEWS EXCHANGE
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Trademark agents to finally win the right to fight?ITMA's applicationITMA, the Institute of Trademark Attorneys, which governs the trademark profession, expects to hear shortly that they have finally won the right to grant their members litigation certificates which will give wider choice to those involved in contentious trademark and design matters. To date, only the supervisory bodies for legal executives and patent agents have been allowed to award such certificates. As such, litigation over trademarks and designs has, to date, remained the sole domain of solicitors and barristers. Whilst trademark agents could advise clients on such matters, they could not instruct counsel to act or take part in the litigation process directly themselves. Appeals from decisions of the Registrar to the High Court necessitated the appointment of a solicitor, even where a trademark agent had until then been responsible for preparing and arguing the case. ITMA applied in April 2001 for authorised body status. In June 2002, the Director General of Fair Trading reported on the likely effects on competition if the application were successful. The report concluded that "the designation of ITMA as an authorised body may increase competition in the provision of litigation and advocacy services associated with trademark and design proceedings." It further identified the benefits of opening up the supply of legal services in this way as an increase in the choice of service providers and the chance that costs may be reduced. Litigation certificates The process has been slow and laborious but the approval should finally be achieved in the next couple of months, when ITMA can then start to grant its 'litigation certificates'. These will permit the holder to conduct litigation and appeals in the Chancery Division of the High Court and the Patents County Court over any matter:
A litigation certificate will also grant the agent the right of audience for: Controls ITMA has already established a Trademark and Design Litigators Accrediting Board, which will validate the courses attended by those applying for a litigation certificate, as well as making the decisions on whether to grant the certificates themselves. Grantees of the certificates will be subject to strict rules of conduct, including an absolute obligation not to act in situations of potential conflict or for objectionable clients. A solicitor's view As a solicitor, one might expect a degree of scepticism or annoyance at what some may see as 'muscling in' on our territory. However, as a child of the 80s I was bombarded with the message that allowing market forces a free rein was a good thing for competition and business. Whilst I may not agree with a lot of the politics of that era, this is one which I do endorse. Many solicitors now have their own trademark filing service which competes directly with the agents - in fact I myself set up and now manage Shoosmiths' in house trademark practice and am a part qualified agent. We win clients by offering something better than their agent does - whether that's more commercial advice, a better deal on fees or the ability to buy all of their legal services from one provider. Litigation is a classic example of where we currently have the upper hand. Clients who have an agent looking after their portfolio will find themselves having to go to a solicitor if they need to sue for infringement, even though the agent may have a much better understanding of how the mark was developed and how the application for registration was prosecuted. Where we look after portfolios, we can subsequently act on infringement matters as well, without ever having to concern ourselves over the right to do so. If ITMA becomes an authorised body and the healthy competition predicted by the OFT ensues, this can only be a good thing for brand and design owners. Agents will still need to work hard to persuade them that they are as good if not better than a solicitor for contentious matters and solicitors will need to tighten up their act if they are to keep their hold over this area. In addition, an increase in choice, whilst unlikely to bring about a market wide reduction in fees, should give clients greater bargaining power on this front for individual cases. Conclusion I believe that a cautious welcome should be afforded to ITMA's ability to grant litigation certificates as and when their application is granted. Although this will introduce more competition for myself and my solicitor contemporaries, we have to recognise that agents should be able to compete on a level playing field. Provided that those involved, whether they be an agent with a litigation certificate or a solicitor acting as a trademark agent, are suitably qualified and competent, it is then down to each to hone their skills and offer a service of such calibre that clients come to them for that reason rather than because one is restricted by what it can do.
Tracey Huxley Top President's Diary
This is my last President's Report; at the AGM in Bristol I will hand over the President's position to Stephen Powell who will lead LES B&I for the next two years. I am also pleased to announce that Martin Sandford will take over as Vice President. I wish them both every success and hope that they enjoy their time in these positions on behalf of LES.
I wish to thank all of our members and our Council, in fact everyone who has helped in the running of LES over the last two years. During my time as President, we have introduced many changes and it's always difficult to know exactly how beneficial these will be to the membership. It is easier not to make changes but in this case the majority of LES Council members and I decided that they were needed and, following on from the excellent changes introduced by Chris Goodman during his time as President, we decided to forge ahead. I thank all of the membership for your patience and support through these changes and urge you all, please, to let me or Stephen Powell know if you believe that further changes are required now and in the future. This is your Society and it must move forward, catering to the needs of the membership and providing you with the help that you need in your licensing activity and networking ability. We also very much need greater participation from you within the Committees and Specialist Interest Groups. If you think that you would like to be more involved in LES activities, or if you have skills that would be useful to the membership and can spend a little time participating in LES, please contact the Committee chair directly. It really is essential that we have new people and fresh ideas to carry the Society forward. I must make a plea to all the wealthy companies out there - we are looking for various forms of sponsorship for the Annual Conference and we are looking for companies to take up exhibition stands at the tech fair to be run in parallel to the Annual Conference. If you would like further details regarding these activities, please contact Stephen Potter or me- see contact details below*. Last month, a number of us attended the LESI meetings in Paris and had a wonderful time. The sun shone and the wine flowed while the conference sessions and networking activities took place. The next LESI Conference will take place in Boston this autumn. For full details please visit www.lesi.org - these meetings are normally wonderful networking forums and also provide great licensing information and inspiration. The LESI President next year will be Willy Manfroy and we are delighted that Willy has agreed to attend our Annual Conference in Bristol and will deliver one of the opening talks at the conference. I am also happy to tell you that our Honorary President, The Right Honorable Lord Justice Jacob, has agreed to join us for the Annual Conference dinner on board the SS Great Britain where the post dinner talk will be delivered by Adam Hart Davis. The Bristol AGM will also be a time for change and, sadly, we have two members of council who will be retiring this year: on behalf of all LES members I thank Christopher Hyatt and Michael Connor for their valued service to LES. For those of you that are able to attend, I look forward to seeing you again in Bristol. Christi Mitchell,
Contact details: LICENSING ESSENTIAL PATENTS - WHAT'S DIFFERENT?Generally speaking, a patent owner can grant a license of his patent on whatever terms he pleases. He can refuse to license; he can extract whatever remuneration the licensee will withstand; other licence provisions can be presented on a 'take it or leave it' basis. Equally, a company can refuse to take a licence of a patent if they feel the terms are unpalatable - it may cost them a business opportunity, but in many cases it won't cost them their whole business. This situation is turned on its head when the world of essential patents is entered.Where do you get essential patents? Essential patents occur in industries where there is a high degree of technical standardisation. Standardisation achieves not only predictable quality, but also interoperability, as equipment manufactured to a particular standard will work with other equipment manufactured to the same standard. The importance of interoperability increases as international trade increases and customers demand compatible products. Examples:
What is an essential patent? In short, an essential patent is one that is 'essential' to the implementation of a particular standard. It must be impossible on technical grounds to work around the patent when implementing the standard - in other words, by implementing the standard, you necessarily infringe the patent. Different standards bodies sometimes have slightly differing definitions of what an essential patent is, but the basics remain the same. Licensing of essential patents and the role of standards bodies Obviously, if a company wishes to be a player in a standardised industry, such as wireless telecoms, it will be developing technology that necessarily implements the standard and thus the patents essential to the standard. It can immediately be seen that if an essential patent owner is able to behave as traditional patent owners behave, entry into the industry will be blocked and competition will be stifled. In addition, the standardisation process itself may be adversely affected if owners of essential patents refuse to cooperate. To avoid this, many standardised industries operate a patent pooling mechanism, which enables entry to the industry - often administered by the body, which administers the standard. Again, the details will vary from body to body, but there are some common principles - in particular, the obligation on essential patent owners to make the patents available on fair, reasonable (and sometimes non-discriminatory) terms. To take ETSI as an example:
Practical considerations Obtaining a licence to an essential patent on terms which are fair, reasonable and non-discriminatory sounds like a solution to the problem of unavoidable infringement of the essential patents. However, in practice there can be a number of pitfalls to trap the unwary. Here are a few of them: Royalties on essential patents pose a number of issues. A royalty rate of 5% of net sales value, or which gives the licensor 25% of the licensee's profit - which in many cases would seem to be quite reasonable - may fall foul of the obligation to be FRAND. If a licensee requires four or five essential patent licences, it will become financially crippling to agree to a 5% royalty for each patent. Essential patent owners thus find themselves having to be more generous in their licensing terms than would be the case if they owned non-essential patents. Another problem occurs where a manufacturer of standardised technology is too high in the supply chain to get an essential patent licence. For example, a company may develop software, which is then licensed to a chip manufacturer, who then sells on the chips to a consumer device manufacturer. In each case down the chain, some essential patents may be implemented. But from the essential patent owner's perspective, the target for the licence will be the consumer device manufacturer, as the potential royalties are much greater. Thus, the essential patent owner may not be willing to grant a licence to the software developer at the top of the supply chain, as it will be fearful of exhausting its licensing rights. However, this puts the software developer in the position of a technical infringer - even though the essential patent owner may have no intention of taking action against it. Therefore, suppliers at the top of the food chain should do their best to avoid any warranty or indemnity obligations, which relate to the infringement by the supplier's products of third party essential patents. Further, essential patent licences usually contain cross-licensing provisions, whereby the licensee undertakes to license to the licensor any patents (whether essential or not) obtained by the licensee, which are relevant to the technology in question. This, of itself, is not necessarily problematic; however, ancillary provisions, such as non-assignment clauses, may be. This author has seen at least one essential patent licence which contained a prohibition on the assignment by the licensee of "any right, obligation or interest" under the agreement. The licensee was advised by Counsel that this prohibition could extend to an assignment by the licensee of its own patents, which were cross-licensed under the agreement; not a result it had envisaged. Conclusions If a company plans to be involved in a standardised industry, it - and its legal advisers - should be aware of the particular considerations which apply to patents essential to the particular standard. Time, opportunities, goodwill and money can be wasted by a failure to understand the issues. Links: www.etsi.org, www.jedec.org, www.ieee.org
Georgina Godby |
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Controlling Information Assets - The QinetiQ ApproachInformation, such as draft patent specifications, details of mergers and acquisitions and internally prepared competitor analysis information, is the most valuable asset held by any organisation. The inappropriate release of material can have a widespread damaging effect, ranging from a company losing its competitive edge, to plummeting share value.Much press attention is given to the threat posed by outsiders, for example, the recent effects of the Sasser Worm gained widespread coverage. However, the inappropriate release of information by authorised users, whether deliberately or by accident, generally only gains attention when it relates to national security. This makes it difficult for an organisation to quantify the risks, but the fact that there are numerous published examples indicates the problem is all too common. The widespread use of functionally rich document preparation tools, coupled with the prodigious use of the Internet by all members of every organisation on a daily basis, makes the task of controlling information an onerous one. Many accidental releases are directly attributable to the sophistication of modern document preparation tools, such as Microsoft Office™. The ever-growing list of features broadens the market appeal of the product, whilst increasing the risk of material being overlooked in the review process, prior to the distribution of the document by electronic means. Collaborative document preparation easily leads to accidental release of sensitive information. Even if all employees in an organisation use the same corporately approved tools, they do not necessarily use the same set of complex features. Accidents happen when one employee uses a feature that stores information in a document in a way that is not visible to an employee who does not use the feature. For instance, the versioning feature offered by Word allows for full document preparation cycles to be reflected in the document contents (thus, a single file can contain all versions, including drafts). Unfortunately, when a final review is to be conducted prior to publication of the document, it is all too easy to overlook previous versions contained in the file. Another example is the speaker notes that can be attached to a presentation. A presentation is often created by editing and amending an existing one, but reviewers often only look at the presentation's slides. In this way the sensitive notes of one presentation can be released with the slides of another. Once the review process has been completed, electronic documents can be released in a number of ways, such as sending as attachments to an email message, posting to a web site, copying to a shared filestore or copying to removable media, like USB memory sticks. There is more potential for mistakes at this point. For example, the user might select an address book entry for a person with the same name as the intended recipient. Email is particularly prone to these kinds of mistakes. Distribution lists, which offer a valuable way of quickly sending material to a group of people, bring yet more opportunities for error, as distribution lists are generally maintained by one person and used by others. Only a very thorough person would search through a distribution list on each use to confirm that all users listed should be recipients. These problems have long been recognised, but not a great deal is available to provide a defence. Microsoft obviously appreciates the concerns and has provided a tool for removing information hidden in the more common places within Office documents. Microsoft's Information Rights Management features, recently introduced into Office, also help by preventing any damage should a document be misplaced. QinetiQ have developed a package, SyBard::Suite®, which provides the user with the means of viewing and changing metadata associated with documents. This metadata can be used to indicate the document's sensitivity, value or distribution restrictions. SyBard then controls the distribution of documents on the basis of these values. To counter the problem of users selecting the wrong document, the package allows the user to be shown a summary of the document's contents prior to its release. This counters simple mistakes such as the intended release of a single page memo, mistakenly resulting in the release of a 100 page document. It also includes a means of checking that the contents of documents conform to certain rules and, in many instances, for automatically modifying the documents so that they do conform. The checks can ensure documents being distributed do not contain information that might have been overlooked, for example, deleted text that remains in a document after editing. They can also ensure that an attacker who has penetrated external defences cannot hide sensitive information in documents that are otherwise fit for release. It is also possible to detect offensive material deliberately placed by users in the documents that they distribute. For actions deemed business critical, an optional sanction mechanism is included. This ensures that a user explicitly approves the release of documents. The dialog is secured so that an attacker cannot spoof the user's input. A log is maintained so that a complete record of all critical events is kept, such as releasing a document, which can be used to immediately see who has done what. This acts as a deterrent and allows an organisation to ascertain the extent of damage caused by any incident.
The screen shot below illustrates the SyBard features in action. In summary, there are many ways in which information can be accidentally released and, unfortunately, it is no longer true that what you see is what you send.
Sharon Lewis Top Put Up Or Shut Up: U.S. Court Rules Licensees Can't Challenge Licensor's Patent Whilst Preserving Rights Under License To ItNot all patent licensees are willing licensees. Some would probably prefer not to enter into a license with a patentee at all. Others - once they have entered into such a license - may wish to escape, or lessen, the obligations it places upon them. Sometimes, the reasons for such reluctance to enter into, or stay in, a license relationship involve not only simple distaste for spending money, but a conviction on the part of the licensee that the licensed, patented technology does not justify the royalty called for by the license agreement. One reason that licensees often come to think a royalty obligation is excessive, is their belief that the licensed patent is either invalid, or not substantially infringed by licensee's products or activities.At least in the United States, federal law offers a remedy for a licensee (or other party) confronted by a patent that he believes cannot validly extend so as to cover his accused technology. The Declaratory Judgment Act permits a party to seek a declaration of rights when he has a reasonable apprehension of litigation, and specifically permits a potential litigation defendant to seek such relief even before the initiation of suit by the would-be plaintiff. 28 U.S.C. § 2201(a). The Declaratory Judgment Act applies in patent cases. It has provided a useful tool by which accused infringers, or parties told that they need to license a patent, can seek a determination on their defenses of non-infringement or invalidity of the accuser's patent without waiting for the accuser to file suit. In addition to the resolution of uncertainty that the Act can provide to an accused infringer who has not yet been sued, by becoming a 'declaratory plaintiff', such an accused party can often obtain tactical advantages in litigation (such as the ability to choose the forum in which the merits of infringement and validity will be tried, rather than waiting for patentee to sue in a forum favorable to him). There are limits, though, on the circumstances under which a party can challenge the validity or infringement of a U.S. patent under the Declaratory Judgment Act. These limits arise from the provisions of the U.S. Constitution limiting the adjudicative power of the federal judiciary to the resolution of "cases or controversies." U.S. Const. Art. III. A recent decision of the U.S. Court of Appeals for the Federal Circuit has enunciated limitations that this "case or controversy" doctrine places on the ability of existing patent licensees to use declaratory judgment actions tactically to challenge their licensor's patent whilst still attempting to mitigate the risk from such a challenge. In Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004), declaratory plaintiff Gen-Probe entered into a license for patentee Vysis's U.S. Patent No. 5,750,338 (the '338 Patent) and other patents, all covering DNA-based blood assays, in June 1999, in an effort to settle unrelated patent litigation. Under the license, Gen-Probe was to make a one-time, upfront payment of USD$1.5 million to Vysis, as well as paying a running royalty of 3% on sales of Gen-Probe's assay kits. Id. at 1377-78. But by December 1999, Gen-Probe had decided to challenge the '338 Patent as invalid and not infringed by Gen-Probe's blood assay kits. It brought a declaratory judgment action seeking such a determination. At the same time, however, Gen-Probe wrote to Vysis informing it that although Gen-Probe deemed its obligations under the license void in view of the invalidity and non-infringement declaratory counts that Gen-Probe was asserting, "to preserve the status quo pending resolution of the litigation" Gen-Probe would nonetheless continue paying all royalties called for by the license - as it, in fact, proceeded to do throughout the litigation. Id. at 1379. The Federal Circuit found (reversing the trial court's decision) that Gen-Probe's declaratory action should have been dismissed based on Gen-Probe's attempt to "hedge its bet." Id. at 1378. The legal basis for the court's ruling was that Gen-Probe's continued payment of all royalty obligations meant that there was no "case or controversy." The court framed the case or controversy requirement for patent cases as follows: "There must be both (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit, and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity." Id. at 1380 (internal citations omitted). The court found both factors lacking as to Gen-Probe. First, though Vysis had, before entering the license with Gen-Probe, intimated that Gen-Probe might face liability under the '338 Patent, the parties' eventual agreement to the license eliminated any "threat" implicit in these communications. Second, Gen-Probe's sale of its assay kits could not give rise to infringement so long as it was fully paying its agreed-upon royalty, notwithstanding its designation of the payment as "under protest." Id. at 1380-82. It was also not lost on the court that Gen-Probe's "hedging" approach was, to all appearances, intended to gain all the possible benefits of a successful declaratory action invalidating or otherwise impairing Vysis's '338 Patent, whilst not risking that Gen-Probe would ever find itself worse off, given that it purported to maintain its licensed use of the Vysis technology under the original terms of the license. Such a hedge seems unfair because in most instances, a patentee who withstands an invalidity or non-infringement challenges may demand, and receive, more onerous license terms (including against a previous licensee who breached the license to provoke a declaratory judgment controversy) once patentee's patent has been bolstered by successful litigation. Id. at 1382. Thus, a prospective or current licensee who wishes to challenge a patentee's U.S. patent(s) under the declaratory judgment statute must establish a case or controversy by showing himself to be (or placing himself) at risk of suit under the patent. Refusing, or clearly breaching, a license agreement achieves this end but - according to the Federal Circuit - maintaining the license and royalty in force but paying it "under protest" does not.
By Jeffrey D. Sullivan Top News from the RegionsScotland RegionThe last meeting for LES Scotland this summer will take place in The Atheneum, Nelson Mandela Place, Glasgow on Thursday 20th May, sadly at a time which will be just too early for you to attend when you read about it in News Exchange and also just too late to report on its great success!To give members a taste of what they will be missing, the meeting, entitled "Shining the Light", will feature two comparatively little known projects: Technology Transfer in the DTI Beacon Projects and Partnership Sourcing Limited (PSL). We will hear about the objectives, successes and challenges of these projects and, importantly, about the role of the technology transfer in achieving the projects' objectives - that is, the industrial and commercial applicability of high-risk research and improved partnerships by British businesses. As some of you may know, the Beacon Projects are UK-wide, interdisciplinary, high-risk university-based research projects. Each combines cutting-edge science with the delivery of benefits to industry. The DTI support is innovative and not just grant-based; some have even said that the Beacons "challenge the traditional models of research funding and technology transfer". PSL (Partnership Sourcing Ltd.) is perhaps even less well known. It was established by the CBI and DTI in 1990 to promote partnering in business. As many of us in the LES know, partnerships can make both parties more profitable, innovative and competitive. PSL seeks to harness this knowledge to help organisations put partnering into practice. How are they getting on in this role? This is your chance to find out - and comment! The next meeting for LES Scotland Region will be in the autumn. We encourage any LES members, colleagues and friends visiting Scotland to come along to our meetings. Irish SectionTuesday, April 20th saw the first event of the LES Irish Section 2004 program. An afternoon seminar entitled " The Academy in Buisiness - Reconciling the interests of researchers, funders and business to get results" was well attended by both LES members and non-members.The Irish Government has dedicated significant resources to building scientific excellence in Ireland to generate a knowledge-based economy, and the speakers brought different perspectives to address the issues concerning research in academic institutions. Alistair Glass, formerly of Bell Labs, and now a Director of Science Foundation Ireland, described his experiences in Bell Labs and the impact they had on the Irish economy. Gabriel Crean, a Director of the National Microelectronics Centre (NMRC) and also a founder of a number of start-up campus companies, was able to enlighten the audience as to the issues from an Irish academic's perspective. The global similarities between this perspective and that of a US Academic Institution were apparent when Jon Soderstom, who is Head of the Technology Management office at Yale and Vice President for Public Affairs for AUTM (the Association of University Technology Managers in the US), talked about his experiences in the US. We then heard what a VC is looking for when examining university-originating research, from Dennis Jennings of the 4th Level Venture Capital Fund. Finally, Henry Connor, LES B&I Council member, spoke about how to spot the commercial opportunity and maximise the potential of technology without miring the deal in protracted negotiations. A full afternoon concluded with an interactive Q&A with the audience and then further discussions followed, albeit more informally, over a glass of wine. A very enlightening and provocative debate ensued! Many thanks to all speakers for sharing their experiences with us and also thanks to Yvonne McNamara for so ably organising the event. Our next outing is the Annual Dinner in Brunos Kildare Street on Thursday, June 3rd. All are welcome and further information may be obtained from Maureen Daly, the LES Irish Section Secretary (mdaly@algoodbody.ie). Barry Moore People News - Ireland Top Two long serving Council members to step downChristopher Hyatt steps down from LES Council after 15 years service.We were very sorry to hear that Christopher has decided to step down from Council after some 15 years, for twelve of which he was Honorary Treasurer. Christopher joined LES in 1987 when he was working as a "ferret" for the now defunct Defence Technology Enterprises, and since then he has worked largely in the university technology transfer field, both employed and as an independent consultant. Until November last year, he was with SR Pharma, a spin-out company from UCL. He has been a strong supporter of LES, and of Council in particular, and has recently exercised tight financial control of the annual conferences and the annual lunch. He has also contributed presentations to the conferences, and helped with the selection of speakers. His longevity on Council has been instrumental, on a number of occasions, in avoiding "re-inventing the wheel". We will miss his contribution greatly. He is currently embarking on a new venture with a start-up company in the security and surveillance field. Watch this space. Renate Siebrasse **** Michael Connor, Past President of LES B&I Michael Connor, one of the longest serving members of LES Britain & Ireland Council and a past president has, unexpectedly, announced his intention to step down. His background as a patent attorney and founder of BT's commercially motivated patent and licensing department brought valued skills and professional influence to LES. He has long been active both within the Society, and also in its dealings with external bodies. This has involved activities such as working with the UK Patent Office on the licensing module of their innovative disk-based IP training course, and organising LES licensing courses long before this became popular at international level. Michael has had the ability and interest actually to do things relevant to licensing and to make his views in this area known. The vitality of LES is crucially dependent on such people; and there aren't too many of them around. His presence on Council will be missed. We are all grateful for all the work he has done for the Society. Hopefully his interest in licensing, his presence at LES meetings and contributions to News Exchange will long continue. Top In One Place, At One Time, Ready To DealAt the 2004 Annual LES Britain and Ireland Meeting in Bristol, you'll connect with licensing and business development executives who are looking for innovative technology services and solutions to meet their needs. The LES Annual Meeting assembles a broad range of international industry, university, and government decision makers who are seeking to combine resources and collaborate with other organisations to make the most of their investment in intellectual assets.Your organisation needs to be there! When all those prospective customers attend the LES Annual Meeting, they'll be looking for new technologies and services for these industry sectors:
Why should you exhibit at the Annual Meeting?
LES members count on the Annual Meeting creating some of their best business opportunities. Reserve your space today
Contact the LES Administration Office.
For any supplementary information contact: Top New MembersCouncil has been please to welcome the following new members to the Society:
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