Transcript Document

TECHNOLOGY LICENSING TODAY
Karl F. Jorda
David Rines Professor of Intellectual Property Law & Industrial Innovation
Director, Kenneth J. Germeshausen Center for the Law of Innovation & Entrepreneurship
Franklin Pierce Law Center
Two White Street, Concord, NH 03301 USA
CLE PROGRAM
New York County Lawyers’ Association
New York City
April 23, 2007
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TECHNOLOGY LICENSING TODAY
I. Introduction
A.
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“Golden Age” for IPRs
Patent filings and issuances are skyrocketing
Talk of patent “revolution,” “explosion,” “frenzy”
Anything under the sun that is made by man” is patentable
Courts, Congress, Justice Department — pro IPRs
Corporations built on patented technologies
Motto: Innovate or perish
Value of IPRs for securing exclusivity — simply invaluable
Royalties for licensing IPRs in 2002: $150 billion
Over $1 billion for some companies
Universities jumped on bandwagon
Getting patents, concluding licenses, collecting royalties
Ronald Myrick, formerly of General Electric, put it this way: “The attraction
of IP is simple; it’s at the forefront of the technology that’s driving the
world and IP is one of the unique entities in the law where you’re
actually creating assets.”
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B. Similar Developments Abroad
India of all places is the best example.
There has been a sea change in how IP is viewed in India.
In the North/South debates, India had spearheaded the opposition to patents, proclaiming
that technology was the “common heritage of mankind” and should therefore be made
available for free.
Back in 1992, when I attended a WIPO program at the University in Delhi, I was crucified
for the pro-patent views I expressed.
A few years ago when I attended a WIPO International Conference in Delhi it came as a
great surprise to me that they had turned decisively pro-patent.
They were singing a different tune now that “IP is available in abundance in India”:
• IP is being taught in “all academic schools” under government sponsorship,
• IP institutes are springing up all over,
• the Chamber of Commerce is promulgating the slogan “Patent or Perish,”
• the phrases “IP literacy” and “IP awareness” have become buzzwords and
• they are trying to “bring IP from a legalistic ivory tower down to the common man.”
What an about-face!
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C. Licensing – A New Ball Game
We have a new ball game in the field of technology licensing and technology transfer.
Years ago there was little or none.
All product innovation had to be home-grown. NIH factor played a role.
There is often an innate reluctance to license because
• it is more profitable to self-commercialize than to license out.
• There is risk that licensing will set up a competitor.
Westinghouse, DuPont, Ciba-Geigy didn’t license.
Ciba-Geigy scuttled projects and did not even inquire about availability of a license.
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Licensing – A New Ball Game (continued)
Nowadays no longer simple, straight-forward plain-vanilla licenses.
Instead,
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complex and sophisticated hybrid agreements,
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option/license agreements,
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cross-licenses,
joint
venture,
corporate
arrangements,
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strategic alliances and consortium licensing.
partnering,
co-promotion
or
co-marketing
Other very significant developments and trends in
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licensing attitudes and practices (win-win),
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IP valuation and royalty setting (other quid pro quos).
Entirely different antitrust climate: restrictions commonly found in license agreements are viewed as procompetitive and IP is considered property rather than a monopoly.
Licensing, technology transfers and investments are ever so much easier to carry out via patents and
other IPRs as vehicles or bases.
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II. Integration Strategy for IPRs
From former fragmentation by specialties, IPRs are now a “seamless web,” due to
progress in technology and commerce, per Professor Jay Dratler.
Professor Dratler was the first one to “tie all the fields of IP together.” “Integrative
treatment.” (Intellectual Property Law: Commercial, Creative, and Industrial – 1991)
In 1997 the authors of “Intellectual Property in the New Technological Age” (Professors
Merges, Merrell, Lemly & Jorde) also
• avoid the fragmented coverage
• approach IP as a unified whole; and
• concentrate on the interaction between different types of IPRs.
Thus we now have a unified theory in the IP world, a single field of law with subsets and
significant overlap between IP fields. Several IPRs are available for the same IP or
different aspects of the same IP for dual or multiple protection. Not taking advantage of
the overlap misses opportunities or, worse, amounts to malpractice.
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Integration Strategy for IPRs (continued)
One IPR category is center of gravity and more important—most often patents
Other IPR categories are then supplementary but very valuable to
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cover additional subject matter
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strengthen exclusivity
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invoke additional remedies
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standup if primary IPR becomes invalid
and thus provide synergy and optimize legal protection.
Multiple forms of protection are especially important in the fields of biotechnology and computer.
The most important strategy is exploiting the overlap between patents and trade secrets.
Illustrative examples are:
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GE’s industrial diamond process technology
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Wyeth’s Premarin process
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Pizza Hut decision
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Multiple Protection in Biotech
Protection for a diagnostic kit involving
monoclonal antibodies:
• Product patent on the test kit
• Process patent on the preparation of the
antibodies
• Copyright for test kit’s instructions
• Trademark
• Trade secrecy for production know-how
• Trade secrecy for collateral know-how
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Multiple Protection for Computers
A data processing system can involve:
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patented hardware and software
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patented computer architecture on circuit designs
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patented business methods
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trade secret production processes
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trade secrecy for collateral know-how
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copyrighted microcode
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copyrighted operating system
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copyrighted instruction manual
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semiconductor chips protected as mask works
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consoles or keyboards protected by design patents
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or as trade dress under trademark principles
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trademark registration
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IP Integration Concepts
EXPLOIT THE OVERLAP
DEVELOP A FALL BACK POSITION
CREATE A WEB OF RIGHTS
BUILD AN IP ESTATE
BUILD A WALL
BUILD A RINGFENCE (India)
OVERPROTECT
LAY A MINEFIELD
for
SYNERGISTIC EFFECT
via
DUAL OR MULTIPLE PROTECTION
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III. The Role Of Trade Secrets In Licensing
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In our knowledge-based high-tech era it is important to exploit the overlap
between IP categories for dual or multiple protection.
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This is true especially between patents and trade secrets.
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Patents and trade secrets are not incompatible but dovetail: the latter can
protect volumes of collateral know-how.
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This results in synergistic integration and secures invulnerable exclusivity.
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Most technology licenses are hybrid licenses covering patents and trade
secrets.
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Licenses under patents without access to collateral know-how are
insufficient for commercial use of patented technology.
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A.
Trade Secret Primer
INTELLECTUAL PROPERTY (IP)
&
IP RIGHTS (IPR)
IP
IPR
Invention
Patent, Trade Secret
Know-how, Invention Trade Secret
Brand name
Trademark
Work of Authorship
Copyright
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Patents
Personal Skill
Generally Known
Trade Secrets
Technical
Information
Business
Information
Readily Ascertainable
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HISTORY OF TRADE SECRETS
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"Trade Secret law is the oldest form of intellectual property protection, "
according to Perritt. (Cave people?!)
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Back in Roman times, the law afforded relief against a person who induced
another’s employee (slave) to divulge secrets relating to the master’s
commercial affairs.
Trade secrecy was practiced extensively in the European guilds in the Middle
Ages and beyond.
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Modern law evolved in England in early 19th century — in response to the
growing accumulation of technology and know-how and the increased mobility of
employees.
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Recognized in U.S. by middle of 19th century, Peabody v. Norfolk (1868) held
that a secret manufacturing process is property, protectable against
misappropriation; secrecy obligation for an employee outlasts term of
employment; a trade secret can be disclosed confidentially to others who need
to practice it and a recipient can be enjoined from using a misappropriated trade
secret.
•
By the end of the 19th century the principal features of contemporary law were
well established.
•
1939 the Restatement of Torts attempted to “codify” it.
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DEFINITION OF “TRADE SECRET”
1. A trade secret may consist of any formula, pattern, device or compilation of information which
is used in one’s business, and which gives him an opportunity to obtain an advantage over
competitors who do not know or use it. It may be a formula for a chemical compound, a
process of manufacturing, treating or preserving materials, a pattern for a machine or other
device, or a list of customers.
(Restatement of Torts, § 757 comment b (1939))
2. A trade secret is any information, including a formula, pattern, compilation, device, method,
technique, or process, that:
(i) derives independent economic value, actual or potential, from not being generally known
to, and not being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and
(ii) is the subject of efforts that are reasonable under the circumstances to maintain its
secrecy.
(Unif. Trade Secrets Act § l(4), 14 U.L.A. 372 (1985 & Supp. 1989)
3. A trade secret is any information that can be used in the operation of a business or other
enterprise and that is sufficiently valuable and secret to afford an actual or potential
economic advantage over others.
(Restatement (Third) of Unfair Competition, § 39 (1995))
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TRADE SECRETS
The Restatement of Torts adopted and the courts relied on the following criteria
for determining whether a trade secret exists:
(1)
the extent to which the information is known outside of the business;
(2)
the extent to which it is known by employees and others involved in
the business;
(3)
the extent of measures taken to guard the secrecy of the information;
(4)
the value of the information to the business and to competitors;
(5)
the amount of effort or money expended in developing the information;
(6)
the ease or difficulty with which the information could be properly
acquired or duplicated by others.
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TRADE SECRET
ECONOMIC ESPIONAGE ACT (EEA) DEFINITION
The term “trade secret” means all forms and types of financial,
business, scientific, technical, economic, or engineering
information, including patterns, plans, compilations, program
devices, formulas, designs, prototypes, methods, techniques,
processes, procedures, programs, or codes, whether tangible or
intangible, and whether or how stored, compiled, memorialized
physically, electronically, graphically, photographically, or in writing
if —
A) the owner thereof has taken reasonable measures to
keep such information secret; and
(B) the information derives independent economic value, actual or
potential, from not being generally known to, and not being
readily ascertainable through proper means by, the public.
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TRIPS DEFINITION
Natural and legal persons shall have the possibility of preventing
information lawfully within their control from being disclosed to, acquired
by, or used by others without their consent in a manner contrary to honest
commercial practices so long as such information:
(a) Is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that
normally deal with the kinds of information in question;
(b) Has commercial value because it is secret; and
(c) Has been subject to reasonable steps under the circumstances,
but the person lawfully in control of the information, to keep it
secret.
(TRIPS Agreement, Part II, Sect. 7: Protection of Undisclosed Information,
Art. 39, Par. 2, 1994)
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DEFINITION OF KNOW-HOW
Know-how. The knowledge and skill required to do something
correctly. (Dictionary Definition)
Know-how. Information that enables one to accomplish a particular
task or to operate a particular device or process. (McCarthy’s Desk
Encyclopedia of Intellectual Property, Second Edition, p.236)
Know-how is knowledge and experience of a technical,
commercial, administrative, financial or other nature, which is
practically applicable in the operation of an enterprise or the
practice of a profession. (AIPPI Resolution – Mexico Congress –
1973)
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CHARACTERISTICS OF
TRADE SECRETS
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No registration requirement.
No subject matter or term limitation.
No tangibility requirement.
No strict novelty requirement.
Subject matter must not be generally known or available.
But secrecy is the most important criterion — a sine qua non.
There are no exceptions.
• Affirmative measures must be taken to safeguard a trade secret.
• Sufficient economic value or competitive advantage is also a
requisite.
• Proper criterion is not “actual use” but “of value to company”, i.e.
negative results can also give a competitive advantage.
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SAFEGUARDING TRADE
SECRETS
1. Memorialize the trade secret policy in writing
2. Inform employees of trade secrets
3. Have employees sign Employment Agreements with
confidentiality obligations
4. Conduct exit interviews
5. Restrict access to trade secrets (on need-to-know basis)
6. Lock gates and cabinets
7. Label trade secret documents
8. Restrict public accessibility
9. Screen speeches and publications
10. Use contracts in dealing with third parties
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MISAPPROPRIATION OF
TRADE SECRETS
1. Acquisition by improper means
2. Acquisition by accident or mistake
3. Use of or disclosure of a trade secret
a) Acquired improperly
b) In violation of a duty to maintain confidentiality
“Improper means” includes “theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain
secrecy, or espionage through electronic or other means.”
“Proper means” which do not support a claim for
misappropriation, include independent discovery, reverse
engineering, or discovery from observing what has been
allowed to enter the public domain.
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B. The Importance of Trade Secrets
Trade secrets are the “crown jewels” of corporations — not the “cesspool
of the patent system.”
Mark Halligan: “Trade secrets are the IP of the new millennium and can no
longer be treated as a stepchild.”
James Pooley: “Forget patents, trademarks and copyrights…trade secrets
could be your company’s most important and valuable assets.”
Trade secret misappropriation recently cost Walt Disney $240 million,
Cargill $300 million, and Toshiba over $400 million.
88% of responses in an IPO Survey indicate trade secrets to be the really
important intellectual assets because patents have limits: patentability
requirements, publication and invent-around feasibility.
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The Importance of Trade Secrets
(continued)
Trade secret protection operates without delay and undue
cost against the world — unlike patents which are territorial
and so expensive to obtain and maintain that only very
selective foreign filing is done.
Patents are tips of icebergs in an ocean of trade secrets
• Trade secrets cover over 90% of new technology
• Over 80% of technology licenses cover trade secrets or
are hybrid licenses
Trade Secrets are the “workhorse of tech transfer.” (Bob
Sherwood).
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C. Patent/Trade Secret Interface
As a practical matter, licenses under patents without access to associated,
collateral know-how are often not enough, because patents rarely disclose the
ultimate scaled-up commercial embodiments of products and processes.
“In many cases, particularly in chemical technology, the know-how is the most
important part of a technology transfer agreement.” (Homer Blair).
“It is common practice in industry to seek and obtain patents on that part of a
technology that is amenable to patent protection, while maintaining related
technological data and other information in confidence. Some regard a patent as
little more than an advertisement for the sale of accompanying know-how.”
(Peter Rosenberg).
In technology licensing “(r)elated patent rights generally are mentioned late in the
discussion and are perceived to have ‘insignificant’ value relative to the knowhow.” (Michael Ward, Honeywell VP Licensing).
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Patent/Trade Secret Interface (continued)
“Trade secrets are a component of almost every technology license…(and) can increase
the value of a license up to 3 to 10 times the value of the deal if no trade secrets are
involved.” (Melvin Jager).
“One potential shortcoming of focusing on patents as a measure of innovation, besides the
fact that it ignores the other types of intellectual property, is that patents are often
valueless absent the ‘know-how’ that translates protected intellectual property into viable
products.” (Gavin Clarkson, Harvard).
“A company with one or more patents for its technology will usually have substantial
valuable technical and business information related to, but outside the direct coverage or
disclosure obligations of, its patents. The company can maintain vigorous efforts in both
areas of legal protection. (Jerry Cohen, Perkins, Smith & Cohen).
“It is frequently stated that know-how is the most valuable element of technology transfer.
This is consistent with the writer’s own experience.” (Robert Goldscheider).
Failed Brazilian tactic — translation of foreign patents
CIBA-GEIGY examples: Eastman Kodak & DuPont patent licenses were useless.
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Patent/Trade Secret Interface (continued)
•
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In the past- and even today – the question always was phrased in the alternative
E.G., titles of articles discussing the matter read “Trade Secret v. Patent
Protection,” “To patent or not to patent?” “ Trade Secret or Patent?” “To Patent
or to Padlock?,” etc.
Anent this choice, the respective advantages and disadvantages, e.g. in terms
of duration and scope of protection, were considered controlling.
On scrutiny the perceived differences are not there.
The patent life may be more or less than twenty years from filing and a gardenvariety type of trade secret, far from being indefinite, may last but a few years.
Nor is there a difference as regards to the scope of protection with “everything
under the sun made by man” being patentable.
And while a patent does, and a trade secret does not, protect against
independent discovery, a patent leads to efforts to design or invent around and a
trade secret, properly guarded and secured, may withstand attempts to crack it.
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D. Patent/Trade Secret Complementariness
•
Supreme Court (Kewanee Oil, 1974): perfectly viable alternatives.
•
Not mutually exclusive but mutually reinforcing — dovetail, in harmony
•
“Coexistence is well-established.” (Don Chisum).
•
Inextricably intertwined: Most R&D data and collateral know-how cannot and
need not be included in patent applications — grist for trade secrets.
•
Every patent is born as a trade secret.
•
Trade secrets precede, accompany and follow patents.
•
Tom Arnold: it’s “flat wrong” to assume that “because the patent law requires
a best mode requirement, patents necessarily disclose or preempt all the
trade secrets that are useful in the practice of the invention.”
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Patent/Trade Secret Complementariness (continued)
All patents are born as trade secrets
• In the critical R&D state and before any patents issue, trade secret law
“dovetails” with patent law.
•
Assuming that a development has been enabled and the best mode
described, all collateral know-how not disclosed, whether or not inventive,
can be retained as a trade secret.
•
All R&D data, including data pertaining to better modes, developed after
filing, again whether or not inventive, can also be protected as trade secrets.
•
With respect to technologically complex developments consisting of many
patentable inventions and volumes of associated know-how, complementary
patenting and secreting is tantamount to having the best of both worlds
The question is not whether to patent or to padlock but rather
what to patent and what to keep a trade secret.
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Patent/Trade Secret Complementariness (continued)
•
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Best policy and strategy is to patent as well as to padlock.
Initially file a broad or several patent application(s) simultaneously or
sequentially per the time honored maxim” file early, file often”
Pending applications are secret
This keeps options open and permits to defer a decision to keep
invention secret if application is not allowed.
Even if allowed, application can be abandoned and invention is kept
secret
Continue filing on improvements and additional patentable aspects
throughout R&D stage and beyond — offensively and defensively —
“evergreening.”
A la IBM, CIBA-GEIGY and other corporations, going for “big numbers.”
Pitney Bowes obtained over 100 patents on their Paragon Mail
Processor, a “simple machine.”
Concurrently always keep innovations of disallowed applications and
the huge volumes of collateral know-how as trade secrets.
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E. The Best Mode Requirement
Conventional wisdom: coexistence is impossible because of the “best mode”
requirement.
The “best mode” requirement applies
• only to the knowledge of the inventor,
• only at the time of filing and
• only to the claimed invention
Hence “best mode” requirement is no impediment, because —
1. Patent applications are filed early in the R&D stage to get the earliest possible
filing or priority date.
2. The specification normally describes in but a few pages only rudimentary lab
experiments or prototypes.
3. The best mode for commercial manufacture and use remains to be developed
later.
4. Patent claims tend to be narrow for distance from the prior art.
5. As shown by case law, manufacturing process details are, even if available, not
a part of the statutorily-required “best mode” disclosure of a patent.
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F. Exemplary Trade Secret Cases
1. GE’s exclusive industrial diamond process technology
•
Holds patents (some expired) and trade secrets
•
Refused to grant licenses
•
Fast-track GE scientists stole trade secrets for Far Eastern interests for
million dollar payments
•
In the end got caught, tried, jailed
2. Wyeth’s exclusive Premarin manufacturing process
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Has market exclusivity since 1942
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Patents expired decades ago
•
Closely guards its trade secrets
•
Natural Biologics stole these trade secrets
•
Wyeth sued, got sweeping injunction
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Exemplary Trade Secret Cases (continued)
3. Pizza Hut case
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Pizza Hut supplier, C&F Packing, invented and patented a
manufacturing process for pizza sausage toppings and kept
improvements secret
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Pizza Hut misappropriated trade secrets and got sued
•
Court decision:
1. patents are invalid on on-sale bar grounds (on
Summary Judgment)
2. trade secrets are enforceable and Pizza Hut had to pay
$10.9 million (after trial)
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G. Conclusion on Trade Secrets
• These and other cases are examples of how trade secrets serve
as a fall-back position when patents fail
• Patents can be at risk due to three dozens of invalidity and
unenforceability reasons and many attrition factors such as
–
–
–
–
Narrow claims granted by IP offices
Enforcing patents being a daunting and expensive task
Only very limited or no coverage in foreign countries
Only about 5% of a large patent portfolio have commercial value
(per Emmett Murtha, ex. IBM and former LES President) and
– The effective economic life of a patent being only about five years
(Murtha)
– As well as others.
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Conclusion on Trade Secrets (continued)
• Trade secrets are indeed a viable mode of protection.
• They can be used in lieu of patents but, more
importantly, they can and should be relied upon at
the same time and side by side with patents to
protect any given invention as well as the volumes of
collateral know-how.
• Hence, it is patents and (not “or”) trade secrets. A
happy marriage!
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IV. The Primary Objective of IP Protection
• Providers of IP consultancy services focus in particular on
— “IP value extraction,”
— “IP monetization,”
— “Maximizing royalties.”
• However, this overlooks that much greater gains can be realized from
protection of, and exclusivity for, a company’s products and processes.
Self exploiting via manufacturing and selling can be much more lucrative than
licensing-out.
In an exam paper, a student of mine put it this way:
“Licensing is not where the big bucks are. Patentees can most often get the
best value out of their patents by commercializing and marketing the
technology themselves. Licenses only happen when patentees for whatever
reason cannot fully exploit patents themselves. Also, when you license
technology you often create a competitor.”
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The Primary Objective of IP Protection
(continued)
• Market exclusivity under IP protection is the primary objective
for all but a few of the biggest corporations.
• Entrepreneurs, start-ups, small and middle-sized companies
would not last absent IP protection and market exclusivity.
• Such companies are completely dependent on IPRs for their
technologies.
• Licensing their IPRs would set up competitors —good reason
behind the general reluctance to license-out.
• And pharmaceutical and biotech companies need IPRs and
market exclusivity to protect their enormous R&D investments.
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The Primary Objective of IP Protection
(continued)
• As is well known, licensing normally carries little risk
but also little reward.
• Royalty income at prevailing rates amount to at best
a small percentage of net sales of licensed product,
while markups on products sold under IP protection
could be much higher, by multiples, and may reach a
1000% or more.
• This is another reason for the innate reluctance to
license-out IPRs.
• 97% of all patents are not licensed for this reason or
because the technology they cover is not useful,
feasible or marketable (Emmett Murtha, an ex-IBM
and former LES President).
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The Primary Objective of IP Protection
(continued)
•
•
•
•
•
Marshall Phelps, Microsoft’s new Corporate Vice President for Intellectual
Property (ex-IBM), had this to say on the subject:
Our emphasis is first and foremost about the quality of innovation and then the
subsequent and logical protection of that innovation. We will be investing some
$6.9 billion in R&D annually. It would be foolish if we did not do everything we
could to protect the output of such a large investment…. This type of investment
is going to generate a healthy stream of intellectual property. As with others in
the IT industry, our most important IP strategy is to protect our innovations and
our substantial investment in the area of R&D, through IP laws and, in some
instances (!) to seek compensation for this investment through licensing to third
parties or engaging in technology transfers with other innovators. (Emphasis
added.)
Joe Siino, IP VP of Yahoo, and David Simon, Chief IP Counsel of Intel chimed in
by stating respectively:
While it is true that IP strategy should be tied to the business strategy, it’s risky
to treat IP as another profit center. A company’s most valuable IP (on its core
business) will never be licensed.
Our head is at being a successful business rather than using the IP department
to make money. I’d rather have us see a lot more product — which will
contribute a lot more money to the bottom line — than to maximize my assets
trying to get people to take a license.
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The Primary Objective of IP Protection
(continued)
• My former employer, CIBA-GEIGY Corp. realized
$3.5 billion in profits — yes, profits — from producing
and selling Atrazine, a corn herbicide, over a 17-year
period. This period coincided with the patent life,
inasmuch as EPA permission to sell and patent
issuance occurred in the same year. Had CIBAGEIGY licensed the Atrazine patent, which they
refused to do for obvious reasons, the royalty income
would at best have been merely a small fraction of
the profit that was garnered.
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The Primary Objective of IP Protection
(continued)
• Interestingly, from a chart of descending willingness to license
out, it is clear that licensing for royalties is last. Willingness
goes down from licensing a subsidiary, an associated company,
in a joint venture, for cross licensing or for royalties.
• Money consideration comes last and other quid pro quos, e.g.
cross-licenses under licensee’s patents covering products that
can be made or sold profitably are preferred or insisted upon.
• In fact, obtaining such cross-licenses as quid pro quos rather
than accepting mere royalties is one of the significant recent
trends in licensing/technology transfer.
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The Primary Objective of IP Protection
(continued)
Reasons For Licensing
• Unblock interlocking IPR’s
• Settle IP litigation, interference
• Grow and diversify the business
• Deal with outside idea submission
• Convert dormant IP portfolios into
profits
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V. Royalty-Free Licenses
•Would IP “value extraction” and “monetization” advocates ever
contemplate or recommend royalty-free licensing? Very doubtful!
•But there is significant royalty-free licensing. Makes eminent business
sense.
•There is indeed great virtue in royalty-free licensing in terms of good
will and good relationships, bringing about increased sales of goods
and supplies and hence larger market share.
•Examples:
At one point in my career at CIBA-GEIGY Corp. (now Novartis), I prepared
over 20 royalty-free non-exclusive licenses to carpet manufacturers under
patents I had obtained in the U.S. and Canada on an important improvement
in tufting carpets. CIBA-GEIGY was not in the business of manufacturing
and selling carpets but dyestuffs. CIBA-GEIGY had no intention to practice
this tufting method itself. Licensing was the best alternative. Rather than
doing it for royalties, we did it for free with the expectation that this would
induce grateful carpet manufacturers to buy more dyestuffs from CIBAGEIGY. Carpet manufacturers were pleased to be licensed for free to
practice an important new technique for tufting carpets.
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Royalty-Free Licenses (continued)
A more recent example is the royalty-free licensing by Iridian
Technologies of iris-scan patents.
Iridian owns a broad patent and another two dozen patents on irisrecognition software, which is able to accurately identify people
at airport security or automated teller machines.
They licensed these patents also on a royalty-free basis after
deciding that the “upside of software sales was greater than the
downside of collecting royalties.”
They won contracts with Schiphol Airport and the UAE government
and expected other big government contracts.
Iridian will “end up getting a lot of business” per US Today of
August 15, 2005.
This case also shows that giving away valuable patent rights for
free can be a savvy business move.
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Royalty-Free Licenses (continued)
In the field of licensing law and practice there are other instances of, or
occasions for, granting free licenses.
•
•
•
•
•
•
Interference settlement agreements.
Grant-back provisions in license agreements often are royalty-free.
Releases of patent rights to employees, where a corporation or
university has no interest in the employee’s invention.
Hybrid patent/trade secret licenses with royalty based on the trade
secrets.
Corporations owning patents that would be infringed by university
research grant the university a royalty-free license.
In standard setting situations, assurances by patentees to license on
royalty-free terms.
The conclusion is inescapable that royalty-free licensing of valuable IP
rights in preference to royalty-bearing licenses, is savvy business
strategy conducive to creating good will and establishing or cementing
good relationships, with attendant increases in market share.
45
VI. General Valuation Considerations
•
•
•
•
•
•
•
As regards IP valuation and royalty settings in licensing, many
considerations and factors play a significant role and cannot be ignored.
Vastly different values may reside in broad pioneering or basic patents
versus narrow improvement or picture patents, that it is easy to design
around.
For competitive reasons, patent applications are filed very early after
conception and reduction to practice and hence have little experimental
support and cover technology in a mere embryonic stage. That is entirely
different from a patent that covers a successful commercial product or
process.
There is a significant difference in value between a patent that is strong and
enforceable and a patent that is weak and of questionable enforceability.
Also, a patent that has been upheld in court as valid, will significantly gain in
value.
And of course values may vary widely from industry to industry.
Also, in most patent transactions a package of patents (issued patents,
pending applications, rights to apply for patents) is the merchandise, but the
purchase price or royalty is not cumulative.
Due diligence is indispensable in IP transactions which may take weeks or
months and without which one may “buy a lawsuit” rather than an asset.
46
General Valuation Considerations
(continued)
•
•
•
•
•
•
Contrary to common assumptions, it is not true that
– licensors can charge what the traffic will bear
– licensors can recoup their R&D expenses, the cost of the development of a
technology is a big factor,
– there are royalty standards within each industry to go by, etc.
Indeed, there is a limit to what a licensor can charge and most often it is the
licensee’s economics, not the licensor’s, that controls the royalty determination
(Gordon Smith).
And isn’t there a 25/75% rule? Isn’t licensee entitled to the lion’s share because
of the greater risk he/she carries, especially with less-than-fully developed
technology?
Above all, when it comes to royalties less is more and greed never pays off.
In my corporate experience, several agreements went South because the
royalties were too high, the profitability was not there and the deals could not be
sustained in the end.
On several other occasions, agreements had to be renegotiated for lower
royalties for the same reasons.
In other words, they were not viable win/win license agreements to begin with.
So much for maximizing the “royalty stream!”
47
General Valuation Considerations
(continued)
•
•
•
Actually, the cost to licensor of the development of the technology is
not a factor at all. These R&D costs are sunken expenses expended
by the patentee/licensor whether or not it is licensed and, therefore,
should not be considered in arriving at a suitable royalty. That is to
say, the public’s interest in buying a product is essentially unrelated to
the cost of developing it (Tom Arnold, Martin Landis, Gordon Smith).
Anent royalty standards in industry and the figures given as industry
averages, John Romary (Finnegan Henderson) called such average
royalty rates “folklore” and “suspect as a royalty-rate guide.”
He also states that these figures are based on the net sales price of a
non-exclusive license and that a “20 to 50 per cent premium” and “as
much as a 300 per cent premium…in the pharmaceutical field” may be
a reasonable average for an exclusive license.
48
General Valuation Considerations
(continued)
In IP valuation exercises one cannot ignore the fundamentals of
IPRs in terms of integration strategies for dual or multiple protection
of innovation, nor the relevant fundamentals of IP licensing law and
practice. If this is true and if it is also true that “business decisions
(should not) end up being made by patent attorneys who may not
understand the long-term commercial ramifications,” as has been
stated by a noted representative of the IP value extraction school,
then symbiotic collaboration and teamwork between the two
practices is the answer to best serve clients
49
INNOVATION: A THREE-STEP
PROCESS
• One day an American firm announces
a breakthrough invention;
• Next day the Russians claim they made
the same discovery twenty years ago;
and
• On the third day the Japanese start
exporting the new product.
50
VII. Royalty Setting
Misconceptions about royalties abound, e.g.,
• licensors can charge what the traffic will bear,
• licensors can recoup their R&D expenses,
• the cost of the development of a technology is a big factor,
• there are royalty standards within each industry to go by, etc.
None of this is necessarily true.
There is a limit to what a licensor can charge.
The licensee’s economics, not the licensors, control the royalty determination.
Less is more and greed never pays off.
At Ciba-Geigy several agreements went South because the royalties were too
high, the profitability was not there and the deals could not be sustained in the
end.
On other occasions, agreements had to be renegotiated for lower royalties.
51
Royalty Setting (continued)
The cost to licensor of the development of the technology is not even a factor.
“The research and development costs of developing the TI (Technical Information) are
sunken expenses expended by the licensor whether or not the TI is licensed and,
therefore, should not be considered by the licensor in arriving at a suitable royalty.”
(Martin Landis)
The public’s interest in buying a product is unrelated to the cost of developing it.
(Tom Arnold)
52
Royalty Setting (continued)
What about royalty standards in industry?
Common belief: there are norms to rely on.
But per John Romary industry average royalty rates are “folklore” and “suspect
as
a
royalty-rate guide.
E.g., “a 5% running royalty for a non-exclusive license helps very little in
evaluating an exclusive license on different but related technology.”
A “1.5% running royalty on technology that can be effectively designed around is
equally unavailing in pegging the value of a pioneer patent critical to the
competitor.”
Still commonly recited averages provide additional data points.
Such figures are based on the net sales price and a non-exclusive license.
A 20 to 50 per cent premium may be a reasonable average for an exclusive
53
license
Royalty Setting (continued)
According to Tom Arnold there are 100 factors to be considered by both
sides in licensing negotiations. They are tabulated and discussed in
Appendix C, 1998 Licensing Law Handbook, Clark Boardman, p.295.
• This tabulation is a handy checklist
• Not all factors play a role in a given technology license
• They are grouped under the rubrics of
–
–
–
–
–
–
–
–
–
–
Intrinsic Quality
Protections and Threats of Protection
Market Considerations
Competitive Considerations
Values Brought to the Table by the Licensee
Financial Considerations
Particular Risk Considerations
Patent Portfolios
Legal Considerations
Government Regulatory Considerations
54
Royalty Setting (continued)
Among the most important factors are
– the state of development of the subject technology (embryonic and untested v.
tested and commercial),
– the strength of the IP rights — “be it patent, trade secret, or both” — (solid v.
weak, easy to design around vel non),
– the degree of exclusivity (exclusive v. sole, semi- or co-exclusive v. nonexclusive) and
– geographic scope.
Note reference to “trade secrets”
The amount of, and value added by, trade secrets covering essential collateral knowhow is indeed important:
“Trade secrets are a component of almost every technology
license…(and) can increase the value of a license up to 3 to 10 times the
value of the deal if no trade secrets are involved.” (Melvin Jager).
The tons of complementary collateral trade secrets have to be factored in or money is
left on the table.
55
Royalty Setting(continued)
According to Martin Landis (of AT&T)
“The patent royalty negotiated by the parties is determined
largely by the strength of the patent itself and only
secondarily, by the value of the technology. For example, a
U.S. patent on a commercially significant technology may
only command a low royalty rate because the most pertinent
prior art, an obscure dissertation gathering dust on a library
shelf in a small town, teaches the thrust of the invention, yet
was never considered by the Patent Office which issues the
patent.” (Journal of Proprietary Rights, August 1991)
56
Royalty Setting (continued)
Many other operative clauses in a technology license have
economic weight, e.g.
• grantback and grant-forward clauses,
• payment structures and schedules,
• MFL clauses,
• representations and warranties, etc.
Hence, royalty setting is not the first task in licensing
negotiations but the last one — after all the others have
fallen into place.
57
Royalty Setting (continued)
Royalty-bearing
Lump sum — single or installments
Running royalties
Fixed
Sliding
Increasing
Decreasing
Maximum (Cap) (Paid-up license)
Minimum
Combination of both
Most common combination
1) Initial lump sum (about 10%)
2) Running royalty (on net sales)
3) Minimum yearly royalty
Total royalty income depends on
Royalty base
Royalty rate
Duration of agreement
Royalty-free
58
Royalty Setting (continued)
New-fangled Gimmicks
• IP Law & Business of March 2007 (p. 16) carries an
article titled “Good Measure?” regarding new tools,
termed “Patent Analytics,” offered by Ocean Tomo,
1790 Analytics and The Patent Board
• Factors or indicators used are, e.g.
•• number of citations received by patents,
•• timely maintenance fee payments
•• science strength based on citations to
scientific journals
59
New-fangled Gimmicks (continued)
• IP attorneys are said to be skeptical, for instance,
• Per Michael Benarek of the Paul, Hastings firm:
• These “analytics” are subjective, inaccurate gimmicks
based on the dubious assumption that all
patents have some value, when “the vast majority
have zero value.”
• I share the skepticism — it goes double for me.
60
VII. 20 Steps For Pricing A Patent
IP monetization folks start talking about market, cost and income
approaches almost from the outset on the stated or unstated
assumption that patents are presumed to be valid, meaning that a
patent is a patent is a patent and by definition a “Rembrandt in the
Attic.”
Nothing could be further from the truth!
According to a 2004 publication of the AICPA (American Institute of
Certified Public Accountants), entitled “20 Steps for Pricing a Patent,”
choosing one of the traditional valuation approaches comes only as
step 18, with step 19 then being the choice of the income method.
Steps 1-14 deal with a close reading of the patent and an investigation
of the patent situation.
61
20 Steps for Pricing a Patent (continued)
The author of this article (Timothy Cromley) is a CPA,
professional engineer and U.S. patent attorney.
This article is silent on trade secrets, but trade
secrets must also be considered.
Preface: To value an invention you have to
understand it.
62
20 Steps for Pricing a Patent (continued)
Steps dealing with patent considerations:
–
–
–
–
–
–
–
–
–
–
–
–
–
–
1. Check whether the patent is in force.
2. Identify the context.
3. Gather information.
4. Assemble a valuation team.
5. Read the patent.
6. Investigate the patent’s scope.
7. Talk with a patent attorney.
8. Inquire about the patent’s validity.
9. Inquire into blocking patents.
10.Consider synergies among patents.
11.Investigate foreign patent protection.
12.Consider the remaining life of the patent.
13.Analyze any prior royalties paid for the patent.
14.Inquire into any actual or threatened litigation involving the
patent.
63
20 Steps for Pricing a Patent (continued)
Steps dealing with commercial considerations:
– 15.Identify the next-best alternative technologies.
– 16.Estimate a demand curve for the patented item.
– 17.Determine the patented product’s point of profit
maximization.
Steps on valuation approaches:
– 18.Consider the applicability of traditional valuation approaches.
– 19.Do an income-approach valuation.
Final step:
– 20.Write the patent valuation report.
64
20 Steps for Pricing a Patent (continued)
Missing essential steps re trade secrets:
•
•
•
Inquire about the existence of trade secrets on
discrete aspects as well as on collateral know-how for
patented inventions
Analyze security measures that are in place to
maintain trade secrecy
Consider the efforts and investments involved in
developing the proprietary know-how
With addition of steps re trade secrets, Cromley’s outline of essential “steps for
pricing a patent” is a prescription of due diligence par excellence.
65
Due Diligence
An investigation undertaken in the course of an IP transaction.
An indispensable exercise.
The purpose of a due diligence investigation is to provide the data needed
to analyze and assess the business and legal risks associated with the
IP rights that are the subject of the transactions.
Due diligence procedures may include, among other things:
1)
2)
3)
4)
5)
identification of all IPRs involved in the transaction,
verification of ownership and inventorship of the IPRs,
determination of the enforceability or strength of the IP assets,
review and verification of all documentation associated with the IPRs,
including registrations, licenses, security liens, file wrappers, and
claims of infringement; and
interviews of those persons with knowledge of the subject IPRs.
66
VIII. LICENSING DOS AND DON’TS
A. Contract Drafting
1. Inescapable Uncertainty Principle In Contract Drafting
a. Semantic Dilemma
— undefined terms
— terms incapable of definition
— few terms universally understood to have a single meaning
e.g. “public domain”, “line of business”
if try to define, often substitute another uncertainty
stiff definitions important
b. Human Frailty
Imperfection of human intelligence and attentiveness, press of business
— can be mitigated
Can lead to three defects
a.) ambiguity
— two possible meanings —
— different from vagueness (imprecise boundaries)
e.g. “residence,” “period from June 15 to” can be eliminated
— of different words
— additional words
b.) excessive vagueness — e.g. “indivisible”
c.) unclear modifier
— most common, most dangerous
67
2. Content of the All-Important Grant Clause
The grant clause is the most important clause
It has the following five elements:
1) ABC Corp. grants (or agrees to grant or grants and agrees to grant) to XYZ Inc.
2) a (non) exclusive (or sole) license under certain IP Rights
3) to make, have made, use, offer to sell, sell or import Licensed Products (or to
practice Licensed Methods)
4) throughout the Territory
5) for the duration of this Agreement.
Insertion of such modifiers as “indivisible,” “irrevocable” and/or “non-transferable” in
boilerplate fashion is inadvisable.
68
Content of the All-Important Grant Clause (continued)
The term “indivisible” will take away the right “to have made”, which normally is implied and
included in the term “to make,” when it is not specifically recited. Ambiguity may result.
It will also rule out the right for subsidiaries and affiliates to operate under the license.
And the term “irrevocable” does not belong in the grant clause. Conditions, if any, of
revocability should be recited in the termination clause.
The “non-transferable” language would not grant any right to assign or sublicense and
would be ambiguous if assignment or sublicensing rights are recited.
Re the bundle of rights to be granted, it is preferable to track the statutory language. Other
terms, e.g. “lease,” “dispose of”, may lead to a restrictive reading because of the general
rule that inclusion of one means the exclusion of the other.
69
3. Protection Of Exclusive Licensor
1. Lumpsum payment — paid up license
2. Minimum royalties
3. Termination power — outright
• if a desired total not reached
• if annual minimums not maintained
4. Conversion to non-exclusive license
5. “Best efforts“ clause
•
dubious language
•
variously interpreted
very strictly or leniently
•
better: reasonable diligence consistent with interests of
business
•
best: objective, quantitative criteria of performance
70
4. Better Alternatives for the Common Best Efforts Clause
“Best efforts” clauses are routinely written into exclusive license agreements.
A best efforts clause to the effect that ABC “shall exercise its best efforts to exploit the
Licensed Products,” is useless as a device for the protection of licensor, where licensee’s
performance is unexpectedly low or inadequate.
It is dubious language that courts can interpret strictly or loosely as merely stating a theme
rather than a course of conduct.
Preferable wording:
“Reasonable diligence consistent with the interests of the business” or
“’Best Efforts’ shall mean those efforts which a reasonably prudent person knowledgeable
of such matters would consider desirable, necessary or commercially reasonable to further
the intentions of the Parties hereunder.”
Better yet: statements of objective, quantitative criteria of performance.
Best of all: a requirement for minimum royalty payments, coupled with conversion from
exclusive to non-exclusive status or termination power, if specified levels of performance or
annual minimums are not maintained.
71
Best Efforts Obligation
Licensee shall exercise its best efforts to produce, sell
and offer for sale Licensed Machines. “Best efforts”
shall mean those efforts which are commercially
reasonable to further the intentions of the Parties with
respect to quality as well as quantity of the Licensed
Machines produced. Production of 250 Licensed
Machines per half year after March 1, 2001 of a
quality that conforms with established industry
standards, will satisfy Licensee’s best efforts
obligation hereunder.
72
5. Protection of Licensees from Third-Party Dominant Patent Risks
Not infrequently, a licensee finds the exercise of the license blocked or impeded due to the
existence or issuance of a third-party patent:
•
•
•
Mostly a dominant patent,
a patent on a component or subcombination, or
a patent one is aware of and rules out as being infringed but later turns into a threat
due to a novel interpretation of the claims or claims scope or a novel (twisted)
doctrine of infringement.
This may occur in spite of rigorous due diligence.
For protection licensee should negotiate a hold-harmless clause stipulating
•
licensor would get licensee another license,
•
provide a non-infringing alternative or
•
defend an infringement suit (but not open-endedly).
Also a cost-sharing arrangement, if royalties to be paid to the third-party patentee or if it
comes to an infringement suit.
Renegotiation of the royalty provision in the first license is a possibility.
example.
Our Tolban
73
Protection of Licensees from Third-Party Dominant
Patent Risks (continued)
Licensor should not represent and warrant that the licensed subject
matter “does not infringe any valid rights of any third party.”
Licensor can’t foresee what licensee will do and evaluate the risk nor can
licensor foresee, what other secret pending patents might issue.
All licensor can represent and warrant is that it is not aware of any
patents of others that would be infringed.
74
6. Trouble-Free MFL Clauses
An MFL clause is a frequent bone of contention in my experience and in light of the
number of lawsuits.
It is a very important clause in non-exclusive licenses
Licensees should negotiate MFL clauses to extend identical terms or to refrain from
granting to subsequent licensees more generous terms.
Licensor can include a so-called negative MFL clause.
A general or overly broad MFL clause can be troublesome to licensor in special
circumstances, e.g., a license arising from a settlement or litigation.
It is advisable
•
to stay away from vague phrases, such as, “other terms and conditions,”
•
to include escape clauses or exceptions, e.g. settlements, and
•
to give licensee the right to terminate and renegotiate the license, if a subsequent
licensee has been overly favored.
Thus, an MFL provision, should be limited to royalty or other money terms giving prompt
notice to licensee and option to accept such new terms within, say, 30 days.
75
Trouble-Free MFL Clauses (continued)
PATLEX LICENSE
ARTICLE XII – MOST FAVORED LICENSEE
If subsequent to the effective Date of this Agreement
another manufacturer of lasers, laser systems, or Low or
High Power Laser Tubes similarly situated to LICENSEE
is granted a license by PATLEX which provides to said
another manufacturer a combined royalty rate and
royalty base materially more favorable to said another
manufacturer with respect to any of the Licensed Patents
than that provided herein to LICENSEE for lasers, laser
systems and Low or High Power Laser Tubes sold or
leased in the United States, then LICENSEE may, at its
option, adopt the subsequent license in its entirety,
mutatis mutandis, as of the effective date of such
subsequent license. PATLEX shall notify LICENSEE of
any such subsequent license and provide LICENSEE an
opportunity to exercise the option provided herein.
76
7. Additional Clauses Needing Close Attention
Definitions — the second-most critical clause in licenses
Confidentiality — crucial where trade secrets are involved
Improvements — “grant-back” by licensee to licensor or
“grant forward” by licensor to licensee where they
continue their R&D,
a narrow, precise definition, tied to the scope of the patent
claims,
in non-exclusive form
Sublicensing rights — especially important in exclusive
licenses
for practical and legal reasons
Termination — this third most important clause is a
multipronged concept,
each prong needs to be defined separately,
a license never terminates over night,
77
different rights and obligations of the parties continue
B. Assignment Rather than Exclusive License
Illustrative licensing experience in New Zealand
At one point I was to go to New Zealand, to chase down an elusive invention and an elusive inventor
and prospective licensor and come back with a signed patent application ready for filing in the U.S. and
Canada. And I was to bring back an executed exclusive license agreement, ready for execution by my
management as well.
Invention: a novel bovine parturition control method invented by a veterinarian of a dairy company
employing dexamethasone TMA, a pharmaceutical of Ciba-Geigy.
I came back with a finished patent application but
installment payments based on net sales.
also with an assignment with a provision for
Why an assignment and not a license?
I don’t recall why I prepared an assignment. Perhaps it was intuition, because it was not until later that
I learned of Tom Arnold’s suggestion that
“what is perceived by the businessman as an ‘exclusive license,’ is best negotiated into the form
of a patent assignment with rights to reversions of title if royalties are not paid … because the
exclusive license differs from assignments only in areas (like who sues infringer and has authority
to compromise in settlement) which may be better borne by the party actively in the business than
by the passive transferor of the technology
Indeed, the New Zealand dairy company was merely a “passive transferor of the technology” and my
company was going to have to do considerable additional R&D work to obtain the requisite government
approvals for commercialization.
78
C. Implied Licenses
•
Shopright — employer-employee relationship
•
Via acquiescence or laches — where patent owner sits on his/her rights
•
Licensor-Licensee Relationship
under unlicensed but indispensable patent — e.g. dominant patent issued
later to licensor or earlier-issued dominant patent acquired by licensor
•
Seller-Buyer relationship
under combination or method patent of seller who sells a component or
article for use in the patented combo or method
See Jacobson v. Cox, Dist. Ct., Arizona, 1991
•
Business relationship — close cooperation on innovative project
See Wang v. Mitsubishi, CAFC, 1997
79
D.
Administration of Licensing Program
Post-Signing Issues
Distribution of license agreement — “working copies”
Cooperation with Accounting re royalty set up
Continuing contacts with and monitoring, notifications of other party re
–
–
–
–
–
–
–
–
–
–
–
–
–
Quality control (in trademark licenses, franchise agreements)
Royalty audits
Information exchange and technical assistance
Grantback and grantforwards
MFL clauses
Sublicenses
Patent activities
Patent markings
Bankruptcies — M& A’s
Renegotiation, revision
Termination — Multipronged
Breach of contract
`Other follow-through
80
E. Hybrid Licenses
Patents and trade secrets (and other IPRs)
Very prevalent — >80% of technology
Over 90& of all new technology is grist for trade secrets, not
patents, i.e. patents are tips of icebergs in an ocean of trade
secrets
Problematic — different duration, etc.
Brulotte v. Thys Co. (Supreme court, 1964):
collection of royalties after patent expiration — per se patent
misuse or antitrust violation
Solutions:
• Separate agreements — ideally
• Lumpsum payments
• Differentiation between patents and trade secrets
• Allocation of royalties to each
• Reduction of royalty rate if patents
••
terminate
••
declared invalid
••
if applications not issued
• Reduction of royalty-payment period (e.g. 10 years)
• Grant of royalty-free license to patents
81
• Grant of trade secret license — no patent license
F. Negotiation
Prepare thoroughly
• do research on other side
• develop strategy
• prepare draft agreement or outline
Choose third or fourth choice candidate for first round
Form a team
Stage a dress rehearsal
Go in with win/win approach — not “wimpy/wimpy”
Assure comfort and convenience
Take good notes
Take up less controversial issues first
Take up money matters at end
• agreement clauses have economic weight
Use silence in negotiations
Volunteer to draft agreement
82
NEGOTIATION (continued)
A. Object —
1.
Good deal for both sides: win-win
B. Necessary pre-negotiation homework — the more the better
70% of negotiation is preparation
1.
Licensor’s information
a)
about company
b)
product or process description
c)
proprietary position
d)
sales history of product
e)
materials, components and equipment required
f)
cost data
g)
licenses already granted
h)
other
2.
Licensee’s information
a)
place in market
1. names and volume of competitors
b)
financial position
c)
physical plant
1. availability of space and capital for expansion
d)
ownership
1. other affiliations
2. other licenses
e)
estimated costs for new license program
f)
estimated future market
g)
annual sales volume for past few years for other products, related
and non-related
83
NEGOTIATION (continued)
C.
D.
Pre-negotiation internal discussions.
1. Selecting the team
2. Who does what
3. Practice negotiation – dress rehearsal
a) helps your people feel comfortable
b) try to determine and understand other needs
c) may discover your, or other’s, weak points
The negotiation
1. With as high a level as possible
2. With knowledgeable people on both sides.
3. Convince other party of reasonableness of your position
4. Listen to, and analyze, other party’s position
5. Know what is important and what is not — what you can give and what
you cannot
6. Be creative and flexible
7. Say enough, but not too much
8. Caucus as often as necessary
a)
some emphasize items agreed upon
b)
some emphasize items not agreed upon
c)
a above is better
9. At end of session, state current status and what is next
10. Volunteer to prepare first draft
Homer O. Blair
84
G. Case History Clock Calculator Patent
Four-Step Project
1.
2.
3.
4.
Exhaustive infringement search and study
Exhaustive validity search and study
Design of comprehensive Licensing Strategy
a) Patent ownership transferred to new subsidiary
b) Narrow royalty base
c) Low royalty rate
d) Offer of paid-up licenses
e) Agreements prepared for both paid-up and running
royalty licenses
Implementation
85
H. Licensing Case History – Gould Laser Patents
This licensing story played out in the eighties. But it is not ancient history at all.
It harbors
• Invaluable lessons and
• important licensing concepts and ingenious licensing strategies.
It shows creativity in crafting win-win license agreements to resolve intractable
controversies and disputes.
Timeless, priceless! Mother of all Case Histories.
As was stated by Tom Arnold:
“(T)he various clause concepts are as keys upon a piano. Each may be
played loudly, softly, staccato or with lingering resonance; and each may be
played in solo melody or in chords with the others in infinite variety; they
constitute a piano upon which infinite varieties of transactions can be played. “
86
GOULD LASTER PATENTS
CAST OF CHARACTERS
1.) Gordon Gould
Sole inventor as Columbia graduate student — Owns 20% of
patent rights and has a 20% share of the royalties.
2.) Richard I. Samuel
Partner of Lerner, David, Samuel, et al — prosecuted Gould
applications — became President and CEO of PATLEX which
had acquired 80% ownership in Gould patent rights from
REFAC, a New York City licensing outfit, initially retained by
Gould/Lerner, David, Samuel, et al to exploit Gould patent
rights. (REFAC receives 16% and PATLEX, 64% of royalty
income.)
3.) Herbert Dwight, Jr.
Entrepreneur and founder of Spectraphysics and its CEO till
retirement in 1988.
4.) Frank Borman
Former Astronaut and Chairman of Eastern Airlines, became Board
Chairman of PATLEX in 1988.
87
GOULD LASER PATENTS
THE PRINCIPAL PATENTS
1.) USP 4,053,845
Optically Pumped Laser Amplifiers
Filed 4/6/59 — issued 10/11/77 — expires 10/11/94
2.) USP 4,161,436
Method of Energizing a Material
Filed 4/6/59 — issued 7/17/79 — expires 7/17/96
3.) USP 4,704,583
Gas Discharge Light Amplifier
Filed 4/6/59 — issued 11/3/87 — expires 11/3/2004
4.) USP 4,746,201
Brewster Angle Window Laser Device
Filed 4/6/59 — issued 5/24/88 — expires 5/24/2005
(Canada — 907,110 — ‘89)
88
GOULD LASER PATENTS
PATENT PROCUREMENT & LITIGATION
Difficult Prosecution
Multi-party Interferences
Three Re-examinations
Appeals from PTO to District Court and Federal Circuit
Infringement Litigation
Control Laser FL
Quantronix CA
General Photomics CA
89
GOULD LASER PATENTS
STANDARD PATLEX LICENSE
1. User License
Grant:
non-exclusive worldwide license under USP 4,161,436
on “Method of Energizing and Material” —
immunity under all
Gould patents.
3% of purchase price of all lasers — for past
infringement — within 60 days of effective date.
2)
1% of purchase price on first, second and third
anniversary of effective date.
3)
6% of purchase price for future purchases unless
purchased from licensed source.
4)
8% for lasers which licensee hides.
5)
In case of acquisitions of companies over $20M,
royalties as per 1) — 4) within 60 days of
acquisition.
90
Royalty:
1)
GOULD LASER PATENTS
STANDARD PATLEX LICENSE
2. Manufacturer License
Grant: non-exclusive worldwide license under all Gould
patents.
Royalty:
For Past Infringement:
1) 5% of net selling price upon signing under USP
4,053,845.
2) 13% under USP 4,161,436.
3) 5% under Can. Pat. 907,110..
4) 6% under USP 3,562,662, 3,576,500 and 3,586,998.
91
GOULD LASER PATENTS
STANDARD PATLEX LICENSE
As Future Royalties:
1)
5% under USP 4,053,845
(Optically Pumped Lasers)
2)
2% under USP 4,704,583
(Gas Discharge Laser) or
3-1/2% or 5% depending on occurrence of certain conditions.
3.)
3-1/2% under Application No. 869,831
(Brewster’s Nagle Window)
4)
3% under USP 4,161,436
(User patent)
5)
5% under Can. patent 907,100
6)
6% under USP 3,576,500
(Copper Vapor Laser)
7)
O% under any other Gould patent.
For multiple patents — highest rate.
Other terms:
Complicated provisions with respect to the above patents as to royalty base.
No royalty on governmental sales.
92
Licensee’s customers won’t be sued.
GOULD LASER PATENTS
PATLEX/COHERENT LICENSE
USA Sales
Sales Range
$ O — $12.5 million
$12.5 million and above
Foreign Sales
Sales Range
$ O — $7.5 million
$7.5 million and above
Royalty Rate
5.0%
4.0%
Royalty Rate
2.0%
1.6%
As long as Spectraphysics is neither licensed nor sued, royalty is only
3% of U.S. net sales and 1.2% of foreign net sales.
Annual cap of $125K under Use Patent License.
93
Contains MFL Clause.
GOULD LASER PATENTS
VOLUME BREAKPOINTS OR DESCENDING ROYALTY SCALE
USA Sales
Sales Range
$ 0-$15 million
$15-$20 million
$20-$25 million
$25 million and above
Royalty Rate
5.0%
3.0%
1.0%
0.5%
Foreign Sales
Sales Range
$ 0-$ 5 million
$ 5-$10 million
$10-$15 million
$15 million and above
Royalty Rate
2.0%
1.0%
0.5%
0.25%
94
GOULD LASER PATENTS
KEY PROVISIONS — CRUX OF THE AGREEMENTS
Step-up royalty from 2% to 5% in 2 steps
Triggers:
1) when one competitor licensed or sued up to 3-1/2%
2) when both competitors licensed or sued up to 5%
95
GOULD LASER PATENTS
This case history clearly illustrates the dynamic interplay of
•
step-up royalty/MFL clauses to induce the smaller players to sign up
when the bigger competitors — here Coherent and Spectra-Physics
— are holdouts and thus have an additional competitive edge by not
paying any royalties and
•
descending royalty schedules to entice the holdouts to take out
licenses, inasmuch as their total royalty exposure is significantly
reduced, e.g. down to about 1.7% in the case of Spectra-Physics.
96
I. Ethics in Patent/Trade Secret Licensing
Overview
•
Negotiations (under state law)
often governed by--ABA Model
Rules
–
•
Rule 4.1, Rule 8.5, Rule 5.5, Rule 5.5,
Rule 1.1
Patents
–
Accelerated Examination
•
–
New IDS requirements
•
•
Characterization of Prior Art
Characterization of Prior Art
Sarbanes Oxley
–
–
additional requirements
IP as an asset
97
Negotiations
• The ABA model rules of Professional Conduct
– Most recent rules adopted in 2006
– Important ABA Model Rules 4.1, 4.4., 1.1, 5.5
• Truthfulness (Lying v. Puffing)
» Examples
•
•
•
•
Unauthorized practice of law
Failure to disclose
Limits on Embarrassment, delay and burden
Requirement of competent representation
98
ABA (2006) Model Rule 4.1
• Truthfulness in Statements to Others
• In the course of representing a client a lawyer
shall not knowingly:
– (a) make a false statement of material fact or law
to a third person; or
– (b) fail to disclose a material fact to a third person
when disclosure is necessary to avoid assisting a
criminal or fraudulent act by a client, unless
disclosure is prohibited by rule 1.6.
99
Rule 4.1 (comments)
• However
– Misrepresentation (Comment 1)—generally no affirmative
duty to inform an opposing party of relevant facts; don’t
incorporate or affirm statement known to be incorrect
– Statements of Fact (Comment 2)—Certain types of
statements ordinarily are not taken as statements of material
fact…estimates of price or value…party’s intentions as to an
acceptable settlement of a claim
– Fraud by a client (Comment 3)—Substantive law may
require a lawyer to disclose certain information to avoid
being deemed to have assisted the client’s crime or fraud
(subject to obligations of rule 1.6)
100
For Example
• ABA Formal Opinion 06-439
– Statements that can fairly be characterized as
negotiation “puffing,” ordinarily are not considered “false
statements of material fact” within the meaning of the
Model Rules1.
– In a negotiation, a party, directly or through counsel,
makes a statement in the course of communicating its
position that is less than entirely forthcoming--In a
settlement negotiation to understate the willingness to
make concessions to resolve the dispute—insisting to not
agree to resolve a dispute for less than $200, when, in
reality, it is willing to accept as little as $150 to put an end
to the matter.
101
ABA Formal Opinion 06-439
– Defendant manufacturer in patent infringement litigation—
repeatedly reject demands that a license be part of the
settlement agreement, when in reality, the manufacturer has
no genuine interest in the patented product and, once a new
patent is issued, intends to introduce a new product that will
render the old one obsolete.
– A party in a negotiation also might exaggerate or emphasize
the strengths, and minimize or deemphasize the
weaknesses, of its factual or legal position. A buyer of
products or services, for example, might overstate its
confidence in the availability of alternate sources of supply to
reduce the appearance
102
Puffing verses Lying
• Puffing
– Client will not accept less
than 2% royalty, even if
client will accept 1%
– The patent is valid, not
acknowledging weaknesses
– The licensed right is valid,
not acknowledging prior
mark or non-use of mark
(not abandonment)
– Generally inference,
interpretation, intention
• Lying
– Client can not accept
less than 6% royalty
because of Most Favorite
Licensor status (no such
MFL exists)
– The patent is valid—has
been abandoned or ruled
invalid
– The Mark is valid—has
been abandoned
103
No Brightline Rule
• What is Legal verses what is Right
– Let your goals be your guide
•
•
•
•
Long term business relationship
Avoiding litigation
Maximizing current profit
American v. Foreign negotiation tactics
104
Hypothetical
• Before negotiating marketing agreement with retailer,
client tells lawyer about new, better, cheaper
competitive product to be introduced by competitor
within 12 months. During negotiation, retailer’s
lawyer asks if client knows of any new competitive
products soon to be introduced.
What does the lawyer do?
--Changes the subject
--Says “I can’t answer that”
--Tells the retailer what he knows
105
Hypothetical
• Before commencing negotiation to grant exclusive, world-wide
trademark license to manufacture a merchandising product,
licensee counsel receives common law search results and notes
prior use of same mark on similar product but only in
metropolitan New York.
What does lawyer do?
--Refrain from disclosing to licensee’s counsel and proceed with
negotiations
--Voluntarily disclose to licensee’s counsel and offer to obtain rights
in New York
106
Hypothetical
• Shortly after negotiations begin,
potential licensee comments on his
marketing plans, noting that his
strongest market position is in large
cities.
• Is lawyer’s obligation different?
107
Hypothetical
• In negotiations to grant exclusive patent license,
lawyer for patent owner knows that his client has
granted two nonexclusive licenses under the same
patents. Lawyer knows that preexisting nonexclusive
licenses do not prevent granting an exclusive license.
What does lawyer do?
--Say nothing
--Inform potential licensee
108
Hypothetical
• During review of draft exclusive license prepared by licensee’s
counsel, lawyer notes proposed representation that patent
owner had granted no other licenses.
What does lawyer do?
--Leave it in the draft
--Delete it and wait for licensee’s counsel to ask why
--Call licensee's counsel and disclose preexisting licenses
109
Hypothetical
• In drafting exclusive license agreement lawyer for
licensee inserts provisions that disclaims any
obligation on licensee to make or sell any licensed
product. Lawyer then sends draft agreement to
licensor’s counsel.
What should lawyer do?
--Nothing more
--Bring provision to attention of opposing lawyer?
110
Hypothetical
• Both parties understood that the licensee wanted and would get
the right to grant sublicenses. The licensee's lawyer created
first draft of the proposed agreement and did not include any
express grant of such a right. In reviewing the draft, licensor’s
lawyer noticed the omission.
What should the licensor’s lawyer do?
--Add the provision to the draft
--Nothing
--Ask opposing counsel if he intended to omit it.
111
Hypothetical
• Licensor’s counsel calls licensee’s counsel about the omitted
sublicense grant, but the latter says, “The provision is
unnecessary since the right to grant sublicenses is inherent in
the basic grant.” Despite a belief that this is wrong, licensor’s
counsel agrees, and they leave the agreement as is.
What should the licensor’s counsel do?
--Call licensee’s counsel back and explain the law
--Add the provision as “Belt and suspenders”
--Avoid confrontation since it is the licensee who suffers
112
Hypothetical
• During negotiations, client, in response to direct question for
potential marketing licensee, says there as been no claim of
infringement by any third party. Lawyer knows this to be false.
What should lawyer do?
--Privately advise client of error and request correction
--Withdraw from negotiation and representation as to matter if client
refuses to make a correction
--Do nothing
113
Negotiations
ABA Model Rule 5.5:Unauthorized practice of law (UPL)
• Corporate Counsel (UPL)
– Mostly exempted under 5.5(d)1
• (d) A lawyer admitted in another United States
jurisdiction, and not disbarred or suspended
from that practice in any jurisdiction, may
provide legal services in this jurisdiction that:
– (1) are provided to the lawyer’s employer or its
organization affiliates and are not services for which
the forum requires pro hac vice admission; or
– Comment 16—applies to in-house counsel
114
ABA Model Rule 5.5:
Unauthorized practice of law
• Rule 5.5
• Birbrower v. ESQ Business Services Inc.
–
–
–
–
California Client
New York Firm
Negotiations controlled by California Law
Unauthorized Practice by NY Firm
• Response
– ABA safe harbors
– California’s exempting of certain arbitrations
• Need for caution in negotiations and other legal work
across state lines depending on the other state’s
Professional Responsibility Rules
• However—changing to be more inclusive
– E.g. NH: temporary service related to pending or potential
proceeding…
115
ABA Model Rule 4.4
• Respect for Rights of Third Persons (4.4)
– (a) In representing a client, a lawyer shall not use means
that have no substantial purpose other than to embarrass,
delay, or burden a third person, or use methods of obtaining
evidence that violate the legal rights of such a person
– (b) a lawyer who receives a document relating to the
representation of the lawyer’s client and knows or
reasonably should know that the document was
inadvertently sent shall promptly notify the sender.
• What is the line between aggressive advocacy and
harassment?
116
ABA Model Rule 1.1
• Competence
– A lawyer shall provide competent representation to a client.
Competent representation requires the legal knowledge,
skill, thoroughness and preparation reasonably necessary
for the representation.
• Negotiations often require business skill
– Lawyers often lack this experience
– Should coordinate with business people
– Or use ignorance of business knowledge as a bargaining
tool?
117
Scope of representation
• Criminal or fraudulent actions?
– Rule 1.2(d)
• A lawyer shall not counsel a client to engage,
or assist a client in the conduct that the lawyer
knows in criminal or fraudulent…
• Comment 10 :may be necessary for the client
to give notice of the fact of withdrawal and to
disaffirm any opinion, document, affirmation or
the like
• Noisy withdrawal
118
Practice Before the USPTO
37 C.F.R. § 10.20
• In General, patent law is exempted from
UPL Exempted under 5.5 (d)2
• (2) are services that the lawyer is authorized to
provide by federal law or other of this
jurisdiction
119
Accelerated Examination
• Requires disclosures of related art
• Art must be characterized and
differentiated from the current invention
• But, what if you get it wrong?
– Inequitable conduct?
– Sanctions?
120
New Information Disclosure
Statement requirements
• Similar to the requirements for
Accelerated Exam
• What if you mischaracterize the
differentiation, what if you get it wrong,
where is the line?
– Inequitable conduct?
– Sanctions?
121
Sarbanes-Oxley
…more than just accounting
• To create accurate financial reporting
• Board of Directors and top Management
– Requires internal controls established and
maintained
– Criminal penalties apply
– Are Trade Secrets financial assets?
122
Trade Secret are Assets
• Trade secrets are the “crown jewels” of
corporations
• Injunctions have become a greater threat in
trade secret misappropriation cases
• Damage awards in the hundreds of millions
• Patents are but the tips of icebergs in an
ocean of trade secrets
123
Ignoring Intellectual Property
• Organization is your client
– If lawyer “knows . . .likely to result in substantial injury to
organization, then lawyer shall proceed as is reasonably
necessary in the best interest of the organization
• ABA Model Rule 1.13 was written to model
Sarbanes-Oxley
• Sarbanes-Oxley could open lawyers up to liability for
endorsing and or acting on plans that ignore
intellectual property as an asset.
– Especially if this results in loss of IP
124
Trade Secrets and Sarbanes
Oxley
• Method to account for trade secrets
• Establish controls to ensure they are
protected and maintained
• Would outside counsel have an obligation to
tell the company’s management team about
potential IP weaknesses?
– Section 307 outlines obligations to bring material
reporting issues
• Trade Secret Holding Companies?
125
•Thank you
4.10.07
126