Top Five Global Patent Concerns For 2015

2015
WWW.PATENTCONGRESS.COM
PRESENTED BY
TopFiveGlobal
PatentConcerns
for2015
WHAT KEEPS THE PATENT INDUSTRY AWAKE AT NIGHT?

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WelcomeContents
03 A NOTE FROM LEGAL IQ
09 MONETISATION, LICENSING & MARKETPLACE
Nokia’s Noteworthy Approach to Innovative Litigationx
x IP at Shell
13 PATENT MANAGEMENT & PATENT TECHNOLOGY
The IP Survival Guidex
x What Are Your Patent Technology Requirements?
17 INNOVATION & IP LEADERS
The Truth about Technology Transfer Licensingx
x Mediation: An Alternative to Litigation?
16 GLOBAL PATENT ISSUES
x A Glance at Global Trends
04 PATENT PROTECTION & LITIGATION
Google Reveals Their Secret to a Successful IP Litigation strategyx
x
x
x
A Tremendous Trinity of Litigation Tips
Lessons from the Swiss Federal Patent Court
What Skills Make for a Good Litigator?
KEY ArticleCase study Industry insight
x Three Tips for Global Litigation

TheEditor
A note from
IP professionals are constantly being pulled in different directions. In today’s global markets, it is crucial to understand international legal
frameworks across a wide range of diverse regions in order to anticipate change, harvest business opportunities and make strategic
decisions to maximise return on your IP portfolio.
With Europe introducing the Unified Patent Court, China producing initial feedback from its new specialised IP court and the US seeing an
increasingly activist Supreme Court, keeping an overview of what is going on around the globe has never been more important
Knowing how to successfully harness your monetisation strategies, protection methods and open innovation has now become the key
competitive differentiator in litigation. Additionally, the need to focus on generating value to your business through patent portfolio is
paramount, whether this is through licensing or acquisition of patents and partnerships. Implementing and executing a powerful patent
strategy which adds value to the business, aligns with business strategy and works closely with R+D/ management has never been more
important.
In May 2015, Legal IQ surveyed its community to find out how
current global patent issues were affecting the industry. Key
findings from our survey include:
Maya Fowell
Editor, Legal IQ
Protection and Litigation
Ever wondered how Google continually deliver a successful IP
Litigation strategy? Google’s Director IP and Litigation, shares
their secret to success.
What lessons can an Adjunct Judge from the Swiss Federal
Patent Court teach you, and where do you fall on the Good
Litigator spectrum? Take our test!
Monetisation, Licensing and Marketplace
How are you making sure the monetisation of your patents
remains consistent? Nokia has six cost-effective solutions you
can implement today.
Patent Management & Patent Technology
What are your patent technology requirements? Are you investing
in the right technology for the right areas of your business? Dako
Europe unlock the door to knowing which patent technology is
essential for your business.
Want more? Questel present the essential IP Survival Guide to
make this year the year for profitable investment.
Global Patent Issues
The EPO share the essential developments happening in the
European Patent System, whilst we take a loot at global trends
and present three tips for effectively litigating worldwide.
Innovation & IP Leaders
What to do when litigation is not the best course of action and the
absolute truth behind technology transfer licensing.
INSIGHT
INCLUDES:
I HOPE YOU ENJOY
READING OUR
REPORT
x
x
x
42.86% of survey respondents selected the U.S asthe
region they had seen the biggest increase in patent
involvement for their companies over the last 18
months
The three key challenges identified to be faced by the
majority of companies in the near to mid future in the
patent field were:
1. Finding and being able to successfully use general
defence strategies to protect your global portfolio
2. Understanding and analysing changing rules across
different jurisdictions due to the lack of harmonisation
3. Being cost effective with litigation
When asked which types of topics were most relevant
to their day to day work, 50% of respondents selected
IP portfolio management and technology as their
highest concern. 42% highlighted patent litigation,
protection and enforcement as their second biggest
concern which was closely followed by 33% identifying
patent monetisation, licensing and marketplace as
their third major concern.

Google Reveal Their Secret to a Successful
IP Litigation Strategy
Protection &
Litigation
Catherine Lacavera is the Director of IP and Litigation at Google.
Named one of Fortune Magazine’s 40 Under 40, a U.S. Rising Star
by Legal500, and one of the most innovative in-house counsel by
the Daily Journal, Google’s secret weapon in litigation wars is
Catherine Lacavera.
Catherine joined the company in 2005 and has built Google’s
intellectual-property litigation department through its aggressive
defence strategy. She manages a team of over 25 intellectual
property attorneys and technical advisors. She oversees a
global litigation docket that has included more than 500 patent
infringement and other intellectual property matters, including
Viacom and other copyright litigation against YouTube, and Apple,
Microsoft and Oracle copyright and patent litigation directed at
Android. Catherine oversaw Google’s 2012 victory over Oracle’s
IP attack on Android (Oracle has appealed); twice her team has
triumphed against Viacom in long-running copyright litigation;
and she also advised on Google’s $12.5 billion Motorola Mobility
acquisition in 2012.
In the US, there is a lot
of mandatory mediation
as part of litigation
CATHERINE
LACAVERA
Maya Fowell
Due to the implementation of the America Invents Act, the
landscape of US litigation has changed. What does this
change mean for Google?
Catherine Lacavera
There have been two significant impacts of the America
Invents Act from my perspective, the first one being on the
venue. We saw quite a shift from most cases being filed in
Texas to many litigations being filed in Delaware, and the
number of litigants in a case has also decreased. Plaintiffs
previously included 20 or more co-defendants in a single
case in order to solidify the venue in Texas, but the American
Invents Act does not permit that. Under AIA, you can only join
parties if there is true commonality of issues. That has meant
that there are fewer co-defendants in cases, which makes it
easier to manage the cases but also harder for plaintiffs to
obtain venue in jurisdictions where it is inappropriate. That
is one major shift, although we are seeing a retrenching on
venue. Even though there are not as many co-defendants in
a single case, we are seeing consolidation of cases in venues
for discovery purposes. As a result, the venue change has
not been, over time, as impactful as it was at first.
The second major shift would be in the re-exam or patent
office proceedings. Inter partes review has replaced inter
partes re-exam. Inter partes review is significantly different
in that it is much more like a litigation at the patent office
with depositions and discovery. Interestingly, there has been
a move towards a more bifurcated system, like Germany.
Although the U.S. district courts evaluate invalidity, unlike
in Germany, the patent office proceedings on invalidity are
much more like litigation.
MF How is Google adapting and reacting to the change.
Can you give me an example?

CL We are taking advantage of these procedures. We have to adjust
to accommodate them but there has been a shift in the way that we
are litigating cases. Initially we were trying out these procedures and
figuring out what the differences were and how the law would be
applied. We are tracking all the decisions that are coming out of the
patent office very closely, including issues around the real party in
interest, as well as the grant rate for reviewed patents. Also, we are
considering whether or not to file a covered business method versus
an inter partes review proceeding, or both. We are testing the limits
of what it means to have the financial hook to qualify for CBM. We
are monitoring all those decisions and adjusting on a real time basis.
MF What new litigation strategies does Google have in place as a
result of the change in US litigation landscape?
CL We are using the patent office proceedings that were not
available before. The result of that has been a lot more stays of
district court litigation. That has consequences in terms of the reality
of estoppel on invalidity issues. You have to be much more exhaustive
in your search for prior art when you file these invalidity proceedings.
You also have to time your filings to avoid statutory bars and be sure
to name the correct real party in interest.
There is also a counsel shift. Previously, we would primarily hire
litigation counsel for the litigation, and then patent counsel for
the patent office proceedings. Now, the patent office proceedings
are much more like general litigation with depositions and other
discovery, so there is a much closer tie between the counsel that is
handling the litigation and the patent office proceedings.
When you have scale, you have the benefit
of optimising the way that you are handling
cases by identifying areas that are duplicative
and optimising those with models
MF When you are litigating at a scale that Google does, a huge
conglomerate that everyone identifies with, how does your day-to-
day differ in comparison to other companies? Does it differ?
CL When you have scale, you have the benefit of optimising the way
that you are handling cases by identifying areas that are duplicative
and optimising those with models. This frees time up for the stickier,
newer issues. An advantage of having so many cases is that you
are able to gather the best practises of various different firms
across various different cases, and use the best wisdom on strategy
questions and on submissions. That has been hugely advantageous
to us.
It is also a lot more fun for my team to get to see some of everything
going on at any given time. If they are interested in seeing a summary
judgment hearing, or a Markman hearing, or a deposition, or an
expert deposition, they can participate in anything at any given time.
The learning curve is steep but is also rapid because at Google you
are exposed to many different pieces of the litigation simultaneously.
MF When I think of innovation, I think of Google and I think of
Apple. In your opinion, what sets IP litigation at Google apart from
its competitors?

You have to be much more exhaustive in
your search for prior art when you file these
invalidity proceedings
CL Between us, Apple, Microsoft, Samsung and others in the
technology industry, we have a lot of patent litigation and a lot of non-
practising entity patent litigation. Many of us are coordinating on
reform efforts and are coordinating on how we are dealing with non-
practising entities. Some of us are being hit with the same cases; we
are in joint defence groups, so we certainly work very closely on cases
where we are co-defendants and we try to coordinate strategies as
best we can.
In terms of differences, the set of technical advisors we have on our
team is somewhat unique, or at least it was when we formed that
team. That has been a real asset to us in litigating these cases for
the reasons I mentioned. It has been a major area of innovation. I
am not aware of other in-house organisations having the scale or the
need of also doing that level of optimisation internally.
MF Does Google explore any alternatives to litigation (e.g.
mediation)?
CL In the US, there is a lot of mandatory mediation as part of
litigation. We have a licensing group that handles licensing and if
people approach us outside the context of litigation that is certainly
preferred. We have the full gamut of legal staff making sure that we
operate in a lawful way and handling engagements on a case-by-
case basis.
GOOGLE’S TRINITY
OF LITIGATION TIPS
Optimise for strategies across cases
Our strategies allow us to have consistency among the cases
and to also optimise for costs. We have done a number of
things like bringing our discovery in-house in order to manage
discovery costs, negotiating agreements internally and across
cases for consistency, and managing with a set of repository
forms that allow us to be efficient. We are able to litigate the
cases cost efficiently because of these things.
Choose the right counsel
Choice of counsel is really important and finding the right team
to represent the company the way it wants to litigate the case
is imperative. It is critical to tailor the counsel to the case.
Training outside counsel on how to work with you and meet
your expectations is also very important.
Create the best in-house team
I am proud of the patent litigation team that we have at Google.
I have the good fortune to work with a really excellent set of
colleagues and to be given the resources to invest in their
expertise. We also invest in our in-house team of technical
associates, and that is the one area that is really helpful for
patent litigation. We have found it very helpful to have engineers
on our team helping us dive into the technical details of the
patent litigation. It has also reduced the burden on our product
managers and engineers.

Lessons from the Swiss Federal Patent Court
Christoph Gasser (Dr iur (Bern); LLM (Michigan)) is a partner in the Zurich office of Staiger, Schwald & Partner AG and the head of
the firm’s IP department. His practice includes litigation and advice in all fields of intellectual property, including the prosecution
and enforcement of trademark, design, copyright, domain name and unfair competition matters and the enforcement of patents
- in particular in the mechanical and pharmaceutical areas. He also advises on commercial contracts such as distribution and
licensing agreements, research and development cooperation and franchising.
Mr Gasser is an adjunct judge of the Swiss Federal Patent Court. He has also lectured on trademark and copyright law at the
Swiss Federal Institute of Technology, Zurich. He teaches IP and unfair competition law at the Swiss Federal Institute of Intellectual
Property, Bern and serves as an expert examiner for the Swiss patent Bar examination.
CHRISTOPH
GASSER
Maya Fowell If you were to sum up the
current ideology driving decisions at the
Swiss Federal Patent Court, what would it
be?
Christoph Gasser Overall we have very few
decisions, 85% of the cases get settled. The
court specialises in creating a first hearing
after each party has handed in their first
brief. Then a delegation of the court gives a
preliminary view on the case and that allows
the parties to assess the further process
of the entire case. That means the parties
relatively know whether they will prevail, or
to what extent they will prevail or lose the
case. Now, of course it is just a two person
panel out of five judges, but that still gives an
incentive to settle the case, and if possible, to
find a win-win solution.
Now, having said that after three years in
practice, this court has not yet issued many
decisions; so in that sense it is difficult to say
whether it is rather in favour or not in favour
of patent owners or infringers. With regards
to its justice, I am not in a position to assess
that, but what I can say overall is I think the
quality has clearly increased compared to
what we had before, in several cantons.
The strategy, the way of the European Patent
Office to handle cases in terms of novelty,
incomes of non-obviousness has factually
been observed to a considerable extent by
the Swiss Federal Patent Court, which is what
I notice as an attorney; not as a judge, because
asajudgeweareofcoursefreetohandlecases.
We certainly look at our jurisdictions, as it is our
obligation to be to some extent in compliance
with other jurisdictions to harmonise the patent
system, and patent law in Europe.
I think that the system is working quite well, given the short time we have had so far, However,
as 85% of the cases get settled it is relatively early to give a full view of the entire picture here.
MF Are there any areas that you think need improving at the Swiss Patent Court?
CG What could we make better? Maybe more advertising of the fact that litigating in English
is a possibility which in turn would help us to attract more cases. However, the problem is both
parties must agree on English and usually if one party proposes having English the other party
rejects, because they think if the case is not in English then other party may be disadvantaged.
In terms of timing, we are not really able to change that as it has been imposed by this court
in Strasbourg. Overall, it is a general hope of the patent court to get more jurisdictional power
in the sense that it will not only get civil law but for instance also criminal law, but that is down
to the legislator rather than something we can do internally.
MF Do you think the Swiss system works well?
CG I do think it works well, it is certainly much better than it used to be and I think the quality
of the decisions has improved. In order to keep improving our quality it is important that we
always look at what we can do better. We certainly have our restrictions in terms of case
load, as a matter of principle to have just full time judges would be better with respect to this
conflict of interest issue, however the country is so small and does not have enough cases to
allow us to appoint ten or 15 judges to take care of all these issues. That would require setting
up a full IP court of first instance of the entire country, but that is politically not doable and not
welcome at this stage. Overall, I think we have experienced judges who have spent a lot of
time with patent law.
We are certainly aware that most cases are handled in Germany, that they may have an
extremely high quality, that there are also very good jurisdictions in the Netherlands, in the
UK, and to some extent France, but we have the right to try to be competitive with them.
In terms of cost, well, we have relatively high prices which is a given in this country. On the
other hand, I do think that the court is reasonable and that the attorney fees are relatively low
as a result.
Although I think the system has improved in comparison to what we had before, before we
had 26 states and every state was allowed or able to handle patent cases with competence.
There were three, four states or cantons which were experienced. Zurich, for instance, to
After three years in practice,
this court has not yet issued many
decisions; so in that sense it is
difficult to say whether it is rather
in favour or not in favour of patent
owners or infringers
It is a general hope of the
patent court to get more
jurisdictional power

some extent Berne or Basel, and of cantons, smaller cantons in the
French speaking area, in the mountains, may have had one case
in five years. They had no chance to be able to really handle these
cases, so they tried to find a patent agent, an expert, who was actually
deciding the case, or they tried to find any formal reasons to get rid of
the case and that was annoying. Bearing all this in mind, I think the
system is good for what we have.
To some extent I am partial not only as a member of the court, but
also as the general manager of the Swiss IP Association, which has
contributed to the creation of this court. We are of course open to
get criticism and we try to criticise ourselves as well, but relatively
speaking so far it has been a great step.
MF The unified patent and UPC will not directly impact Swiss
patent court decisions but indirectly, do you think it will?
CG Absolutely, as it has always has. In the past, if there was a case
from Germany or a decision from Germany, this decision was mostly
observed by Swiss courts. Now, it may have changed to some extent
because the Swiss have the patent court and seems to have enough
experience. The influence from is still significant, but not prevailing.
With this new system it may be that the significance of this decision
may decrease as a first step, because we do not yet fully believe in the
reliability of those decisions.
I speak of Germany because most patent litigation is handled in
Germany, and if you are in Germany you have virtually won Europe.
Cases under the UPC will become settled, but I do not think that the
influence will increase. As I first said, it may rather decrease; it may
also be that the system becomes slower, so that parties come to
Switzerland to have an early decision and a precedent to be shown to
a potentially slower court under the UPC system. Again, that depends
on how the UPC system is aimed to develop.
MF Do you see Swiss courts as being in competition with other
courts based inside and outside of Europe?
CG Outside? No. Inside, is it competition? Formally, certainly not, as
no other court has jurisdiction on Switzerland, except for the European
Court of Human Rights in Strasbourg, which I mentioned before.
A competition extends to say you attract patent owners by a patent
owner friendly case law system. So there are courts in Germany
which have the reputation of being patent owner friendly, and of
course then people have a go there.
Do we see competition? From a formal point of view? No. From a
practical point of view, I think we should offer a clear, reliable and
reasonably expensive court, but to compete with other courts may
make you biased. For instance, as a matter of principle we wish to
make money and that means we wish to make a court fee.
That means the more calls, the more cases you attract, the more
court fees we get and that usually means we must attract infringed
parties, it means patent owners, and that means working on patent
infringement.
On the other hand, we must allow for a correct plaintiff in case of
nullification actions.
That means we must rather be inclined to accept infringements and
to regard patents as void, in order to attract as many plaintiffs as
possible. I do think such an approach is only economic. It is finding
the job to look at what the law is from an objective point of view,
basically irrespective of whether you attract people or not. But what
is certain to shoot to be is reliable and quick. In this sense, you are
called to be competitive and to say, okay, we wish to have protection,
and that is our pride, and that means also that we are fast, that we are
reliable, that our proceeding is clear, and then we may attract cases.
To some extent I am partial not only as a
member of the court, but also as the general
manager of the Swiss IP Association
I think we should offer a clear, reliable and
reasonably expensive court, but to compete
with other courts may make you biased
We are certainly aware that most cases
are handled in Germany, but we have the right
to try to be competitive with them

From a court point of view - if I look at briefs, being a judge, I would
suggest being clear as they are relatively short, not making too
much noise and not making stupid jokes or insults, it does not bring
anything substantial to the brief.
From a parties point of view – be responsive, give clear-cut advice,
present solutions rather than questions, lead the client, price is
important but maybe even more important than the price is reliability.
That means make a budget and observe the budget, and if the budget
cannot be observed, get to the client before, and say ‘look, I need
more money, do you wish to continue?’, and then accept their answer.
Overall, a good litigator focuses on price, is responsive, efficient and
clear.
They give the feeling that they are in business to support the client,
and not just in business to make turnover for their law firm. I also
think that more partner hours on a case is generally welcome, as
the younger people are, the more expensive they are to some extent
as, maybe, a partner always 50% more expensive than an associate
hour, and a partner may be three times quicker. That is something
clients know.
On the other hand, it is also our job to educate younger people, and
everybody has been young in former times, so you have to get the
right kind of a balance. But the client does not care about education
of young people; the client is caring about what he has to pay, and
what she gets at the end of the day in terms of access.
MAYA FOWELL SPEAKS TO ADJUNCT JUDGE CHRISTOPH GASSER ABOUT THE QUALITIES
HE HAS LEARNT MAKE UP A GOOD LITIGATOR
Which characteristics are most closely related to your litigation style?
(please tick the option that most applies)
CLEAR AND CONCISE
RESPONSIVE
CALM
PRAGMATIC
PROVIDE SOLUTIONS
DILIGENT
OPEN
DESCRIPTIVE AND ELABORATE
INFLEXIBLE
LOUD
IMAGINATIVE
ASK QUESTIONS
SPORADIC
CLOSED
Vs
Vs
Vs
Vs
Vs
Vs
Vs
Judge Christoph Gasser: What skills make for
a good litigator?
Take this test and read on to find out what your results mean
Do you have what it takes to be a good litigator?

Nokia’s Noteworthy Approach to Innovative
Litigation
Monetisation
Dr Clemens-August Heusch LL.M. is head of European
Litigation at Nokia where he is responsible for litigation and
arbitration throughout Europe, Near East and Africa with a
strong focus on multi-national IP litigation. Since 2008 Nokia
has been involved in more than 200 patent cases worldwide,
including defending claims for infringement brought by
Qualcomm, Interdigital, Apple, KPN, HTC and IPCom. In recent
years Nokia has also asserted its own patents against Apple,
HTC, RIM and Viewsonic.
For these cases, Nokia’s litigation team has been awarded the
in-house team of the year 2009 by Managing IP magazine, and
was nominated for this category by German legal directory,
Juve. Clemens was awarded by Juve for “40 unter 40” (40
German top lawyers under the age of 40) in 2012, and was listed
by Legal500 in the category Corporate Counsel 100: Germany.
Before joining Nokia, Clemens worked as attorney-at-law at
the international law firm Bird & Bird LLP (2004–2008)
CLEMENS-AUGUST
HEUSCH
THREE STRATEGIES TO PROTECT YOUR
PORTFOLIO AND BOTTOM LINE:
1. Filing Strategy:
In which jurisdictions do you need patent protection?
Focus on main markets here, but also jurisdictions which
are of special importance for competitors, e.g. their
most important markets or production places, logistic
hubs, but also jurisdictions with favourable pro-patentee
jurisdictions. Commercial and other considerations can
also play a role here: the higher the value, the broader
the patent should be validated. If it is a patent on the
production process, then of course coverage in countries
where production is likely / possible is sufficient. Also
in cases where it is commercially not attractive to have
different products for the various markets, it might be
sufficient to concentrate on key jurisdictions.
2. Divisional applications / limitations:
These can be very powerful tools to come to overcome
potential validity concerns and at the same time get more
relevant patent claims. In some cases, patent applications
are drafted rather broadly to cover as much as possible.
Later during prosecution or in other ways the patentee
might become aware of closer prior art. However, this
can cause validity concerns in later infringement cases
which especially in bifurcated jurisdictions can lead to
stays and / or dismissals. Therefore it can make sense
to limit the claims prior to starting infringement cases. It
may also turn out that the market develops differently than
expected at filing. Then divisional applications might give
the possibility to get more useful claims.
3. Defending validity attacks:
Especially preparing good auxiliary requests and being flexible.
Once patents are subject to validity attacks, you have to make a
commercial decision on whether it is worth to defend the patent
considering the value of the patent, the strength of the validity
attack and potential litigation costs. There might be situations
where you can avoid invalidation actions and especially publication
of validity attacks by early settlements. But however, invalidation
actions also have some strong upsides: in big portfolios, it might
be worth testing validity of some patents. Because some patents
might be found invalid, but those found valid are afterwards even
stronger: you can always point to the fact that it was tried to
invalidate without success.

THREE COST-EFFECTIVE STRATEGIES TO
LITIGATE:
1. Choice of defendant:
If we assume there is global coverage of a patent, then there can maybe
many infringers in the distribution line: the producer, the importer, the
wholesaler or the retail seller, because production as well as import
or sale can be acts of infringement. Therefore the patentee has the
choice whom he wants to sue. There might be strategic considerations,
for example the jurisdiction: the producer might be domiciled in a less
favourable jurisdiction than the wholesaler. On the other hand, of one
company in the distribution line is at the same time also an important
customer of the patentee that might be a good reason not to sue him.
Further considerations could be the litigation record of the potential
defendant: are they known for strong defences, or rather known to
settle quickly? Also the financial situation can be of importance: is
the defendant in case he loses able to reimburse the plaintiff’s costs?
2. Choice of jurisdiction:
In patent infringement cases, there can be quite often a choice where
to sue (as long as the patent is validated in the respective jurisdiction).
Since the infringing product is often offered in many jurisdictions, all
these jurisdictions might be places of tort and thus have jurisdiction.
Then the patentee will consider where the most favourable places for
him are: which jurisdictions are known to be patentee-friendly? He will
also consider willingness to grant injunctions, cost reimbursement,
general level of costs, and the effect on infringer (where would an
injunction have considerable impact on his business?) or elements
of the legal system such as bifurcation. Also the level of damages
granted for past infringement can be decisive, the availability of
disclosure or the speed of the lawsuits can be considered. It is further
of importance what remedies are available, and whether first instance
decisions are enforceable. All these factors can lead on a case-by-
case basis to different results, so that the best place of litigation can
quite vary from case to case.
3. Portfolio arbitration:
The usual way to enforce patents is to sue infringers, and then the
patentee might get an injunction stopping the infringer from using his
patent. The infringer then can either take a license, or change his product
to avoid the patent. However, if there are large portfolios, the patentee is
willing to grant a license, and the infringer is willing to take a license, but
parties cannot agree on the royalty rate, then it might make sense for both
sides to set up a mechanism just to set the rate, like a court proceeding
or arbitration. Then it does not make sense to look into infringement and
validity of each and every patent, but rather take an economic approach,
assuming that there will be some patents invalid or not infringed, but also
others which are valid and infringed. This can be a much faster and more
cost-efficient way to license a portfolio. By agreeing on such a procedure,
the patentee can get to a reasonable solution within reasonable time, and
the infringer can avoid the injunction risk.

Leveraging IP at Shell
Andrew Browne, Senior IP Counsel at Shell believes the first step to leveraging IP value is to have a solid understanding of what
that value is. In this interview he outlines the steps taken at Shell to ensure that valuation methods are implemented, risks are
identified and potential roadblocks are addressed. He also discusses the potential impact of open innovation and unitary patent
litigation will have on the field.
ANDREW
BROWNE
Howcancompaniesassembleandutiliseapowerfulpatentportfolio
through effective business alignment? What are the steps to doing
this properly?
Andrew Browne: Every company will have business objectives,
a business strategy and a technology strategy that is designed to
support the achievement of the business strategy. Now, we have
IP strategies in Shell, and most companies should do so as well.
An IP strategy should not exist in a vacuum, it has really got to be
designed to help the business to achieve its technology, and business
strategies. Otherwise, it does not really serve a useful purpose. The
fact is it costs a lot of money to establish an IP position and then to
maintain it so, close interaction between the business functions is
absolutely key, in this regard.
How can companies use and leverage their IP portfolio, to build and
develop market leading positions?
AB Using Shell as an example, we are currently leveraging IP
value. To leverage IP value, you really have to have some sort of
understanding of the actual value of your IP portfolios. We carry out
quantitative valuations of bundles of IP assets on a regular basis, and
this involves the application of income valuation methods. Eventually
we arrive at a net IP value.
The focus cannot simply be on the number that is given to the value of
an IP portfolio, companies must also seeks to identify risks – and that
is risk In terms of legal IP risks, technology risks, and business risks.
Whether within the IP function or n terms of more patent filings,
looking at the risks, you can actually then seek to address them.
Having this direction can steer the business and perhaps the areas
that need an increase of R&D.
How can licensing in joint ventures be used to meet business
objectives?
AB Shell licenses IP to national oil companies on the global stage,
as well as into joint ventures in various markets. We do not do it to
make money; we do it because it is a good strategy for Shell. It allows
us to focus on supporting our upstream business and to foster and
reinforce relationships when it comes to exploration and production.
It is also good in terms of bragging rights which help us to support
other licensing deals. When your company has a number of license
arrangements in place, it demonstrates to the market that you have
the relevant smarts, capability and know-how.
In a joint venture there is a variation on a theme because it is simply
a vehicle, through which you will license IP. Again, it is about trying
to increase your reputation and brand in the marketplace through
successful licensing and joint ventures. Furthermore, licensing IP
and putting IP into joint ventures can assist in terms of learning where
pressure points may arise and help make way for new improvements
which you can then feedback into your business.
Joint ventures are about trying to increase
your reputation and brand in the marketplace.
What will be the major changes, do you think, in the intellectual
property field, in the coming 18 months?
AB Open innovation is a major challenge. I think that any company
that suggests it has a closed innovation model is not being truthful
about the nature of R&D. No individual company has a monopoly in
relation to R&D smarts. Open innovation is something that is growing
exponentially in the marketplace and it is something that companies
need to look at very carefully to avoid the risks of contamination
against their own R&D efforts. It also needs to be looked at as a
means of getting to markets more quickly, and having something that
is going to deliver on needs.
I think one of the concerns is around the continuing fragmentation
in Europe when it comes to enforcing patents. How do we ensure
freedom to operate?
Globally, I think things are improving in the Gulf and in Asia when it
comes to protecting and enforcing IP. There are ongoing challenges
there, the reality is that most companies operate on the global stage,
and it is quite expensive and time consuming to have a clear view
about what the challenges and risks are, and how best to address
them.
An IP strategy should not exist in a
vacuum, it has really got to be designed to
help the business to achieve its technology,
and business strategies.

Mediation: An Alternative to Litigation?
Edward Smith is an Accredited Mediator at the IPO. Edward has been a hearing officer at the UKIPO for 13 years, working across
both inter and ex parte matters arelating to trade marks.
EWARD
SMITH
For mediators, the job is an exercise in rescue, to rescue people from
the courts and sometimes from themselves. The job of the mediator
is to move the party from insisting on its ‘position’ to focussing on
its ‘interest’.
The mediator does not pass judgment, but facilitates agreement
arrived at between the parties. It is impossible to predict what that
agreement may be. In trade mark disputes it is often a co-existence
agreement, a rebranding or sale. In patent disputes it could be
a licence. But it is a dangerous presumption to make that such
outcomes are inevitable in any given dispute.
It can be hard where the levels of trust are non-existent. The parties
can be entrenched and sometimes the amounts spent on legal
fees are colossal. The parties must willingly arrive at their own
agreement.
An advantage mediation has over the Court
is that no dirty washing is aired in public
Mediation is here to stay though. The courts encourage it, especially
where the costs incurred by the parties are disproportionate to
the claims being made. Such is the case with many IP disputes.
Intellectual Property Enterprise Court (IPEC) rules contain cost
capping. This gives further incentive to mediated solutions as an
alternative to gambling cash away with little or no hope of recovery.
The IPO has 5 accredited mediators. The service was revamped in
April 2013 and since then has mediated 12 disputes involving IPO,
IPEC and High Court actions. 8 of these have settled on the day or
just afterwards.
Further incentive to mediate is that the outcome of many IP disputes
is hard to predict. Judges and hearing officers are required to adopt
legal constructs such as the ‘average consumer’, the ‘person skilled
in the art’, or the ‘informed user’.
Mediation is here to stay; the courts
encourage it, especially where the costs
incurred by the parties are disproportionate to
the claims being made
Such people do not exist, save in the mind of the judge. This can
render outcomes less dependent upon fact and more dependent on
a judge’s sense of what may be the most just outcome.
Most importantly, the ‘solutions’ offered by the court are not
necessarily what the parties really want. Often the first words spoken
by every single party at a mediation, even with their legal advisers
present, are something like, “Look, I just want this to go away”.
In many cases the parties just want to get on with their businesses.
For mediators, the job is an exercise in
rescue, to rescue people from the courts and
sometimes from themselves
This is why mediation can be so rewarding in that the control is
handed back to the parties. But it also can be frustrating at times
and involve commitment above and beyond the call of duty. Tales of
sessions lasting well into the early hours are rife in the profession
and even amongst colleagues. Another advantage of mediation over
the Court is that no dirty washing is aired in public. Everything is
confidential and without prejudice as far as the court is concerned.
The biggest obstacle though to mediated settlement is that, simply,
the wrong people are at the mediation. The mediator insists that
those present have the authority to settle but it can become clear
that this is not always the case. When this happens the mediation
will often fail.
Ending on a positive note though, there is no better feeling for
a mediator that when the parties sign a settlement agreement.

The IP Survival Guide
PatentManagement
&PatentTechnology
Mr. Charles Besson serves as the Chief Executive Officer
at Questel-Orbit, Inc. Charles Besson was born near
Lyon, France and studied for a degree in business and
administration from Audencia Management School in
Nantes. He then went on to study for an MBA at the
Sorbonne in Paris, as it had always been his ambition to get
into business.
After his studies he got a job with a French company called
Lectra, which made equipment for the clothing industry.
He worked in the finance department of its Brazilian
subsidiary, but after a couple of years transferred to the
sales department, which allowed him to travel all around the
region. He was eventually appointed to run the Colombian
subsidiary of Lectra and moved to Medellin.
In 2001 he got a call from his father, who asked him to join
Questel as head of the US subsidiary following the buyout.
This meant moving to Washington DC, which Besson admits
he was not totally thrilled about.
Since 2001, Charles has taken Questel from strength to
strength focussing the company on its core business of
supplying intellectual property information to lawyers,
researchers and executives. He believes that, although
the needs of these clients has not changed at all, the way
they want the information presented to them has changed
radically in recent years.
Maya Fowell How would you define the culture at Questel?
Charles Besson Questel are innovative and courteous. I use
courteous because for me it is very important, it is the first step to
respect, and we make a point at Questel to be courteous to each
other, to other customers and to our competitors.
Questel has a long history of being innovative. I have been in charge
of this company for 15 years, we used to be just a distributor of
information but in 2000 we were the first company to launch an
online patent-searching tool. Now, it is very normal to have those
tools as some of them are free, but in 2000 we were the first one to
launch this tool. Following this, we were the first ones to launch a
patent family database, and then we were the first ones to launch
what we call IP business intelligence. It is a very wide topic now, but
in a word, it corresponds to being able to analyse a large amount of
patent data, and this, again, is where we have been innovative and
the first one to launch this.
For us, it is important to always be ahead because we are a small
company and we understand always being able to try new things
may be our unique advantage, compared to Thomson or CPA.
MF What strategies are you currently implementing or
concentrating on in 2015? How will this develop over the next two
years, and what are your goals?
CB We are focused on IP business intelligence. Our tag line is:
Questel IP business intelligence and this means better data for
sharper analysis.
Let me give you some details. When we say better data, it means
better translation, better normalisation of assignees, better
extraction of concepts and also a broader range of data, inclusively
outside of the patent world.
There is no secret to this, if you want to do good analysis, you first
need good data more than you need good analytic tools. So, today we
are focusing on data quality and coverage. It was our goal last year,
it will be our goal this year, and maybe later we can talk about our
goal in the longer term, but for today it is business intelligence and
quality of data.
MF If you were to sum up your clients’ top three issues, what
would they be?
CB I would say to have consistent, reliable data, reactive customer
service, and unfortunately, competitive pricing. I say unfortunately
because I would love to invoice a lot, but there is a reality. Today
everybody needs to cut budgets, so we make sure that our prices
are low and competitive. I would say that price comes third on the
podium, after reliable data and reactive customer service.
IP should keep you up at night
MF From what you have been able to learn about the global IP
industry so far, what do you see as the most important challenges
the global IP industry faces?
CHARLES
BESSON

CB I have been in the industry for more than 15 years now, and
what I can say is that today IP is more than IP. IP should be part of the
innovation process from the very beginning, and as a consequence
it should be part of the board. To be able to survive in this world,
you need to innovate, and the time for change is now. More users
are facing the challenge to make a complex field like IP useful and
understandable to the board. The board needs IP and they are just
starting to realise it, but they are still not totally aware of what can
be done, or missed, with IP. If your IP is related to innovation then as
a CEO, IP should keep you up at night. Again, it is very important to
understand that IP should be part of the innovation process from the
very beginning of the innovation. As soon as you have an idea, you
must think about IP, and this is why the board needs to understand
the power and the necessity of IP.
MF Why do you think IP continues to fall outside of the innovation
process?
CB Patents used to be just a defensive right: I have an invention
and I protect it. Now patent is an asset, but it takes time, you know?
We realise that the board still see IP as a defensive right, so they
just consider IP when they already have a product. They say ‘I have a
product on the market now, I want to be sure that nobody comes and
copies me’, that is fine, but it is already too late. It has always been
the case for most companies and even CEOs still behave like this,
I think it will take time for this idea of IP being an asset to be fully
understood by the board.
However, more and more people are understanding that before you
have a product you need to apply for a patent.
You need to think about IP even when you think about applying for a
patent. As soon as you have an idea you need to be sure that nobody
is already in the field. Moreover, if you have an IP it might be faster to
take on-board the existing IP from someone else, and this is where
we talk about open innovation. If you want to get good ideas, you
need to see what is already patented, because a lot of good ideas
come from a combination of existing ideas. If you want to be sure
that you are innovate in the right direction you need to be aware of
what your competition doing. Where is your competition heading?
Where are the white spaces? To understand this, IP should be the
core of your analysis, because IP is key for this, but not all CEOs
realise it.
MF We are constantly making things better, faster, smarter or
less expensive; we leverage technology or improve processes; in
other words, we strive to do more with less. Tell me about a recent
project or solution to a problem that Questel made better, faster,
smarter, more efficient or less expensive?
CB Overall, we made IP business intelligence accessible for the
expert patent searcher, allowing them to perform, in a matter of
hours, tasks they used to do in weeks. With Orbit, our online tool, you
can now analyse millions of patent data in a couple of hors, allowing
you to know where you are, where you competition is heading and
where you should invest. We have developed, and recently launched,
a range of patent valuation tools allowing you to evaluate your patent
portfolio against other portfolios, and particularly according to your
specific need.
Evaluation is a matter of point of view, so we have specific valuation
tools depending on whether you are looking to license-in or out
technologies, if you want to just build your portfolio, reinforce it or if
you just to clean it up. So far, we have been receiving great feedback
from this product, so this is really an area where we have been doing
faster and less expensive innovation for the customer.
MF Charles, if we are sitting here a year from now, celebrating
what a great year it has been for Questel, what did you achieve?
CB I think in a year I would be very happy if what I just explained
to you is a reality. So we will have achieved the first really reliable
patent evaluation tool, and therefore we will offer such a powerful
IP business intelligence solution that it will become obvious to the
board that great things can be done with IP. I will be happy if the
board welcome IP.
Today everybody needs to cut budgets,
so we make sure that our prices are low and
competitive
MF How do you see the company changing in two years, and how
do you see yourself creating that change? You mentioned you were
going to be focusing on data quality and making sure that you can
extract concepts and get a broader range of data, but does that
lead on in the next two years, or do your goals change after this
first year?
CB You are correct. I was insisting on data quality and coverage,
but we are getting there. We will never be satisfied with the quality
of data, but we have done the most part of the job, and in two years
we plan to move the company in another direction, which is the
open innovation field. IP and innovation are deeply connected, as I
previously explained, but also through the exchange and evaluation
of IP assets.
Today, there is a big need for companies to find IP elsewhere, so
there is already a buzz about open innovation and so far, nobody has
really found the business model around open innovation. However,
we are seeing that if you connect open innovation with IP exchange
and evaluation, then you have a business model because you can
propose a concrete solution. So open innovation and IP is the area
where we will invest in.
MF Pitch your service to me as you would in a sales meeting.
CB Questel allows you to cover all your IP needs, all along the
innovation lifecycle from the internet solution, to consulting and
finally, e-learning.
MF Describe yourself in one sentence
CB I am a happy guy and I sleep well.
We will never be satisfied with the quality of
data, but we have done the most part of the job,
andintwoyearsweplantomovethecompanyin
another direction, which is the open innovation
field

What are your patent technology
requirements?
Tom Briscoe, Director – Strategy, Global IP &
Technology at Dako Europe, is a resourceful
technology leader combining business, technical,
and intellectual property expertise to create
innovative strategies leading to world-class
patent and product portfolios. Tom is a registered
patent agent skilled at bringing cross-functional
and cross-organizational teams together for
high quality IP development projects from
architectural definition to post-development
customer satisfaction.
TOM
BRISCOE
A lot of companies believe it to be but aligning business goals with
legal requirements is not the most important issue. The most
important issue for any business is growth; if you are not growing
you are dying and so the order in which you align things is very
important. There are business aspects, technology aspects and
legal aspects that all have to be aligned.
However, the focus and the centre goal of all of those functions has to
be for the people that are executing the technology strategy to really
understand how that is going to help the business grow, and for the
people in the legal function to understand how the technologies
which they are seeking to build a patent portfolio around will help
the business grow. Then the question that people should be asking...
normally when you talk with people the first thing that they think
about is: I need IP to protect the value of my invention. My message is
that protection is an important aspect but the much more important
aspect is: I need IP to help project the value of my invention.
Therefore, the software that is most valuable from this strategic
aspect is software that helps document and communicate what
the strategy is. It is not typically specialised software built around
the legal aspects of IP or even the technical aspects of IP, but
it is collaboration software. It includes standard office software
but also some of the networked office software that helps people
understand, for example, why this invention is valuable, why the
customer is interested in products or services that have the ability to
use this invention and also how do we plan to grow the value of our
IP portfolio around those value-producing IP assets.

A Glance at Global Trends
Eric Ruhlmann is Director, Senior Patent Counsel within Actelion Pharmaceuticals Ltd’s Legal Department. Qualified European and
French patent attorney, he has been working in the field of pharmaceutical patents for almost 15 years. Before joining Actelion in
2005, Eric spent 8 years as Patent Counsel within Ipsen’s Corporate Intellectual Property Department
ERIC
RUHLMANN
One global trend seems to be the fact that increasing numbers of patent offices are not so keen to grant broad patents unless these are well
supported by concrete examples. More and more patent examiners do not hesitate to ask for evidence that an invention is likely to work over
the whole scope claimed. This is in particular true for patent offices of South East Asia and Japan.
Patent law has been fairly harmonised in the last two or three decades, the latest harmonisation being the amendment of US patent
law. Therefore, national or regional differences mainly consist in having a few more or a few less exclusions from patentability, in having
substantive examination performed or not by the local patent office, or in offering the possibility to oppose to patents after allowance or grant.
However,incontrasttothecurrentpracticeelsewhere,ChinaandCanadarecentlydecidedtorequirepatentapplicantstoprovideexperimental
data in the text of the patent application so as to show that they were in possession of the invention at the filing date. Whether other important
jurisdictions will introduce such a requirement in the coming years remains open. In any case, if you wish to obtain a patent in Canada or in
China, this is a point that you should definitely keep in mind when drafting your patent application.
Global Patent
Issues
As the development of patenting in countries such as China and
India are increasing in importance, there are key global challenges
the industry faces in successfully patenting across regions. Dako
Europe share their three top tips for patenting worldwide:
1. Recognise the value of innovation
The overall number one tip that I would give is universal, it is
understanding the innovation that you are evaluating. Whether it is
your own innovation and you are trying to build a patent portfolio
around it, or it is a third party’s innovation and you are trying to
figure out how that could be used for growth, why you should be
interested in their IP and why would they should be interested in
yours.
2. Understand different business cultures
There are regional differences in the business environment and the
way people view intellectual property in general. Understanding
the cultural differences regarding intellectual property, regarding
innovation, regarding how people do business, having someone
who you can rely on to give you a good overview of that business
environment, is the second tip.
3. Understand regulatory policy
It is beneficial no matter where you litigate to get a good
understanding of the governmental public policy interest and goals
behind the patenting system. As countries develop more and more,
their own inventors are going to be interested in having a patent
system that allows them to grow. Establishing a relationship and
an understanding of the regulatory governmental environments
around the intellectual property industry in those countries early is
imperative.
Nailing those three parts, understanding your own business goals,
the business environment of the region and an understanding of the
intellectual property public policy environment in the region, can
help your company craft an intellectual property strategy for that
region that allows you to achieve the growth that you want in that
country. It also allows the people in that country who are potential
partners and potential joint investors in a strong IP system to also
get the objectives that they want.
THREE TIPS FOR GLOBAL LITIGATION

The Truth about Technology Transfer
Licensing
Innovation &
IP Leaders
Preben Kristensen is a Senior Business Developer at
Technical University of Denmark. Preben is responsible for
both developing and negotiating licences or sales of IPRs
on emerging technologies (including patent prosecution)
into viable businesses, as well as all matters relating to
patents, be it budget, portfolio review, process definition,
prosecution, patent agents communication and policy
decision.
PREBEN
KRISTENSEN
Maya Fowell Preben, why is it important for the industry to
embrace technology transfer licensing?
Preben Kristensen I think it is because that is the way they
get access to high level research and development ongoing at
universities. Not only does the industry get all this good stuff, but
you also have a dissemination of technology that otherwise might
not be spread or utilised by companies in the same way. I think it is
fairly well-documented that if you have cooperation with universities
you become more competitive, you will have a better turnover; better
profits and you will be more innovative.
MF What would you say are the top two benefits of participating in
technology transfer licensing?
PK Number one would be access to better technology, that allows
the industry to have better solutions, cheaper, more profitable and
faster i.e. just technology that makes you more competitive. I think
that is really the top benefit and it kind of sums it all up.
The other benefit is that you get to be in touch with universities with
cutting edge technology; you know what is going on and you have the
opportunity to take on that technology before everybody else does,
not after your competitors have taken it on.
MF The first benefit you mentioned was access to better
technology; in your opinion what is wrong with the current
technology that is being used?
PK There is nothing wrong with the current technology, but if
something better gets developed or put together by universities, why
would you not want to use it? There is a lot of innovation going on
in the industry: if your company does not take on new technology
and a competitor does, you will immediately be behind them as
they continue to be faster and better suited for competition. If you
do not want to lose your competitive edge you need to take on new
technologyallthetime;Ithinkthatisawell-knownfact.Development
moves forward whether you come along or not, adopting it is a choice
you have to make yourself.
MF What are the drawbacks that keep people from participating in
technology transfer licencing, and how can they be overcome?
PK I think there are two; one is there is a perception or prejudice
that universities are greedy, that they want all the money in the world
for these very cool innovations and inventions that come out of them.
The other is that universities do not necessarily understand that
there is a lot of risk associated with putting in and taking on this
new technology and bringing it forward to the market instead of just
taking it on earlier.
The way to overcome that prejudice is to make it clear that the
universities understand that there is a difference between some
fancy technology development at university and then actually having
it on the market, having it approved and ready for the market. At
least at my university we are fairly good at making a risk-sharing
agreement. So you may pay a lump sum when the agreement is
made for this technology transfer that ensures that the university
gets some of its costs covered and also ensures that the company
that takes the licence is interested in developing it further instead of
just shelving it, shelving the technology now that they have a licence
to it. Their competitors cannot take the licence and everybody is
happy.

Typically what we do is we build in some milestones, it can be
patenting milestones, national phases can be granted the patent
in different jurisdictions, it can also be commercial milestones
that a prototype is made, that it is ready for market, that it is on
the market and selling in some kind of quantity. Then typically we
also want to put in running royalties so once the product is on the
market and starts selling, somehow there is a royalty that then goes
back to the university that made this deal. That is also to a certain
extent based on the fact that Danish universities at least have to
take a market price and so we often prefer this model where you
take money along the way. So as you move forward and the product
actually is successful and gets on to the market and starts making
a turnover for the company then the royalty also starts flowing to
the universities, but not necessarily before that. That also of course
means that for whatever reasons if a product fails in getting to the
market well, the money spent by the company is not that big and for
the university the price that was agreed on actually happened to be a
smaller price but it’s still the right price.
Finally I should maybe also say that sometimes you can do a windfall;
so if something really hits the big time out there the university also
likes to get a kickback or a higher royalty rate at that point, and
that is again back to the market price. But I think the main thing is
that universities are very ready to listen to different ways of doing
this and if you can argue why your business model is better, how
you are going to market this and how you see the market and the
universities, then we are ready to listen. The TTOs that are here
today, they accept that yes, this is unclear and most IT companies
have a good understanding of how to bring a product to the market,
how to commercialise it, how to monetise it, than the university does.
So my point is, or my message is that universities are ready to listen
to the risks that are and so those drawbacks that are out there can
be addressed by making a proper licencing agreement.
MF Can you give me an example of technology transfer licensing
working so far?
PK I mean there are a number of agreements that the university I
sit at has been doing; last year we had ten spin-outs, or 11 spin-outs,
depending on how you count it, but almost a dozen spin-outs where
technology was transferred from DTU to the spin-out. A spin-out is a
start-up company that starts from scratch and needs to go out and
get investment. The deals that were made there made sure that no
money was being paid, or very little money was being paid up until
the point the start-up begins to actually make some money and have
some turnover, then the agreement will start also paying off DTU
with royalties.
There is actually a Danish company called Nordic Power Converters
that got an agreement last year and they are actually moving along
very well and they just got a second investment. They still do not have
a product that is being sold but they are moving ahead quite well
and we think it is a very promising technology. DTU has had a few
exits where a fair amount of money has been made, we are talking
millions of pounds at exit time, and so of course those are success
stories for the university. Naturally there will also be companies that
do not make it for whatever reason: the technology was not ready,
the team was not the right; there are many reasons why things do
not work out.
Universities are, I would say, quite ready to accept a lot of risk. I
think we protect technology that most companies would not want to
accept because it is too risky.
MF Would you say that technology transfer licensing is something
that the Danes are only participating in, or are you seeing
engagement globally?
PK I definitely see it globally; it is ongoing all over the world. There
is a lot of talk about innovation and renewal of your business and
I also think there is a lot more R&D being outsourced so it is not
in-house. Instead of having your R&D in-house you go out and buy
it promising technologies, promising companies and that I think
should also include scouring universities for promising technologies
to take in, or at least scouting the start-up world for when they start
to show, or have a business that looks profitable, that the bigger
companies come in. I think the latter works very well; I think the first
one, taking the university technology right out of the hands of the
technology and then taking it from there, there is more work needed
to be done in that area.
I guess it is a question of if it is very early, what is the time to market
horizon? Is it ready next month or is it going to be ten years down the
road before it is ready? Naturally that makes a huge difference for
a new company planning to invest in an area. But I see TTO offices
starting to become more and more professional all over the world. I
think in the UK they have been around for a long time, Stateside they
are very good. I would say Continental Europe is also really starting
to move along in this area, understanding how businesses work, and
businesses are also starting to understand how universities work
and what the cultures are internally at universities.
MF Preben, you have spoken a lot about the risk involved with
tech transfer and the perception that people have that universities
are greedy and only want money, so what do you wish more people
knew about technology transfer licensing?
PK Yes, I think I am just going to reiterate myself here and say
universities understand the risks that companies take on when
they take on technology from universities, hence universities are
not greedy, they are ready to work together with companies and
make a deal that ensures that everybody is happy. We argue that
from the TTO side we actually understand quite well how companies
are working and if they are ready to spill the beans with us, tell us
how they are seeing the market, how they are going to approach the
market, we will be ready to work with them and make sure that a
deal is made that is to the advantage of all the parties involved.
If you do not want to spill the beans with the TTOs, if you do not want
to say where you are coming from for whatever reason then you may
have the more usual reaction or confirmation of the prejudice that
the incumbents just want a high price for their technology up front.
So I think it is an issue about companies or universities starting to
understand each other’s objectives better; a lot of universities in
Eastern Europe are publically funded and so that means that there
is another concern to be made on top of the economic one. It could
be political, it could be innovation bias, and it could be generating
growth. But that is what it is about, understanding each other and
then a good deal can be made, at least that is my experience from
the TTO that I work in, or for the university that I work in.
I think we protect technology that most
companies would not want to accept because it
is too risky
If something better gets developed or put
together by universities, why would you not want
to use it?

2015
Conference:29-30thSeptember2015
WorkshopDay:28thSeptember2015
CrownePlaza,CopenhagenTowers,Copenhagen,Denmark
For more information or if you have already decided to join us then you can book your place one of the following ways:
www.patentcongress.com | enquire@iqpc.co.uk | +44 207 036 1300
This is just a small sample of the sessions covering these topics.
Find out more by downloading the full agenda
If any of the topics discussed in the whitepaper are of your professional concern then you
might be interested in attending 9th Annual Global Patent Congress.
Here’s a quick snapshot of how closely the event programme is aligned to
the five concerns in question.
Patent and Litigation:
The most successful global patent litigation strategy is -
presented by Catherine Lacavera, Director, IP and Litigation, Google Inc.
Monetisation, Licensing and Marketplace:
The impact if SEPs and FRAND on your bottom line -
presented by Clemens Heusch, Head of European Litigation, Nokia
Patent Management and Technology:
Strike the right sourcing balance to effectively support the IP function and business –
lead by Federica Lolli, General Cousel, Datalogic
Global Patent Issues:
Generating a holistic grip of global patents: navigating successfully through
challenging waters. Session lead by:
Dr Matthias Zigann, Judge, Munich Regional Court I, German
His Honour Michael Fysh QS SC, Former Senior Judge, Patent County Court,
England and Wales;
Christopher Gasser, Adjunct Judge, Swiss Federal Patent Court, Switzerland
Innovation:
The future impact of global patent mapping and rating: the transparency paradigm –
Frederic Caillaud, Director of Licensing, L’Oreal

Top Five Global Patent Concerns For 2015

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