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1/22/2021· Patents

Right-Pricing Cellular Patent Licensing in 4G and 5G Connected Vehicles

By: Keith Mallinson

While litigation is bogging down the licensing of cellular standard essential patents (SEPs) in vehicles with disputes about where in the production supply chain licensing may or must occur, this is also delaying payment of Fair, Reasonable and Non-Discriminatory (FRAND) royalty charges in these cases and causing confusion about licensing value.

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12/28/2018· Intellectual Property

Commercially Reasonable Efforts - How an Expert Can Help

By: Peter Crosby

Imagine this scenario: Early stage company Smallco develops an exciting new technology, which it uses to create the prototype of its first product - Brakethroo! A large company in the same field, Bigco, becomes aware of Brakethroo, and realizes that if the product works as hoped, it could be a valuable addition to Bigco's product range. Bigco offers to buy the technology and product from the shareholders of Smallco. The merger and acquisition (M&A) agreement specifies an up-front payment, and one or more payments dependent on achievement of milestones. Bigco agrees to use "commercially reasonable efforts" to achieve the milestones. Smallco and Bigco sign the agreement, the shareholders of Smallco get an immediate payout and look forward to further milestone payments.

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9/12/2018· Intellectual Property

Development of Innovative New Standards Jeopardised by IEEE Patent Policy

By: Keith Mallinson

In March 2015, IEEE significantly amended its patent policy in what was couched as an "update" but that seeks to significantly revise commitments from parties holding patent claims essential to IEEE standards to license those rights on reasonable and non-discriminatory (RAND) terms. Changes disallow patent holders from receiving any value attributable to the standards, require licensing at the smallest saleable patent practicing unit level, and deny these rights holders entitlement to seek an injunction against an unlicensed implementer until appellate review is exhausted. IEEE’s stated objective was to protect implementers from patent holdup, which was alleged without any substantiation.[1] IEEE is promoting, by reducing technology licensing costs, the short-term interests of certain implementers while undermining standard-essential patent values and the ability of SEP owners to receive adequate compensation, they are entitled to, from licensing their SEPs.

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5/4/2018· Patents

Putting Economists in Their Place in Patents in Telecoms and the Internet of Things

By: Keith Mallinson

I participated as a panelist in a session entitled, "Economists: Do They Have a Place?," at the Patents in Telecoms and the Internet of Things conference at George Washington University in Washington, D.C. on November 10, 2017. This article is substantially my remarks in that conference panel session. Before my remarks, Stephen Haber of Stanford University said that I had posed the defining question for the entire conference in an audience question-and-answer exchange the previous day. It had perturbed me to hear a panel speaker mischaracterize the communications standards as platforms of preexisting technologies upon which Internet of Things (IoT) innovation will occur. In response, I said that communications standards are rich in technology innovation and patented intellectual property.

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2/13/2015· Patents

New Rules for Patent Royalty Arrangements May be Coming

By: David Nolte

Royalty arrangements within patent licenses have long been constrained by an almost 50 year old Supreme Court decision in Brulotte v. Thys Co that prevents collection of royalties after a patent has expired. The Justices have now agreed to revisit the precedent set by that often-criticized ruling in a current case, Kimble v. Marvel Enterprises, Inc.

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