DECEMBER 2016 LES NOUVELLESDECEMBER 2016 lleess NNoouvuveelllleess Translations JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL Patent Mapping Strategies Patent MappingCopyright IP Legal advice Renewal Management Descriptions Domain Names Domain Names Attorneys Flat fee prosecution Descriptions Patent Annuities IP Contracts Flat fee prosecution Copyright Domain Names RenewalEP Management - Validation BrandsIP Contracts IP Due Diligence Software Solutions Filings Copyright PCT - Nationalizations PatentPCT - Nationalizations Seminars IP Due Diligence Domain Names Trademark Descriptions Descriptions Filings Mapping Descriptions Strategies Renewals Filings Patent Mapping Copyright Patent Mapping Prior artDescriptions searches Volume LI No. 4 Designs Copyright IP Legal advice December 2016 Brands Software Solutions IP Contracts Trademarks Docketing EP - Validation DIAMS iQ DIAMS iQPatents Trademarks IP Contracts Trademarks Seminars Software EP - Validation Copyright Portfolio Analysis Recordal ServicesDesigns Trademarks Patent Mapping Portfolio Analysis Portfolio Analysis PCT - Nationalizations DIAMS iQ Patents Descriptions Flat fee prosecution Patent Mapping Software Solutions Solutions artPrior searches Flat fee prosecution Strategies Designs TranslationsDomain NamesMonetization Patent Filings Mapping IP Legal advice Copyright Translations Copyright Brands Trademarks Seminars Brands Filings Contracts Designs Designs Domains Copyright StrategiesTrademarks Prior art searches IP Legal advice Descriptions Filings Domain Names Brands Copyright Trademarks Brands Attorneys Annuity services Diams iQ Diams Descriptions Copyright Trademarks PCT - Nationalizations IP Contracts Strategies Descriptions Prior art searches Filings Descriptions Flat fee prosecution Trademarks Trademark Strategies Renewal IP DocketingEP - Validation Consulting Management Copyright DIAMS iQ Renewals Advancing the Business of Intellectual Property Globally Copyright Filings Patent Annuities Patents Brands IP Contracts Translations EP - ValidationFilings Software Solutions EP - Validation IP Due Diligence Patent Annuities IP Contracts Renewal IPManagement Docketing Copyright Filings Descriptions PCT - Nationalizations Domain Names Translations Designs Filings Writing Licenses And Other Agreements—Some Tips Based On Over Fifty Years Prior art searches Trademark DIAMS iQ IP Contracts Renewals PatentsSoftware Solutions Strategies Copyright IP Docketing Translations Designs IP Legal advice DIAMS iQ Of Mistakes And Confusion (Mostly Others’, But A Few Of Mine) Filings Domain Names Descriptions Copyright Filings Brands SoftwareBrands Solutions EP - ValidationConsulting Designs CopyrightFilings Descriptions Patent Patent Annuities Docketing Mapping Brands ROBERT S. BRAMSON — Page 204 IP Contracts Trademarks Prior artPrior searches Software Solutions Flat fee prosecution fee Flat PCTNationalizations - IP Legal advice IP Legal IP Due Diligence Patents Consulting Software Solutions Portfolio Analysis iQ DIAMS DIAMS iQ DIAMS Translations An Experience-Based Look At The Licensing Practices That Drive The Cellular Consulting IP DueCopyright Diligence DIAMSStrategies iQ IP Contracts Designs EP - Validation Filings Patent Mapping Prior art searches Valuation Patent Patents JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL Communications Industry: Whole Portfolio/Whole Device Licensing Flat fee prosecution DIAMS iQ Validation - EP PCT - Nationalizations Patents Copyright Patent Annuities Designs Seminars Filings IP MARVIN BLECKER, TOM SANCHEZ AND ERIC STASIK — Page 231 Flat fee prosecution Software Solutions Descriptions Patents EP - Validation - EP Trademarks Flat fee prosecution fee Flat Strategies IP Due Diligence Due IP Translations Seminars Trademarks Patents Brands Flat fee prosecution Domain Names Domain DIAMS iQ IP Legal advice The Practicalities And Pitfalls Of The Smallest Saleable Patent Practicing Unit Brands Domain Names Doctrine: A Review Of Teece And Sherry Filings DIAMS iQ DIAMS Filings ANNE LAYNE-FARRAR — Page 244 PCT - Nationalizations To What Extent Are University IP Policies Legally Binding? Part 2: Students PHILIP MENDES — Page 249 Application of Enterprise Risk Management (ERM) Principles To Patent Freedom To Operate (FTO) Analysis: A Novel “IP-RM” System GILLIAN M. FENTON — Page 256 NSFW: Naked Licensing And Uncontrolled Trademark Use LUKE S. CURRAN — Page 266 Licensing In Cosmetics: A Practical Approach JEAN-YVES LEGENDRE — Page 269 Opportunities And Challenges For Expanding Technology Transfer In United Arab Emeriates (UAE) AHMED ALOSI, PH.D., JOHN FRASER AND MICHAEL J. MARTIN — Page 274 Allocating Risks And Rewards In Collaborative Agreements Using The Financial Structure MATTHEW W. SAGAL AND GENE SLOWINSKI — Page 282 Bankruptcy-Related IP Valuations:Consider The Use Of Market Approach ROBERT F. REILLY — Page 289 Patent Royalties And Competition Law: The Genentech Judgment Of The Court Of Justice Of The European Union PATRICIA CAPPUYNS AND JOZEFIEN VANHERPE — Page 293 Recent U.S. Court Decisions And Developments Affecting Licensing JOHN PAUL AND D. BRIAN KACEDON — Page 296 $62.50/Issue Order your copy today! Guide to Intangible Asset Valuation by Robert F. Reilly and Robert P. Schweihs This 700-page book, published by the American Institute of Certified Public Accountants, explores the disciplines of intangible asset valuation and analysis, economic damages, “A penny for their thoughts!” and transfer price analysis. Guide to Intangible Asset Valuation Maybe that’s crossed your own mind once or twice examines the economic attributes and the economic influences when dealing with EPO examiners and their search reports that create, monetize, and transfer the value of intangible assets and communications? and intellectual property. Illustrative examples are provided throughout the book, and Join us for the EPO’s outstanding training opportunity detailed examples are presented for each generally accepted for patent search professionals: intangible asset valuation approach and method. Available for purchase for $129.50 plus shipping from Search Matters 2017 www.willamette.com/books_intangibles.html. Robert Reilly and Bob Schweihs are managing 29-31 March directors of Willamette Management Associates, an Munich, Germany intangible asset and intellectual property analysis, Willamette Management Associates business valuation, forensic analysis, and financial www.epo.org/search-matters www.willamette.com opinion firm. Tips on Writing Licenses And Agreements Writing Licenses And Other Agreements1—Some Tips2 Based On Over Fifty Years Of Mistakes And Confusion (Mostly Others’, But A Few Of Mine) By Robert S. Bramson The Skills Required for Negotiating and tional law and many other areas of the Drafting Contracts ■ law which may apply Robert S. Bramson, rafting any sort of agreement requires three Bramson & Pressman, skillsets. Just being a smart lawyer isn’t enough. • Not understanding all DThe skillsets are: business implications of Partner, • Drafting skills—Writing a clear, concise, accurate the agreement terms Philadelphia, PA, USA and comprehensive agreement In this paper, I will give E-mail: [email protected] • Legal skills—Understanding all of the legal prin- you some tips and exam- ciples which go into negotiating, drafting and en- ples to guide you in draft- forcing a license agreement—contract law, patent ing better agreements. However, there is a lot about law, labor law and bankruptcy law and, of course, drafting and negotiating agreements that can only be much more learned by experience. I hope that this sharing of my experience will help. • Business skills—Knowing and understanding the business area for which the agreement is being The Term Sheet drafted and the potential business3 implications of I often like to start drafting with a Term Sheet, if the transaction it is a negotiated agreement (as opposed to starting The major problems in agreement drafting are: with one party’s form, as is sometimes unavoidable • Ambiguity when dealing with a behemoth company). Writing a draft agreement first often loses issues in the verbiage, –Such as circular definitions and redundancy— makes review more complex and therefore harder, and saying the same thing different ways—which cre- wastes time when you have to change language. ate ambiguity • Undue complexity (creating ambiguity) I like to include in the Term Sheet all of the defini- tions I want to use in the agreement. Once all defini- • Verbosity (creating ambiguity) tions and basic terms are agreed in the Term Sheet, • Just plain sloppy language writing the first draft is more focused, much easier and • Not understanding all applicable aspects of con- much less likely to be contentious. tract, labor, IP, bankruptcy, (sometimes) interna- A Term Sheet usually is not intended to create a bind- ing contract. Therefore, the Term Sheet should be stated 1. This paper was initially written for “license agreements” to be non-binding. See A/S Apothekernes Laboratorium only. However, many of the principles applicable to license agree- v. I.M.C. Chemicals, 873 F.2d 155 (7th Cir. 1989) (re ments are also applicable to other agreements, so I have re-writ- letters of intent). Caveat: It is not always clear whether ten the paper accordingly. However, I have retained exemplary a document is a letter of intent or a binding contract, so provisions regarding license agreements when that seemed use- it is desirable to state that “(t)his letter is a statement of ful. For example, an option as to a patent license