The Gannons Intellectual Property Technology seminar brings together respected professionals from the legal and commercial technology sectors.
Our seminar covers:
Tech and Software: Discover how businesses navigate, embrace and compete with the deluge of disruptive technologies.
IP Tech from a Legal perspective: Resolve the major legal challenges faced by tech firms. We share our knowledge and expertise.
IP Insurance: Intellectual property insurance needn't be expensive. We demonstrate the options available for Tech businesses.
The Speakers:
Jimmy Vestbirk - a technologist with a focus on LawTech and works with start ups.
Graham Bell - a technical consultant specialising in product development, and has extensive international experience advising clients in the creation, application and exploitation of technology with a core focus in telecommunications and consumer electronics.
Amardeep Dhillon - a barrister who specialises in IP. Amardeep is regularly instructed in matters in the High Court, Companies Court and has appeared before the Court of Appeal. He will discuss case studies on IP and Technology.
An IP Expert in ATE (after the event) and BTE (before the event) insurance solutions helping businesses to reduce their financial risks in litigation.
13. What CUBICIBUC does…
• Clients tell us that they don’t want launch
products with outstanding risks associated
with the IP.
• At Cubicibuc we believe that it is
impossible to develop modern, complex
products without infringing IP.
14. What CUBICIBUC does…
• We provide services that allow our clients
to understand who owns that IP; what the
owners might do with it; and how our
clients can manage those risks.
15. Today’s product world is a complex place
• “In 1899 George B.
Selden was
awarded a patent
for the automobile -
it was a single
patent”
Today, it is impossible to develop
modern, complex products without infringing IP. The key
challenge is to understand who owns that IP and what they will
do with it when your product is successful.
16. The spectrum of possible
approaches to intellectual property
Naïve Avoidance
Naively ignoring the facts,
not making suitable
provisions. Lacks of
planning means no
leverage.
Information Overload
Unnecessarily trying to
“know” everything inevitably
leads to decisions paralysis.
Too much info means no
prioritisation.
Finding a middle
ground
17. A pragmatic approach to managing IP risks
Information overload
Unnecessarily trying to
“know” everything inevitably
leads to decisions paralysis.
Too much info means no
prioritisation.
Naïve avoidance
Naively ignoring the facts, not
making suitable provisions.
Lacks of planning means no
leverage.
Finding a middle
ground
19. Where is the magic sauce?
All businesses apply intellectual
assets as the foundation of how
they add value. Understanding
where, how and by whom the
value creation is done means that
the associated IP can be
identified and protected.
While avoiding third party IP is
impossible managing your own
position to understand where in
your value chain the “magic
happens” is vital.
20. IP portfolios should be dynamic and
your IP strategy closely match your product strategy
– Maintaining portfolios is increasingly costly – organisations
continually look to reduce these costs, and extract value from IP
– In parallel, IP is not static. Just as product portfolios move on,
technology evolves, so must IP portfolios. IP portfolios must adapt to
current company drivers
– Managing an IP portfolio is therefore an active responsibility with
associated costs and revenues to be accounted for.
New IP needs
Old / unused IP
Old / unused IP
New IP needs
v1
v2
v3
v4
v5
v6
v7
Roadmap
22. “Semantic text analysis” may
identify the appropriate technology clusters
A starting point to landscaping is often identifying what technology is key, and how
to identify / describe it.
Main
Tech
areas of
additiona
l interest
23. Clustering tech areas into more
granular subsets
International Patent Classification (IPC) based clustering of the portfolio in
combination with the semantic provides a tighter list of relevant patents.
• G06F 003 – I/O Interface Arrangements
• G09G005 – Control for Visual Indicators
• G06K009 – Recognition of patterns
• G06T007 – Image Data Processing
• G06F017 – Digital Computing
24. Citation analysis of patents gives us insight into
where the portfolio sits relative to the IP assets
owned by third parties
Understanding the relationship between third party
portfolios helps pinpoint potential key players with seminal
patents.
25. Technology trend analysis would be useful to
identify the key tech area among several areas
for a given assignee/competitor
26. Simple analysis shows which
third parties have the strong portfolios
Having a view of the ownership landscape assists in preparing engagements
with these entities – prioritisation, identifying leverage for negotiations or
partnering
opportunities.
28. Competitive reaction
Understanding who owns
the IP that you might be
using allows you to prepare
for potential responses to
your market success.
The IP landscape gives you
valuable business
intelligence to spot trends,
to identify weaknesses and
to build IP ahead of product
roadmaps – maximising the
value from your R&D.
ImmediateReaction
ConsideredReaction
Blocking / Attacking
Capability build / catch-up
30. Thinking about the value of your IP
–Do we really care if others use your
invention? If they did, would it impact your
business?
–How likely is it that others will use your
invention?
–Would having a patent deter others from
practicing the invention?
31. Thinking about the value of your IP
–What appetite do you have to enforce the
patent? How policable is the invention?
–What is the plan for utilising the invention?
What are your own plans for exploitation?
•Note: Only point 5 is introspective, but is historically the only question firms have
asked.
32. Having no concept of value exposes the
business to lost opportunities where IP
could have contributed.
Placing a value on your IP allows you to use
it as leverage in commercial negotiations
with suppliers and customers.
Align IP strategy with business
strategy to maximise
33. Understand how your IP can help succeed
in controlling, managing or influencing
relationships with suppliers, customers,
competition in various sectors and markets.
Align IP strategy with business
strategy to maximise
Market Sector Relationship
Control
Manage
Influence
35. Driving R&D activity to generate
patents for widest possible adoption
R&D effort must be directed towards
continually generating new IP to follow
evolving technologies. However this can
be expensive, and with complex products
no one company can be expert in all
necessary areas
Prioritising R&D can be done directly or
through research projects or consortia or
by being involved in standards setting
activities
36. Driving R&D activity to generate
patents for widest possible adoption
But working with standards committees
takes a lot of time and effort, and is
expensive
Developing IP through R&D effort can be
difficult. Increasing your patent portfolio
through acquisition is an alternative
option. IP may be acquired:
• from existing owners
• through acquisition of entire companies
37. Questions the Board should be able to articulate
answers to their shareholders about their IP & IP strategy
38. Disclaimer and Notice:
The information in this document is provided in confidence for the sole
purpose of supporting the independent evaluation of the enclosed
information relating to Cubicibuc Limited and related services.
No assurances, representations or warranties pertaining to the enclosed
information or its validity are provided or implied herein, and the information
in this document is not legal advice, analysis or a legal opinion. This
document is solely attributable to Cubicibuc Limited and does not
necessarily represent the views or opinions of other third parties.
This document and any other materials or information provided by
Cubicibuc Limited are copyrighted, and are intended for use by the
receiving party solely. Any distribution of such materials or information
outside of the receiving party’s organisation without Cubicibuc Limited
permission is strictly prohibited.
40. Recent Case Law
• Ultrasoft Technologies Ltd v Hubcreate Ltd
• [2016] E.W.H.C. 544 (IPEC)
• Concerned software for management of
serviced office space
• Hubcreate and Ultrasoft are direct
competitors for this software
41. Ultrasoft v Hubcreate
• A customer moved from Hubcreate to
Ultrasoft and then back to Hubcreate
• In returning to Hubcreate, the customer
asked them to extract all of the accounts
information, contacts, licence agreement and
invoices from the existing Ultrasoft files and
integrate them into the Hubcreate software.
• To do so, the customer provided Hubcreate
with a copy of the SQL database files
42. Ultrasoft v Hubcreate
• Hubcreate then extracted the specific
‘UltraCRM/UltraBis’ files which should
have contained this data, and copied them
onto the Hubcreate SQL server
• Hubcreate were unable to access this
data, but were able to do so at a later date
(after several failed attempts) when
updated SQL files were provided.
43. The legal ramifications
• Hubcreate legally liable, by copying and utilising
the extracted SQL data files, for:
– Copyright infringement
– Infringement of the Database regulations
• However, Ultrasoft also alleged further
infringement, by alleging infringements as the data
files were made available to the public
• This latter allegation failed as no member of the
public could access the SQL server upon which
the data was stored
44. Learning/Discussion points
• Early admissions save legal costs
• Some companies may set up a ‘damages
fund’ before undertaking infringing acts,
i.e. essentially plan for a claim in the future
(and then quickly settle any claim)
• Possibly risky strategy as damages claim
may be open-ended
45. Learning/Discussion points
• What routes could minimise risk, if about to
undertake infringing acts?
• Identifying risk with customer (important,
reinforces your reputation within market)
• Seek indemnity from customer?
• Ask customer to obtain suitable licence from
competitor?
46. Learning/Discussion points
• Alternatively, although not in all circumstances,
seek dialogue with owner of software
• Obviously dependant upon respective market
sizes and reputations (ie direct competitors
unlikely to agree to you working on their
software)
• Might discover new markets for your technology
47. Risks in Litigation
• Not having a clear strategy at the start of the
litigation, whether bringing or defending a claim
• Possible example see Nekoti Ltd v Univilla Ltd
[2016] E.W.H.C. 556 (Ch)
• Not conceeding those points that should be
conceded (i.e. early admissions vital to save
costs)
48. Risks in Litigation
• Considering which Court to litigate in:
– IPEC: Costs recovery limited to £50,000, but
damages limited to £500,000
– High Court: Damages unlimited, but no upper
limit of payment of legal costs
49. Overall
• Companies need to have Intellectual Property
Strategies in place, to cover both collaboration
and litigation
• If protecting Intellectual Property rights by way of
patents, then correct formulation of the claims is
key to ensuring protection
• If litigating, having an early idea of the strategy
should allow for decrease in overall costs of
litigating
50. REDUCING THE FINANCIAL
RISK IN INTELLECTUAL
PROPERTY LITIGATION
SPEAKER: TIM MAYER
THERIUM CAPITAL
MANAGEMENT LIMITED
51. • Funding vs. insurance
• Success fees vs premiums
• Recoverability of either (or none)
BASICS
52. • Market capacity, rating
• Cost/pricing (general)
• If the claim fails, then what?
• a ‘third way’: funder’s adverse costs indemnity
BASICS
54. FUNDING MODELS II
• Monetization of claims
o sale/assignment
o potential risks (champerty)
o ameliorations: SPV with equ
interests (management etc)
55. FUNDING MODELS II
o awards; enforcement; a
combination
o sale at a discount (Elliot
model) vs. more light-touch
approach to suit client’s cash
needs.
56. Funding and IP
56
• Pitfalls:
o prior art
o Originality
o how test (due diligence)?
57. Funding and IP
57
o beware patent trolls
o class actions – certification;
opt ins/opt outs; jurisdictions
•Funder flexibility via indemnities,
portfolios
62. FUNDING MODELS II
• Monetization of claims
o sale/assignment
o potential risks (champerty)
o ameliorations: SPV with equ
interests (management etc)
63. FUNDING MODELS II
o awards; enforcement; a
combination
o sale at a discount (Elliot
model) vs. more light-touch
approach to suit client’s cash
needs.
64. Funding and IP
64
• Pitfalls:
o prior art
o Originality
o how test (due diligence)?
65. Funding and IP
65
o beware patent trolls
o class actions – certification;
opt ins/opt outs; jurisdictions
•Funder flexibility via indemnities,
portfolios
Hinweis der Redaktion
Introducing Gannons
Unless links are formed between R&D and IP which are actively managed and tracked it is likely that gaps will form between the state of the IP and the R&D. These gaps will become risks to the product and the business is not managed.
Organisations that do not control their IP risk their investments in R&D. They risk building deliverables that are not commercially attractive.
Poor IP management leads to leakage of competitive advantage, real or spurious litigation or loss of product revenues.
Core technology areas are often dominated by the big vendors, particular in standards setting environment; niche areas may be easier to contribute to, but of lower importance
Sectors such as telecoms and consumer electronics industries have a global market using international standards. Patent filing strategies should reflect this with family members being filed in strategically important jurisdictions:
Europe, US, Japan and Canada (To protect in major markets)
China, India (To protect in these major developing markets and manufacturing locations)
1) Implicit in this question is do we know what IP we own. Do we have a record of patents? Do we have a register of trade secrets? Do we have a database of know-how?
When was the last time your business did an IP audit?
How do you know that the IP you have protects your investment in new product development?
And importantly, what were the results of the audit used for? An audit in itself is unlikely to provide any business benefits.
You have a nice list of patents, but ask yourself, “so what?” – unless you’ve categorised those into core, non-core, not-used; created a monetisation strategy for the non-core, allowed some to lapse, licensed or sold others, then it’s a list of assets.
2) Do you have an IP strategy? When was it last reviewed, and by whom? Do you understand how you can use IP to influence relationships with suppliers, customers, and competitors? Have you placed a value on your IP that allows you to use it as leverage in commercial negotiations with suppliers?
3) Do you have an items relating to IP in your risk register? How are they managed? Do new product developments identify IP lines items for bill of materials? Do you make financial provisions for new business cases for future licensing costs?
Do you know where the gaps are in your IP, and how you plan to fill them?
Do you understand the IP landscape relating to your core and non-core technologies?
Who are your real competitors and where do the IP threats come from? How do you plan to mitigate / manage these risks?
What is your appetite for IP acquisition? Do you understand how to value or other criteria that you might use when looking at acquisitions?
5) Do shareholders understand the IP that you own or are you simply blinding them with big meaningless numbers?
