Intellectual Property Strategy

• Notes
• Chapter
• The MIT Press
• pp. 151-157
• View Citation
• Additional Information

NOTES

1. Karen Raugust, The Licensing Business Handbook, 7th ed. (New York: EPM Communications, 2008), v.

2. Kamil Idris, Intellectual Property: A Power Tool for Economic Growth (Geneva: World Intellectual Property Organization, 2003), 34.

3. This book is not meant to serve as a primer on the intellectual property law itself, nor does it constitute legal advice, but I say a bit more about each of these types of intellectual property assets in the glossary. I suggest further readings at the end of the book for those who would like to go deeper in any of these areas. One of the best recent books of this sort is Steven J. Frank’s Intellectual Property for Managers and Investors (New York: Cambridge University Press, 2006), which offers more detail on intellectual property law as such from the perspective of a practicing attorney. The best advice on the law itself is, ideally, your in-house or outside counsel, who should be a key ally in setting the organization’s intellectual property strategy.

4. In conversation with the author, Boston, MA, June, 2001.

Chapter 2

1. Separately, Apple and Nokia have sued one another over IPs related to smartphones. See, for example, Chris F. Lonegro, “The Sword and the Shield of Patent Protection: Nokia v. Apple/Apple v. Nokia,” February 2, 2010, available at http://www.lexology.com/library/detail.aspx?g=b62e2e12-d0f3-4e6a-8bf7-ea055b5c8606.

2. RIM had its own costly, high-profile run-in with a patent holder, NTP, Inc.

3. See In re Bilski, 545 F. 3d 943, 88 U.S.P.Q. 2d 1385 (Fed. Cir. 2008).

4. As one example, on the question of the effects of patents on innovation, see James Bessen and Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (Princeton, NJ: Princeton University Press, 2008)—for the strong form of the argument that patents do not purely lead to innovation based on what they claim is the first comprehensive empirical analysis of the patent system.

5. It is only fair that I declare my bias, which I describe in greater detail in chapter 9: I favor many of the reforms that would roll back extensions of the intellectual property protection regime, especially in the area of copyright doctrine. I don’t think, for instance, that copyright term extension is necessary to promote innovation and creativity (what author, after all, is thinking about their great-great-grandchildren when they decide whether or not to write?), and believe it comes with costs that are net negative for society. This normative bias leads me to ask questions about whether there are better ways to benefit from ideas and information than the pure exclusion strategy I refer to in the book. But here I strive to be objective and present options to you as I see them through the lens of a business adviser, much as a lawyer does for a client (though, of course, this book does not and cannot constitute legal advice).

6. Even for smaller matters, intellectual property litigation costs can be prohibitive, and companies may find themselves unable to enforce some of their rights. Take it from Kirsten Osolind, the CEO of a small Chicago marketing organization called re:invention, who became embroiled in a trademark dispute with another company. After spending fifteen thousand dollars for the first three months of legal assistance in her bid to enforce her trademark rights, she learned that it would cost at least another hundred thousand dollars to bring her case to court and declined to pursue the matter further. See Elaine Pofeldt, “Marking Your Territory,” Go Magazine, 85–87, January 2010.

7. See David A. Vise, “Google Ends Its Dispute with Yahoo,” Washington Post, August 10, 2004, available at http://www.washingtonpost.com/wp-dyn/articles/A52880-2004Aug9.html.

Chapter 3

1. Robert M. Solow, “A Contribution to the Theory of Economic Growth,” Quarterly Journal of Economics 70, no. 1 (February 1956): 65–94, available at http://www.jstor.org/pss/1884513.

2. See http://hd.engadget.com/2009/02/04/samsung-hedges-its-bets-with-unipixels-tmos-display-technology.

3. “The ‘Real’ Story behind the Sirius/XM Merger,” SeekingAlpha.com, July 11, 2008, available at http://seekingalpha.com/article/84518-the-real-story-behind-the-xm-sirius-merger.

4. For details of the Sirius-XM joint development agreement along with other examples, see J. Derek Mason, Critical Issues in Joint Development Agreements (Alexandria, VA: Oblon, Spivak, McClelland, Maier and Neustadt, May 28, 2008), available at http://www.oblon.com/sites/default/files/news/414_B_0.pdf.

5. See http://www.bp.com/genericarticle.do?categoryId=2012968&contentId=7055476.

6. US General Accounting Office, “Intellectual Property: Federal Agency Efforts in Transferring and Reporting New Technology,” GAO-03–47, October 2002. See also the National Aeronautics and Space Administration patents licensed at the Ocean Tomo auction in fall 2008 in Chicago.

7. See Andrew Toole, “Does Public Scientific Research Complement Industry R&D Investment? The Case of NIH-Supported Clinical Research and Pharmaceutical Industry R&D,” Center for European Economic Research, ZEW discussion Ppaper (2005), abstract available at http://ideas.repc.org.

8. For examples of and information regarding federal technology-transfer programs, see National Institute of Standards and Technology, U.S. Department of Commerce, Federal Laboratory Technology Transfer, Fiscal Year 2007: Summary Report to the President and Congress (2009), available at http://www.nist.gov/tpo/index.cfm.

9. For information on how to take advantage of the federal government’s vast technology portfolio, you can visit the Federal Laboratory Consortium for Technology Transfer’s Web site, available at http://www.federallabs.org/home/faqs.

10. Alison Frankel, “The Dam Breaks: Intellectual Ventures Files Three Patent Infringement Complaints in Delaware,” American Lawyer, December 8, 2010, available at http://www.law.com/jsp/tal/PubArticleTAL.jsp?id=1202475921457&slreturn=1&hbxlogin=1.

11. See Sarah Jones, “Luna Purchases Rival’s Patents,” Roanoke Times, December 30, 2009, available at http://www.roanoke.com/business/wb/231303.

12. See http://www.businessweek.com/2001/01_10/b3722001.htm.

13. In 2008, the average total pendency of a patent application was 32.3 months in the United States. This figure relates to the average time from the most recent filing date, so the true figure might be significantly higher. See http://ipwatchdog.com/2009/04/22/uspto-backlog-patent-pendency-out-of-control/id=2848.

14. See John Rivzi, “Single Letter Wrong in Medical Patent on Heart Surgery Solution Spells Disaster,” Medical and Dental Advice Patenting blog, September 28, 2009, available at http://www.medicaldevicepatentattorneys.com/2009/09/articles/drafting-medical-technology-pa/single-letter-wrong-in-medical-patent-on-heart-surgury-solution-spells-disaster. See also Central Admixture Pharmacy Services Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347 (2007) and subsequent history.

Chapter 4

1. For IBM, see http://www.businessweek.com/magazine/content/06_32/b3996062.htm?chan=tc&campaign_id=rss_tech. For LEGO, see http://outsideinnovation.blogs.com/pseybold/2008/05/lego-celebrates.html; http://www.wired.com/wired/archive/14.02/lego.html. For PETCO, see http://www.womma.org/casestudy/examples/automate-word-of-mouth-marketing/petco-analyzes-product-reviews.

2. See http://developer.apple.com/iphone.

3. See http://www.livescribe.com/cgi-bin/WebObjects/LDApp.woa/wa/DeveloperOverviewPage.

4. See http://www.marketingpilgrim.com/2007/04/google-maps-to-mash-up-companies-suckers.html.

5. See Henry Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technology (Cambridge, MA: Harvard Business Press, 2003).

6. See Dyan Machan, “Inventors Wanted,” SmartMoney Magazine, March 2009, 42.

7. See http://www.informationweek.com/news/showArticle.jhtml?articleID=197000211.

8. See Mark Blaxhill and Ralph Eckhardt, The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property (New York: Portfolio, 2009), 151.

9. “InnoCentive: A Market for Ideas,” Economist, September 17, 2009.

10. The Generic Pharmaceutical Association commissioned a study by IMS Health, available at http://www.gphaonline.org/about-gpha/about-generics/case/generics-providing-savings-americans. The study argues that the generic pharmaceutical industry saved US consumers $734 billion over the course of a decade, with a savings of $121 billion in the year 2008 alone. Other pharmaceutical companies contend that this study is misleading.

11. See chapter 7 below.

12. On the prize system, see William W. Fisher and Talha Syed, Drugs, Law, and the Health Crisis in the Developing World (Stanford, CA: Stanford University Press forthcoming). On Equitable Access licenses, see Amy Kapczynski, Samantha Chaifetz, Zachary Katz, and Yochai Benkler, “Assessing Global Health Inequities: An Open Licensing Approach for University Innovations,” 20 Berkeley Technology Law Journal 1031 (2005).

13. See Jonathan D. Rockoff and Ron Winslow, “Merck to Develop Biotech Generics,” Wall Street Journal, December 10, 2008, B1.

14. Thomas Rogers and Andrew Szamosszegi, “Fair Use in the U.S. Economy: Economic Contribution of Industries Relying on Fair Use” (Washington, DC: Computer and Communications Industry Association, 2010), available at http://www.ccianet.org.

Chapter 5

1. Professor Tim Wu of Columbia Law School refers to this notion as “tolerated use.” It is also referred to as “permitted use.” See Tim Wu, “Tolerated Use,” Columbia Journal of Law and the Arts 31, no. 4 (summer 2008): 617.

2. Jennifer Delson, “Got a License for that Pinata?” Los Angeles Times, June 19, 2005, available at http://articles.latimes.com/2005/jun/19/local/me-pinata19.

3. See http://www.unhappybirthday.com.

4. See http://www.law.umkc.edu/faculty/projects/ftrials/communications/ASCAP.html.

5. See “China Real Time Report: Another Yahoo-Alibaba Spat,” September 10, 2010, available at http://blogs.wsj.com. See also Erica Werner, “Yahoo Execs Defend Company’s Role in Arrest of Chinese Journalist,” Associated Press Newswires, November 6, 2007. See also Stephanie Kirchgaessner, “Yahoo CEO Repents over Chinese Dissident,” November 6,2007, available at http://www.ft.com.

6. See Ashley Seager, “Starbucks, the Coffee Beans, and the Copyright Row That Cost Ethiopia 47 m. GBP,” Guardian, October 26, 2006, available at http://www.guardian.co.uk/world/2006/oct/26/usa.ethicalliving (note that the Guardian mistook trademark interests for copyrights in the title as well as the body of the article). See also the press release that Starbucks issued a month later as part of its damage control, “Talks between Starbucks and the Ethiopian Government Positive and Ongoing,” November 30, 2006, available at http://news.starbucks.com/article_display.cfm?article_id=126.

Chapter 6

1. See “AMD Reports Fourth Quarter Results,” January 21, 2010, available at http://www.amd.com/us/press-releases/Pages/q4-earnings-2010jan21.aspx. See also George Chidi, IDG News Service, May 04, 2001, “AMD and Intel Renew Cross-licensing Agreement,” available at http://www.itworld.com/IDG010504amd_intel.

2. See http://www.extremetech.com/article2/0,1558,1729927,00.asp.

3. See William W. Fisher III, “When Should We Permit Differential Pricing of Information?” UCLA Law Review 55, no. 1 (2007).

4. See Patricia M. Danzon and Michael F. Furukawa, “Prices and Availability of Pharmaceuticals: Evidence from Nine Countries,” Health Affairs 22, no. 6 (2003): W521–W536, available at http://content.healthaffairs.org/cgi/content/full/hlthaff.w3.521v1/DC1.

5. See Hal R. Varian, “Versioning Information Goods” (1997), available at http://www.ischool.berkeley.edu/~hal/Papers/version.pdf.

6. See Rachel Keeler, “Sharper Focus on Intellectual Property,” Financial Times, November 18, 2008, available at http://www.ft.com.

7. Roger Parloff, “Fortune 500 Series: Monsanto,” Fortune, Inc., 2010, available at http://money.cnn.com/2010/05/06/news/companies/monsanto_patent.fortune/index.htm. Another element of this story is the dispute between Monsanto, DuPont, other agribusinesses, and the US Department of Justice over whether Monsanto is abusing its monopoly position in Roundup Ready.

8. Paul M. Janicke and Lilian Ren, “Who Wins Patent Infringement Cases?” American Intellectual Property Law Association Quarterly Journal , no. 1 (2006).

9. See Kenneth N. Cukier, “A Market for Ideas,” Economist, October 20, 2005.

10. Nathan Myhrvold, formerly the chief technology office of Microsoft and now principal of large rights aggregator Intellectual Ventures, argues that software titans “infringe lots and get away with it. They have made deliberate decisions not to check patents. They’re afraid in the long run they’d have to pay somebody.” Quoted in Victoria Slind-Flor, “IV Moves from Myth to Reality,” Intellectual Asset Management, August–September 2006, 33.

11. See http://www.cptech.org/ip/health/cl/cipro.

12. US Statement of Interest, NTP, INC., v. Research in Motion, Ltd., November 2005.

13. A patent pool is a voluntary arrangement where a group or groups agree to license identified classes of patents and/or classes of technology to third parties on predetermined standard conditions. See http://www.gsk.com/collaborations/patentpool.htm.

14. Indeed, the patents are only freely available to the extent that the products created are used in least developed countries. If used elsewhere, a different type of license must be negotiated with GlaxoSmithKline.

Chapter 7

1. “Gilead Sciences and Royalty Pharma Announce $525 Million Agreement with Emory University to Purchase Royalty Interest for Emtricitabine,” Emory University press release, July 18, 2005, available at http://www.emory.edu/news/Releases/emtri.

2. Consider the research project conducted by my colleagues at the Berkman Center for Internet and Society at Harvard University on the copyright licensing opportunities of private foundations, available at http://cyber.law.harvard.edu/publications/2009/Open_Content_Licensing_for_Foundations.

Chapter 8

1. National Research Council of the National Academies of Sciences, Committee on Intellectual Property Rights in the Knowledge-Based Economy, Board of Science, Technology, and Economic Policy, A Patent System for the Twenty-first Century (2004), available at http://www.nap.edu/openbook.php?isbn=0309089107.

2. See, for example, “Follow-on Biologics Bill Threatens Innovation by Weakening Patent Rights,” Holman’s Biotech IP Blog, June 28, 2009, available at http://holmansbiotechipblog.blogspot.com/2009/06/follow-on-biologics-bill-threatens.html.

3. KSR v. Teleflex, 550 U.S. 398 (2007); In re Bilski, 545 F. 3d. 943, 88 U.S.P.Q. 2d 1385 (Fed. Cir. 2008).

4. William Alford, To Steal a Book Is an Elegant Offense: Intellectual Property Law in Chinese Civilization (Stanford, CA: Stanford University Press, 1997).

5. See the Web site on Chinese intellectual property law and policy, available at http://www.chinaipr.gov.cn. For instance, consider Prime Minister Jiabao’s speech at the Davos meeting in September 2009, available at http://www.chinaipr.gov.cn/policyarticle/policy/speeches/200909/544678_1.html. For similar pronouncements, see Mark Blaxhill and Ralph Eckhardt, The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property (New York: Portfolio, 2009), 15.

6. See Miguel Helft and Ashlee Vance, “Apple Passes Microsoft as No. 1 in Tech,” New York Times, May 26, 2010, available at http://www.nytimes.com. See also Associated Press, “Apple Dethrones Microsoft as the Biggest Tech Company in the World,” Huffington Post, May 26, 2010, available at http://www.huffingtonpost.com/2010/05/26/apple-market-cap-surpasse_n_590854.html.

Glossary

1. These definitions are drawn from a combination of sources. For more information of the definitional variety, consider Bryan A. Garner, ed., Black’s Law Dictionary, th ed. (Eagan, MN: West Group, 2004); Kinley and Lange, P.A., Intellectual Property Law for Business Lawyers (Eagan, MN: West Group, 2010); J. Thomas McCarthy, Roger E. Schechter, and David J. Franklyn, McCarthy’s Desk Encyclopedia of Intellectual Property, 3rd ed. (Washington, DC: Bureau of National Affairs, 2004); and Karen Raugust and the editors of the Licensing Letter, The Licensing Business Handbook (New York: EPM Communications, 2007). Other good sources include the Web sites of the US Patent and Trademark Office, the US Copyright Office, the World Intellectual Property Organization, and the World Trade Organization.

2. For more on this topic in general, see the International Licensing Industry Merchandiser’s Association, available at http://www.licensing.org/education.