IP Finance has received a copy of Working Paper 33 on security rights in intellectual property rights, as revised pursuant to the recent expert group meeting (Vienna, 21-23 January 2008). It's nearly 50 pages in length and runs to over 24,000 words. However, UNCITRAL wants comments on it by not later than 22 February 2008. If you want a copy, email Jeremy here and he'll send it to you (there may be a delay of a day or two, since he's travelling and has limited access to the internet for the next few days). This topic may be finalised at UNCITRAL's meeting in New York this coming May, in which case this may be the IP community's final fling.
Wednesday, February 6, 2008
UNCITRAL draft: last chance to comment?
IP Finance has received a copy of Working Paper 33 on security rights in intellectual property rights, as revised pursuant to the recent expert group meeting (Vienna, 21-23 January 2008). It's nearly 50 pages in length and runs to over 24,000 words. However, UNCITRAL wants comments on it by not later than 22 February 2008. If you want a copy, email Jeremy here and he'll send it to you (there may be a delay of a day or two, since he's travelling and has limited access to the internet for the next few days). This topic may be finalised at UNCITRAL's meeting in New York this coming May, in which case this may be the IP community's final fling.
Tuesday, February 5, 2008
The Ocean Tomo/Blueprint alliance: is it built on a sound premise?
The news has broken that Ocean Tomo and Blueprint Ventures have forged an alliance "to find, fund and accelerate the adoption of Corporate IP Spinouts within the technology sector". The alliance was announced at the IBF Corporate Venturing & Strategic Investing Conference held in Palm Springs. The idea is that "Leveraging Blueprint Ventures' investment focus on Corporate IP Spinouts, this partnership will allow Ocean Tomo to present its clients with an additional monetization strategy for dormant IP beyond the company's highly successful IP auction and private sale capabilities. Blueprint's corporate partners will benefit from deeper access to Ocean Tomo's IP valuation, auction and private sale services in cases where a Corporate IP Spinout is not feasible".IP Finance notes this development, but -- having digested the news, --wonders if this notion is based on a simple model that sees each item of IP as the basis of a business model of its own. The one-patent (or other right) business is highly vulnerable to challenge to that right's validity, just as a one-product company is vulnerable to sudden market shifts, government regulation and other events that lie outside its control. Arguably unutilised IP is best put to use, and its value best realised, when it is absorbed into a business in which it provides complementary support for market presence or R&D products that already exist -- though it is conceded that this cannot always be the case.
Ocean Tomo Spring auction catalogue here
Monday, February 4, 2008
Would you like to write on IP-finance issues?
Gary Brown, publisher at WorldTrade Executive, Inc., has emailed to welcome the IP finance blog, having spotted an earlier post in which we referred to his publication Global Intellectual Property Asset Management Report (GIPAMR). Gary informs IP Finance that its readers -- and naturally those who attended last week's meeting in London -- are welcome to submit articles for GIPAMR or any of its sister publications that also touch on IP/finance issues such as the International Securitization & Finance Report and Practical European Tax Strategies. Anyone wishing to take Gary up on his offer to write can email him here or phone him on +1 978-287-0301.
Sunday, February 3, 2008
DVD6C FRAND licence revised
Trading Markets publishes details of the latest revision of the worldwide patent licensing programme of the DVD6C Licensing Group (DVD6C) -- nine leading developers of DVD technology and formats (Hitachi, Panasonic, Mitsubishi, Samsung Electronics, Sanyo, Sharp, Toshiba, JVC and Warner Bros). The terms are expressed as being fair, reasonable and non-discriminatory (FRAND) and the negotiation of separate unbundled licences is available as an option. The internal accounting arrangements for the distribution of DVD6C licence royalties have not been disclosed.
Friday, February 1, 2008
Nokia sued by German Patent Holding Company IPCom
Whilst much of Germany was following the debate surrounding the closure of Nokia's Bochum factory and whether subsidies paid by the local state government had been misused, IPCom a patent holding company in Munich was preparing another attack on the handset mega-company.
A company called IPCom purchased at the end of 2006 a number of patents from Robert Bosch GmbH relating to the GSM standard. Bosch had invested in the late 1980s and early 1990s extensively in the development of the mobile telephone standard. Bosch's efforts to commercialise their investment were unsuccessful and they withdrew from the telecommunications market after a few years.
According to an interview in Munich's serious daily newspaper, the Süddeutsche Zeitung Bosch had previously tried to negotiate a licensing deal with Nokia - without success. Under the GSM standard rules set by the European Telecommunications Standard Institute (ETSI), Bosch was obliged to offer so-called "essential patents" at Fair, Reasonable And Non-discriminatory ("FRAND") terms. Nokia apparently offered a licence fee of less than 1%.
Christoph Schoeller, the Managing Director of IPCom, states in the interview that IPCom considers the FRAND approach to be a licence fee of 5%. Based on the patented products, he states that he is looking for a return of €12 Million for the twenty year lifetime of the patents.
Not surprisingly there is no mention of the price paid to Bosch for the patents. Given that Bosch had barely exploited the patents (and that their telecommunications activities were for many years making huge losses), the sale of the patent rights was probably an unexpected income bonus. No doubt Nokia will not be the only company expected to pay IPCom a royalty for the use of the patents.
IPCom does not appear to have a website itself. It is part of the Schoeller Group based in Pullach, Germany. The German business daily Handelsblatt reports that 50% is held by a New York-based private equity fund Fortress Investments.
It is not clear which patents are currently involved. The German PTO's website records three utility models, 52 German national patents or applications and nine European patent or applications. Several of the applications are clearly divisional applications - presumably as IPCom tailors its claim language to other alleged infringers
Update 7 Feb 2008
Joff Wild of Intellectual Asset Management Magazine was kind enough to point out that the sum involved was EUR 12 Millarden (EUR 12 US Billion) and not the paltry sum of 12 Million.
A company called IPCom purchased at the end of 2006 a number of patents from Robert Bosch GmbH relating to the GSM standard. Bosch had invested in the late 1980s and early 1990s extensively in the development of the mobile telephone standard. Bosch's efforts to commercialise their investment were unsuccessful and they withdrew from the telecommunications market after a few years.
According to an interview in Munich's serious daily newspaper, the Süddeutsche Zeitung Bosch had previously tried to negotiate a licensing deal with Nokia - without success. Under the GSM standard rules set by the European Telecommunications Standard Institute (ETSI), Bosch was obliged to offer so-called "essential patents" at Fair, Reasonable And Non-discriminatory ("FRAND") terms. Nokia apparently offered a licence fee of less than 1%.
Christoph Schoeller, the Managing Director of IPCom, states in the interview that IPCom considers the FRAND approach to be a licence fee of 5%. Based on the patented products, he states that he is looking for a return of €12 Million for the twenty year lifetime of the patents.
Not surprisingly there is no mention of the price paid to Bosch for the patents. Given that Bosch had barely exploited the patents (and that their telecommunications activities were for many years making huge losses), the sale of the patent rights was probably an unexpected income bonus. No doubt Nokia will not be the only company expected to pay IPCom a royalty for the use of the patents.
IPCom does not appear to have a website itself. It is part of the Schoeller Group based in Pullach, Germany. The German business daily Handelsblatt reports that 50% is held by a New York-based private equity fund Fortress Investments.
It is not clear which patents are currently involved. The German PTO's website records three utility models, 52 German national patents or applications and nine European patent or applications. Several of the applications are clearly divisional applications - presumably as IPCom tailors its claim language to other alleged infringers
Update 7 Feb 2008
Joff Wild of Intellectual Asset Management Magazine was kind enough to point out that the sum involved was EUR 12 Millarden (EUR 12 US Billion) and not the paltry sum of 12 Million.
Deutsche Patentbewertungstage = German Patent Valuation Days
The German company ratingwissen.de is organising its second patent valuation days at the European Patent Office in Munich on 19-20 February. An action-packed programme - mostly in German - is promised with contributions from Triumph-Adler on financing a company using IP, Andrew Rayner from the Ocean Tomo auction house, Christian Klawitter (Freshfields) on legal problems, Alexander Wurzer of Patev on patent evaluation as a service, as well as many others.
Registration of the conference - which is mostly in German - can be done here.
Registration of the conference - which is mostly in German - can be done here.
Customs duties on royalties and licence fees
The December 2007 issue of Global Intellectual Property Asset Management Report, (published by WorldTrade Executive), carries a brief article by Ben Goodger and Stefanie Slapke (both of Rouse & Co. International), "Are New Customs Duties on Royalties and License Fees Relating to Imported Goods on the Way? The authors write: "Recent World Customs Organization (WCO) deliberations are likely to lead to major changes in the way trade mark royalties and licence fees relating to imported goods are currently being dealt with by Customs offices around the world. The changes look set to have a serious financial impact on both brand owners and licensees.The authors then add that brand owners and trade mark licensees are well advised to keep a close watch on things. They expect the latest changes to be adopted promptly by Customs authorities, at least in Europe and suggest that, if European authorities are seen to be raising significant amounts of revenue from the imposition of additional duties, other countries will probably be quick to follow.
Although precise details of the changes are not yet available, IP owners should be aware, at least in general terms, of what is being proposed.
Background
How trademark royalties and license fees should be dealt with by Customs authorities has been the subject of ongoing debate within the WCO for some time. The issue is both complex and contentious.
Two years ago, a sub-committee of the WCO Technical Committee on Customs Valuation was established to examine the various national authorities’ current practice. We understand that at a recent meeting, this sub-committee decided that certain royalty payments that are not currently regarded as part of the dutiable value of imported goods should in future be included in the dutiable value.
Many of the WCO’s earlier conclusions on this subject have already been taken up by the European Commission’s Valuation Committee in its Commentary No. 11, issued earlier this year, which deals specifically with royalties and licence fees paid to a third party. It is likely that the Commission will also take up the proposed further changes.
Proposed Changes
The outcome of the most recent WCO Customs Valuation sub-committee deliberations is expected to be documented in April 2008. Although the precise content of the changes being proposed will not be known until April, it is clear that many trade mark royalties and licence fees that relate to imported goods and are not currently included in the dutiable value for Customs purposes will begin to be so included".
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