Issue #8-2 | January 26, 2012

Oracle calls an intellectual property audible in lawsuit against Google

Football enthusiasts know an audible when we see one, and others at least recognize a bold move off the field. Those readers will have to accept on faith that Oracle’s move against Google in its long-running suit is the legal equivalent of a change in strategy at the scrimmage line.

In its lawsuit against Google, Oracle has offered to drop its patent charges and rely only on copyright infringement if the court will hear the copyright complaints quickly.

In a filing January 17, Oracle lays out three proposals to move the case forward:

  1. Oracle initially asks that the court “sever and stay” the patent claims and set a trial date on the copyright claims soon, in winter or spring this year. During the time the copyright claims are at trial, Oracle could work on its third attempt at a damages estimate, one of the current holdups in the case. The court could then try the patent charges, writes Nancy Gohring of
  2. If the judge doesn’t like that idea, Oracle asks the court to dismiss the patent charges without prejudice, thus allowing Oracle to proceed with the copyright claims and potentially file a new patent infringement case in the future.
  3. If the court neither stays nor dismisses the patent claims, Oracle would ask for a trial date in the next few months on both the copyright and the patent claims.

Bloggers in the field have called the move “bold” and indicative of Oracle’s frustration over the lawsuit’s delays. IPWire agrees that the move is unusual, but with the possibility of bringing patent claims later, perhaps going with your strongest play now is the best call—an audible, no less.

Patent reform will put a budget strain on university technology transfer offices

In an interview in Newlogic, Inc., Melba Kurman, president of Triple Helix Innovation, stated America Invents Act’s world-conforming “first-to-file” change will significantly impact the technology transfer processes and budgets in most universities.

Patent reform has made filing provisional patents more the rule than the exception, as grace periods have been modified. As a result, technology transfer offices need to make early calls on whether a new invention is worth the $30k-$40k patent-filing investment.

Increasingly, university technology transfer offices are now turning to ktMINE, the completely searchable and affordable database of over 11,000 licenses in full text offered by BVR, for help. Early identification of companies that license similar technology, including what they are willing to pay in terms of royalty rates, is invaluable information to a technology transfer staff, both in terms of valuing a new invention and communicating findings to university researchers.

New IP rights clearinghouse hangs its shingle

A new online auction and clearinghouse for patent and trademark rights has opened its doors. Roger Shashoua, the founder of IPR Connections, stated in a press release that the firm will provide an alternative for industry, inventors, and other owners of patents and trademarks to connect through licenses with partners worldwide. “IPR Connections’ objective is to be the first organization in the new product and technology transfer field to provide globally comprehensive information on intellectual property.”

The problem with efforts such as these from a valuation perspective is the secrecy that enshrouds auctions and license deals. IPWire will monitor this endeavor as it evolves in hopes that it will yield useful data.

USPTO reports on the first three months of ‘fast tracking’

With patent reform came a resumption of the Track I Prioritized Patent Examination Program. For $4,800, patent applicants can bypass the long queue and secure “priority” examination, having their applications processed to completion within 12 months (without further required submissions). Theoretically, the process does not improve the likelihood of a patent grant.

Peggy Focarino, USPTO commissioner for patents, reports the process is currently cutting about 40% off the delay for pre-examination on Track I petitions, nearly 30 days, or about $160 a day if you applied the extra fee to just the pre-examination process.

As of the first of the year, 1,694 Track I petitions had been received. At today’s legal rates, with this USPTO fast track success rate and a promise to do even better, expect the number of submissions to the Track I program to increase dramatically.

62% of European Patent Office filings came from outside Europe in 2011

The European Patent Office says its patent filings increased in 2011 to 243,000, up 3% from 2010. In turn, the office granted more than 62,000 patents last year. Of those, 62% of all filings came from outside Europe, with U.S. applications totaling 24%; Japanese applications,19%; and Chinese applications, 7%. 

The EPO is not part of the European Union, but with 38 member countries, it “offers the closest thing currently available to an EU-wide patent,” reported.

Those wishing to best manage their intellectual property should consider the markets they will be selling in, including Europe, and file patents there.

Assessing your company’s current and potential IP value—learn from the best!

Many standalone intellectual properties are worth more than companies in the S&P 500. Early stage technologies rely heavily on IP—without it, they may command little value in the market. Yet, IP valuation remains tricky. There are no comparables in the market, discount rates are not directly observable, competitors can attack protections, and the commercial market may be less than expected.

While correctly assessing IP value can lead to remarkable shareholder wealth creation, incorrect valuation can be very costly. In today’s environment of open innovation and technology partnerships, this is particularly true. A two-day workshop March 6-7 by Mike Pellegrino can provide you with realistic guidelines to correctly value your organization’s early stage technologies. This course provides detailed steps to:

  • Identify key sources of value. 
  • Decide which valuation approach to use for different situations: cost, market, income.
  • Correctly assess market potential, value proposition.
  • Prioritize opportunities—invest or divest appropriately to maximize ROI.
  • Establish ownership, license, and/or partnership deals.
  • Protect and leverage your firm’s intellectual property.
  • Strengthen your patent and product portfolio.

Pellegrino, who is author of BVR’s Guide to Intellectual Property Valuation and one of the world's foremost experts on how to value early stage technologies, will be leading this hands-on session in San Jose, Calif. Through a combination of methods, case examples, and hands-on exercises, you will learn to take the guesswork out of this critical activity. 
Registration fee is $1,695/person before Jan. 31 ($1,995 thereafter). Fee includes workshop materials, luncheons, refreshment breaks, reception, and post-workshop follow-up. Group discount: Teams of three or more that register together may deduct $100 each from the fee. To register, click here.

Don’t miss goodwill impairment, AIA, IPR&D, and SBIR/STTR grant funding webinars

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Portland, OR 97205
(503) 291-7963


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