USPTO, AUTM join forces to educate examiners

To make sure that USPTO examiners have the very best knowledge possible about the technologies universities are working on to submit for patent consideration, the USPTO and the Association of University Transfer Managers announced a new program whereby AUTM will provide technical experts to speak with USPTO examiners wherever and whenever they want, David Kappos, head of the USPTO, announced at the plenary session of the AUTM 2012 annual meeting on March 15.

“AUTM will work with us to provide the technical experts who can speak to these groups of USPTO examiners about areas of technology they want our team to know about,” Kappos said. “It’s all upside: universities get the opportunity to share the state of the art; our examiners get smarter about the state of the art,” he continued.  Kappos encouraged university officials speaking to the examiners, be they professors, investigators, or post-grads, to use copies of documents they wish to share with USPTO examiners. USPTO hopes to reach out to every single one of its current 7,000 examiners at least once per quarter with technical education.

Do IP assets have any value apart from a bankrupt company?

After a large manufacturer of photographic supplies went bankrupt, the trustee tried to recover salary and dividend distributions to its executive shareholders as fraudulent conveyances. To refute these claims, the shareholders’ solvency expert valued the company’s goodwill at roughly $12 million at the time of the transfers. To boost this amount, he relied on an intangible asset appraisal by the shareholders’ BV expert, who valued the company’s patents, unpatented know-how, trademarks, customer relationships, and licensing agreements at just over $23 million. The trustee objected, claiming the intangibles valuation was pure speculation—and the bankruptcy court agreed.

“There is no evidence that any specific intangible had any value independent of its value in an ongoing business,” the court held, particularly unpatented know-how and customer relations. Further, the debtor’s value was tied into its licensing contracts with Kodak and others. When the business ran into financial troubles and couldn’t make its royalty payments, it risked the loss of these licenses, “which would likely further devalue the business’ intangibles,” the court said.

USPTO reducing number of unexamined patent cases

Just like her predecessor, USPTO Patent Commissioner Peggy Focarino has focused on reducing the number of unexamined patent cases, that is, cases that have not yet received a first action on merits (FAOM), notes Dennis Crouch in his blog www.patentlyo.com.

“In the past year, the number of unexamined applications has dropped by about 10% and is in steady decline,” Crouch notes. Moreover, the USPTO predicts that applications filed today will receive an action within 17 months as opposed to the current average of 23 months. IPWire notes that shorter approval times would boost value, and competitors would have less time to react.

Brazil fast becoming a hotbed of trademark and patent filings

A new report by Thomson Reuters, The Grown-Up BRIC: Innovation and Brand Expansion in Brazil, found that trademark and patent filings have grown at a furious pace. For instance:

• The total number of unique inventions issued in published patent applications and granted patents in Brazil grew 64% from 2001 to 2010.

• Between 1990 and 2010, trademark applications increased nearly 200%, reports www.sacbee.com.

• The top technology areas in terms of volume of published patent applications and granted patents with a Brazilian priority between 2001 and 2010 were computers, automotive technology, domestic appliances, and pharmaceuticals.

• Twenty-seven percent of all patents in Brazil are owned by universities, a direct result of steps taken by the Brazilian government to improve cooperation between universities and industry.

“Few emerging market economies boast Brazil’s unique combination of steady growth and a well-established intellectual property system,” said David Brown, president of the IP Solutions business of Thomson Reuters. “Our analysis reveals Brazil is a country ripe with market opportunity for the international community. Its stable intellectual property system and respect of brand protection make it a viable choice for companies looking to expand globally.”

Thorough technology assessment marries an evaluation of potential to identification of next steps

Laura Schoppe at Fuentek not only separates technology commercialization decision-making into distinct screening and assessment stages, but further divides assessment into evaluation of potential for commercialization and identification of key next steps, each buttressed by a thorough understanding of the following factors:

• Market needs and trends;

• Likely licensees;

• Market positioning that would yield the highest probability for commercial success; and

• Resource demands.

An assessment, therefore, produces at once a recommendation as to whether or not to pursue commercialization of the technology and a game plan to execute on that recommendation, should it be to move forward.

A valuable tool in the assessment process is the full-text license and royalty rate database offered by ktMINE through Business Valuation Resources.

BVR’s Guide to Intellectual Property Valuation, Second Edition, now available

BVR’s Guide to Intellectual Property Valuation is the definitive reference to draw credible and defensible IP value conclusions. In this second edition, leading expert Michael Pellegrino of Pellegrino & Associates delivers real-world case studies of IP valuation analyses from start to finish in each of the primary IP categories. This practical, hands-on guide presents an objective framework for conducting due diligence of IP rights, performing the legal analysis, and correlating the impacts of IP rights on value. Order today for $199 (+ S&H). The Online Guide is available for $329. It includes access to the PDF version of the book, intellectual property case law, regular updates, and live news feeds.

Don’t miss webinars on a network approach to valuing patents, valuing early stage companies, and how universities fail women inventors

IPWire keeps you up-to-date on the hottest topics in IP management and valuation through Business Valuation Resources. Don’t miss these upcoming webinars:

• Using a Network Approach to Valuing Patents and Inventions, April 18, 2012, featuring Mike Lloyd of Griffith Hack and Doris Spielthenner of Ambercite;

• Valuing Early Stage Companies, April 26, 2012, featuring Mike Pellegrino of Pellegrino & Associates; and

• How Universities Fail Women Inventors, May 16, 2012,featuring: Scott Shane, Ph.D., of Case Western Reserve University’s Weatherhead School of Management.