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Thursday, January 04, 2018

FRAND rates in US Judgement

A US judge has handed down a fair, reasonable and non-discriminatory (FRAND) licence for standard-essential patents (SEPs) in a high-profile quarrel between telecoms company Ericsson and TCL, a China-based smartphone maker.   Royalty rates fixed as under:
A running royalty for End User Terminals Sold beginning January 1, 2018 according to the following schedule:
 For each such product Sold that is compliant with GSM, GPRS, or EDGE (but not compliant with WCDMA, HSPA, and/or 4G), 0.164% of the Net Selling Price if sold in the United States, 0.118% of the Net Selling Price if sold in Europe, and 0.090% of the Net Selling Price if sold anywhere in the world other than the United States or Europe; 
 For each such product Sold that is compliant with WCDMA or HSPA (but not compliant with 4G), 0.300% of the Net Selling Price if sold in the United States, 0.264% of the Net Selling Price if sold in Europe, and 0.224% of the Net Selling Price if sold anywhere in the world other than the United States or Europe;

 For each such product Sold that is compliant with 4G, 0.450% of the Net Selling Price if sold in the United States, and 0.314% of the Net Selling Price if sold anywhere in the world other than the United States. Should TCL purchase TCL End User Terminals from a Third Party claiming to  be licensed or to have pass-through rights under Ericsson Licensed Patents that confer a license covering the End User Terminal, then TCL will receive credit for that pass through license in the royalty rates applied. In particular, with regard to Ericsson Patents that are essential to the WCDMA Standards (“Ericsson WCDMA Licensed Patents”) for the Selling of ASICs, then TCL may have the option of remaining unlicensed by Ericsson under such Ericsson WCDMA Licensed Patents subject to Selling TCL End User Terminals with ASICs that are compliant with the WCDMA Standard. TCL shall then pay a royalty equal to the rate paid for the GSM/GPRS/EDGE and/or LTE Standards as specified in Clause E(3)(a) or Clause E(3)(c) of this Injunction, as applicable, for each such TCL End User Terminal  provided that such TCL End User Terminal is also compliant with any of the GSM/GPRS/EDGE Standards and/or LTE Standards while it is qualified as a WCDMA End User Terminal. For the avoidance of doubt, the Parties acknowledge the doctrine of patent exhaustion. Ericsson confirms that upon the Effective Date it has not provided any licenses with pass-through rights under its 4G patent portfolio to a chipset provider, making, using, importing, selling, or otherwise disposing of 4G compliant chipsets and components. For the avoidance of doubt, TCL shall only be required to pay the highest  prevailing royalty rate under this Injunction for each End User Terminal. For example, the 3G royalty rate for 3G multimode End User Terminal includes the royalty rate also for the 2G part in such End User Terminal.
Source: Judgement

Thursday, December 07, 2017

Technology Transfer Evolution

The vision statement of Technology Transfer office now includes `University Economic Engagement'.
University leaders are increasingly responding to the needs of the innovation economy—and in particular their local economies—by including innovation, entrepreneurship, and “economic engagement” programming in their strategic planning processes. As part of this response, university technology transfer offices are evolving, and must continue to evolve, toward participation in a broader scope of efforts—with patents and licensing as one emphasis, and also connecting with and engaging in other efforts that support the learning and discovery missions of the university. In evolving toward broader participation in university economic engagement, technology transfer offices will develop deeper relationships with industry and other community partners; broaden their reach to areas such as education, technology development, and entrepreneurship; and integrate more closely with other supportive administrative functions such as industry contracting. While budget and resource threats to the university research enterprise are creating increased pressure to generate revenue from licensing and innovation activities, university leaders must recognize that successful economic engagement will not be focused on short-term income, but rather on longer-term work on relationship development and ecosystem building. 

EU guidelines on SEP

EU touched on transparency of SEP.

Information on the existence, scope and relevance of SEPs is vital for fair licensing
negotiations and for allowing potential users of a standard to identify the scale of their
exposure to SEPs and necessary licensing partners. However, currently the only information
on SEPs accessible to users can be found in declaration databases maintained by SDOs which
may lack transparency. This situation makes licensing negotiations and the anticipation of
risks related to SEPs particularly difficult to navigate for start-ups and SMEs. The primary
purpose of declarations is to reassure an SDO and all third parties that the technology will be
accessible to users, typically under a commitment to license under FRAND conditions.
SDO databases may record tens of thousands of SEPs for a single standard, and this trend is
growing9. The declarations are based on a self-assessment by the patent holder, and are not
subject to scrutiny regarding the essentiality of the declared patent, which can evolve in the
course of the standard adoption procedure. In addition, stakeholders report that even in
concrete licensing negotiations licensors fail to substantiate their claims with more precise
information. This is particularly unsatisfactory in the context of IoT where new players with
little experience of SEPs licensing are continually entering the market for connectivity. The
Commission therefore believes that measures, as outlined below, are needed to improve the
information on SEPs.
The Commission believes that SDOs should provide detailed information in their databases to
support the SEP licensing framework. While SDO databases collect large amounts of
declaration data10, they often do not provide user-friendly accessibility to interested parties,
and lack essential quality features. The Commission therefore takes the view that the quality
and accessibility of the databases should be improved11. First, data should be easily accessible
through user friendly interfaces, both for patent holders, implementers and third parties. All
declared information should be searchable based on the relevant standardisation projects,
which may also require the transformation of historic data into current formats. Quality
processes should eliminate also duplications and other obvious flaws. Finally, there should be
links to patent office databases, including updates of patent status, ownership and its transfer....


Saturday, October 21, 2017

Limits of cross-licensing agreement

HTC are the third party beneficiaries of a covenant contained in a 1998 cross-licence agreement between Qualcomm Inc and the Claimant, Philips. The three patents in issue concern High Speed Packet Access (HSPA) and have been declared essential by Philips to the Universal Mobile Telecommunications System (UMTS) standard developed under the European Telecommunications Standards Institute (ETSI). HSPA was added to the UMTS standard in 2002 (enabling handsets to download data at high speeds) and in 2004 (for uplink data transfer).  The alleged infringing HTC handsets implement releases 5 and 6 of UMTS, and have HSPA.  HSPA is a hybrid TDMA/CDMA system. 
HTC argued that they are covered by the covenant not to sue, because (i) they have been designated a "CDMA Technically Necessary Patent Beneficiary" in writing by Qualcomm to Philips; (ii) the patents have been declared essential to the UMTS standard; and (iii) the UMTS standard is a "CDMA Wireless Industry Standard".  Philip submitted that the alleged infringements arise from HTC's implementation of high speed packet access (HSPA) which is not an act of infringement of a "CDMA Wireless Industry Standard".

Further reading.

Friday, October 13, 2017

Book Summery

Patent IPR Licensing-
Technology Commercialisation-
Innovation Marketing

This is a guide book for researchers and innovators from IFIA member, Indian Innovators Association. The Author in his long association with innovators noticed that more often benefits from creative endeavor elude the researcher/ engineer. The point of vexation arises when they notice that there are no buyers for their innovation.

One remedy for this heart burning experience is to start preparation for commercialization early in the development phase with clarity on the fundamentals of relevant market. The market is different for Patent license, Technology Commercialization and Innovation. Understanding characteristics of the market you are jumping into is a pre-requisite for non-business savvy innovator. This guide book takes the reader to each of these markets giving a basic view of each market.

Message from Alireza RASTEGAR, IFIA President:

Intellectual Property protection, licensing, commercialization and innovation marketing are the required steps for developing an innovative idea into a marketable product. Having knowledge about these concepts ensured the successful exploitation of the innovative technologies in the industrial sectors.
The community of idea owners needs to know how to prepare a well-drafted patent application, generate wealth from the patent, create physical products to help the brand
thrive and license their patents without the need to write a business plan, develop a marketing strategy, spend money on advertising, or find distribution.
Thanks to the efforts made by the Indian Innovator Association, IFIA Full member and representative in India, such information has become available. The inventors and innovators all around the world are encouraged to benefit from the wealth of knowledge
included in the book "PATENT LICENSING TECHNOLOGY COMMERCIALISATION INNOVATION MARKETING" and become familiar with a variety of new concepts.

The book is available at , Flipkart, Amazon, Kindle, iBook, Google Play etc.

Monday, September 25, 2017

Public Procurement (Preference to Make in India) Order 2017- Notifying Cyber Security Products in furtherance of the Order

The Government has issued Public Procurement (Preference to Make in India) Order 2017 vide the Department of Industrial Policy and Promotion (DIPP) Notification No.P-45021/2/2017-B.E.-II dated 15.06.2017 to encourage ‘Make in India’ and to promote manufacturing and production of goods and services in India with a view to enhancing income and employment.
 In furtherance of the Public Procurement (Preference to Make in India) Order 2017 notified vide reference cited above, the Ministry of Electronics and Information Technology (MeitY) hereby notifies that preference shall be provided by all procuring entities to domestically manufactured/ produced Cyber Security Products as per the aforesaid Order.
For the purpose of this Notification, Cyber Security Product means a product or appliance or software manufactured/ producedfor the purpose of maintaining confidentiality, availability and integrity of Information by protecting computing devices, infrastructure, programs, data from attack, damage, or unauthorized access.
In addition to being an Indian registered / incorporated entity, and supplying products should satisfy the conditions of IP ownership as under:
IP Ownership rights would need to be substantiated by adequate proof, such as (a) adequate documentation evidencing ownership(evidenced by supporting proof such as documentation related to development but not limited to IP assignments, shrink wraps, license agreements, click wraps); OR (b) IP registrations. It may be noted that IP registrations is not a compulsory criteria as it is not necessary to register to exercise copyright in India.

Thursday, September 14, 2017

Patent IPR Licensing- Technology Commercialisation – Innovation Marketing : Guide Book for Researchers, Innovators

My new book:
The guide book by Indian Innovators Association will help researchers and innovators to clearly understand the difference between patent licensing, technology commercialization and innovation marketing. Everything is important but each one is different. Intellectual property is a common thread and the reader is taken through the fundamentals of IPR before explaining each of the three. topics.

Available at: