![Recent Case Law
• Ultrasoft Technologies Ltd v Hubcreate Ltd
• [2016] E.W.H.C. 544 (IPEC)
• Concerned software for management of
serviced office space
• Hubcreate and Ultrasoft are direct
competitors for this software](https://image.slidesharecdn.com/managingintellectualproperty-160622101416/85/Managing-intellectual-property-40-320.jpg)
![Risks in Litigation
• Not having a clear strategy at the start of the
litigation, whether bringing or defending a claim
• Possible example see Nekoti Ltd v Univilla Ltd
[2016] E.W.H.C. 556 (Ch)
• Not conceeding those points that should be
conceded (i.e. early admissions vital to save
costs)](https://image.slidesharecdn.com/managingintellectualproperty-160622101416/85/Managing-intellectual-property-47-320.jpg)
Managing intellectual property
- 1. SPEAKER : JIMMY VESTBIRK
- 11. Complexities in product / service development Understanding the risks and opportunities with intellectual property SPEAKER: GRAHAM BELL
- 12. “Things” that I’ve been involved with…
- 13. What CUBICIBUC does… • Clients tell us that they don’t want launch products with outstanding risks associated with the IP. • At Cubicibuc we believe that it is impossible to develop modern, complex products without infringing IP.
- 14. What CUBICIBUC does… • We provide services that allow our clients to understand who owns that IP; what the owners might do with it; and how our clients can manage those risks.
- 15. Today’s product world is a complex place • “In 1899 George B. Selden was awarded a patent for the automobile - it was a single patent” Today, it is impossible to develop modern, complex products without infringing IP. The key challenge is to understand who owns that IP and what they will do with it when your product is successful.
- 16. The spectrum of possible approaches to intellectual property Naïve Avoidance Naively ignoring the facts, not making suitable provisions. Lacks of planning means no leverage. Information Overload Unnecessarily trying to “know” everything inevitably leads to decisions paralysis. Too much info means no prioritisation. Finding a middle ground
- 17. A pragmatic approach to managing IP risks Information overload Unnecessarily trying to “know” everything inevitably leads to decisions paralysis. Too much info means no prioritisation. Naïve avoidance Naively ignoring the facts, not making suitable provisions. Lacks of planning means no leverage. Finding a middle ground
- 18. A pragmatic approach to managing IP risks Finding a middle ground
- 19. Where is the magic sauce? All businesses apply intellectual assets as the foundation of how they add value. Understanding where, how and by whom the value creation is done means that the associated IP can be identified and protected. While avoiding third party IP is impossible managing your own position to understand where in your value chain the “magic happens” is vital.
- 20. IP portfolios should be dynamic and your IP strategy closely match your product strategy – Maintaining portfolios is increasingly costly – organisations continually look to reduce these costs, and extract value from IP – In parallel, IP is not static. Just as product portfolios move on, technology evolves, so must IP portfolios. IP portfolios must adapt to current company drivers – Managing an IP portfolio is therefore an active responsibility with associated costs and revenues to be accounted for. New IP needs Old / unused IP Old / unused IP New IP needs v1 v2 v3 v4 v5 v6 v7 Roadmap
- 21. A pragmatic approach to managing IP risks Finding a middle ground
- 22. “Semantic text analysis” may identify the appropriate technology clusters A starting point to landscaping is often identifying what technology is key, and how to identify / describe it. Main Tech areas of additiona l interest
- 23. Clustering tech areas into more granular subsets International Patent Classification (IPC) based clustering of the portfolio in combination with the semantic provides a tighter list of relevant patents. • G06F 003 – I/O Interface Arrangements • G09G005 – Control for Visual Indicators • G06K009 – Recognition of patterns • G06T007 – Image Data Processing • G06F017 – Digital Computing
- 24. Citation analysis of patents gives us insight into where the portfolio sits relative to the IP assets owned by third parties Understanding the relationship between third party portfolios helps pinpoint potential key players with seminal patents.
- 25. Technology trend analysis would be useful to identify the key tech area among several areas for a given assignee/competitor
- 26. Simple analysis shows which third parties have the strong portfolios Having a view of the ownership landscape assists in preparing engagements with these entities – prioritisation, identifying leverage for negotiations or partnering opportunities.
- 27. A pragmatic approach to managing IP risks Finding a middle ground
- 28. Competitive reaction Understanding who owns the IP that you might be using allows you to prepare for potential responses to your market success. The IP landscape gives you valuable business intelligence to spot trends, to identify weaknesses and to build IP ahead of product roadmaps – maximising the value from your R&D. ImmediateReaction ConsideredReaction Blocking / Attacking Capability build / catch-up
- 29. A pragmatic approach to managing IP risks Finding a middle ground
- 30. Thinking about the value of your IP –Do we really care if others use your invention? If they did, would it impact your business? –How likely is it that others will use your invention? –Would having a patent deter others from practicing the invention?
- 31. Thinking about the value of your IP –What appetite do you have to enforce the patent? How policable is the invention? –What is the plan for utilising the invention? What are your own plans for exploitation? •Note: Only point 5 is introspective, but is historically the only question firms have asked.
- 32. Having no concept of value exposes the business to lost opportunities where IP could have contributed. Placing a value on your IP allows you to use it as leverage in commercial negotiations with suppliers and customers. Align IP strategy with business strategy to maximise
- 33. Understand how your IP can help succeed in controlling, managing or influencing relationships with suppliers, customers, competition in various sectors and markets. Align IP strategy with business strategy to maximise Market Sector Relationship Control Manage Influence
- 34. A pragmatic approach to managing IP risks Finding a middle ground
- 35. Driving R&D activity to generate patents for widest possible adoption R&D effort must be directed towards continually generating new IP to follow evolving technologies. However this can be expensive, and with complex products no one company can be expert in all necessary areas Prioritising R&D can be done directly or through research projects or consortia or by being involved in standards setting activities
- 36. Driving R&D activity to generate patents for widest possible adoption But working with standards committees takes a lot of time and effort, and is expensive Developing IP through R&D effort can be difficult. Increasing your patent portfolio through acquisition is an alternative option. IP may be acquired: • from existing owners • through acquisition of entire companies
- 37. Questions the Board should be able to articulate answers to their shareholders about their IP & IP strategy
- 38. Disclaimer and Notice: The information in this document is provided in confidence for the sole purpose of supporting the independent evaluation of the enclosed information relating to Cubicibuc Limited and related services. No assurances, representations or warranties pertaining to the enclosed information or its validity are provided or implied herein, and the information in this document is not legal advice, analysis or a legal opinion. This document is solely attributable to Cubicibuc Limited and does not necessarily represent the views or opinions of other third parties. This document and any other materials or information provided by Cubicibuc Limited are copyrighted, and are intended for use by the receiving party solely. Any distribution of such materials or information outside of the receiving party’s organisation without Cubicibuc Limited permission is strictly prohibited.
- 39. Current Legal Issues for Technology Companies SPEAKER: AMARDEEP DHILLON
- 40. Recent Case Law • Ultrasoft Technologies Ltd v Hubcreate Ltd • [2016] E.W.H.C. 544 (IPEC) • Concerned software for management of serviced office space • Hubcreate and Ultrasoft are direct competitors for this software
- 41. Ultrasoft v Hubcreate • A customer moved from Hubcreate to Ultrasoft and then back to Hubcreate • In returning to Hubcreate, the customer asked them to extract all of the accounts information, contacts, licence agreement and invoices from the existing Ultrasoft files and integrate them into the Hubcreate software. • To do so, the customer provided Hubcreate with a copy of the SQL database files
- 42. Ultrasoft v Hubcreate • Hubcreate then extracted the specific ‘UltraCRM/UltraBis’ files which should have contained this data, and copied them onto the Hubcreate SQL server • Hubcreate were unable to access this data, but were able to do so at a later date (after several failed attempts) when updated SQL files were provided.
- 43. The legal ramifications • Hubcreate legally liable, by copying and utilising the extracted SQL data files, for: – Copyright infringement – Infringement of the Database regulations • However, Ultrasoft also alleged further infringement, by alleging infringements as the data files were made available to the public • This latter allegation failed as no member of the public could access the SQL server upon which the data was stored
- 44. Learning/Discussion points • Early admissions save legal costs • Some companies may set up a ‘damages fund’ before undertaking infringing acts, i.e. essentially plan for a claim in the future (and then quickly settle any claim) • Possibly risky strategy as damages claim may be open-ended
- 45. Learning/Discussion points • What routes could minimise risk, if about to undertake infringing acts? • Identifying risk with customer (important, reinforces your reputation within market) • Seek indemnity from customer? • Ask customer to obtain suitable licence from competitor?
- 46. Learning/Discussion points • Alternatively, although not in all circumstances, seek dialogue with owner of software • Obviously dependant upon respective market sizes and reputations (ie direct competitors unlikely to agree to you working on their software) • Might discover new markets for your technology
- 47. Risks in Litigation • Not having a clear strategy at the start of the litigation, whether bringing or defending a claim • Possible example see Nekoti Ltd v Univilla Ltd [2016] E.W.H.C. 556 (Ch) • Not conceeding those points that should be conceded (i.e. early admissions vital to save costs)
- 48. Risks in Litigation • Considering which Court to litigate in: – IPEC: Costs recovery limited to £50,000, but damages limited to £500,000 – High Court: Damages unlimited, but no upper limit of payment of legal costs
- 49. Overall • Companies need to have Intellectual Property Strategies in place, to cover both collaboration and litigation • If protecting Intellectual Property rights by way of patents, then correct formulation of the claims is key to ensuring protection • If litigating, having an early idea of the strategy should allow for decrease in overall costs of litigating
- 50. REDUCING THE FINANCIAL RISK IN INTELLECTUAL PROPERTY LITIGATION SPEAKER: TIM MAYER THERIUM CAPITAL MANAGEMENT LIMITED
- 51. • Funding vs. insurance • Success fees vs premiums • Recoverability of either (or none) BASICS
- 52. • Market capacity, rating • Cost/pricing (general) • If the claim fails, then what? • a ‘third way’: funder’s adverse costs indemnity BASICS
- 53. • ‘Vanilla’ funding • Portfolios oclient ‘books’ olawyer ‘books’ oprofit shares ore-cycling odue diligence opricing FUNDING MODELS I
- 54. FUNDING MODELS II • Monetization of claims o sale/assignment o potential risks (champerty) o ameliorations: SPV with equ interests (management etc)
- 55. FUNDING MODELS II o awards; enforcement; a combination o sale at a discount (Elliot model) vs. more light-touch approach to suit client’s cash needs.
- 56. Funding and IP 56 • Pitfalls: o prior art o Originality o how test (due diligence)?
- 57. Funding and IP 57 o beware patent trolls o class actions – certification; opt ins/opt outs; jurisdictions •Funder flexibility via indemnities, portfolios
- 58. REDUCING THE FINANCIAL RISK IN INTELLECTUAL PROPERTY LITIGATION
- 59. • Funding vs. insurance • Success fees vs premiums • Recoverability of either (or none) BASICS
- 60. • Market capacity, rating • Cost/pricing (general) • If the claim fails, then what? • a ‘third way’: funder’s adverse costs indemnity BASICS
- 61. • ‘Vanilla’ funding • Portfolios oclient ‘books’ olawyer ‘books’ oprofit shares ore-cycling odue diligence opricing FUNDING MODELS I
- 62. FUNDING MODELS II • Monetization of claims o sale/assignment o potential risks (champerty) o ameliorations: SPV with equ interests (management etc)
- 63. FUNDING MODELS II o awards; enforcement; a combination o sale at a discount (Elliot model) vs. more light-touch approach to suit client’s cash needs.
- 64. Funding and IP 64 • Pitfalls: o prior art o Originality o how test (due diligence)?
- 65. Funding and IP 65 o beware patent trolls o class actions – certification; opt ins/opt outs; jurisdictions •Funder flexibility via indemnities, portfolios
Editor's Notes
- #12: Introducing Gannons
- #16: Unless links are formed between R&D and IP which are actively managed and tracked it is likely that gaps will form between the state of the IP and the R&D. These gaps will become risks to the product and the business is not managed. Organisations that do not control their IP risk their investments in R&D. They risk building deliverables that are not commercially attractive. Poor IP management leads to leakage of competitive advantage, real or spurious litigation or loss of product revenues.
- #23: Core technology areas are often dominated by the big vendors, particular in standards setting environment; niche areas may be easier to contribute to, but of lower importance Sectors such as telecoms and consumer electronics industries have a global market using international standards. Patent filing strategies should reflect this with family members being filed in strategically important jurisdictions: Europe, US, Japan and Canada (To protect in major markets) China, India (To protect in these major developing markets and manufacturing locations)
- #38: 1) Implicit in this question is do we know what IP we own. Do we have a record of patents? Do we have a register of trade secrets? Do we have a database of know-how? When was the last time your business did an IP audit? How do you know that the IP you have protects your investment in new product development? And importantly, what were the results of the audit used for? An audit in itself is unlikely to provide any business benefits. You have a nice list of patents, but ask yourself, “so what?” – unless you’ve categorised those into core, non-core, not-used; created a monetisation strategy for the non-core, allowed some to lapse, licensed or sold others, then it’s a list of assets. 2) Do you have an IP strategy? When was it last reviewed, and by whom? Do you understand how you can use IP to influence relationships with suppliers, customers, and competitors? Have you placed a value on your IP that allows you to use it as leverage in commercial negotiations with suppliers? 3) Do you have an items relating to IP in your risk register? How are they managed? Do new product developments identify IP lines items for bill of materials? Do you make financial provisions for new business cases for future licensing costs? Do you know where the gaps are in your IP, and how you plan to fill them? Do you understand the IP landscape relating to your core and non-core technologies? Who are your real competitors and where do the IP threats come from? How do you plan to mitigate / manage these risks? What is your appetite for IP acquisition? Do you understand how to value or other criteria that you might use when looking at acquisitions? 5) Do shareholders understand the IP that you own or are you simply blinding them with big meaningless numbers?