Insights on Intellectual Property Licensing, Copyright and Patent Infringement, and SEP Licensing

Welcome to the forty-seventh edition of Ocean Tomo Insights, our weekly LinkedIn newsletter featuring Expertise for the Innovation Economy? - unique insights from intellectual property experts at Ocean Tomo, a part of J.S. Held.

In this edition, Ryan Zurek shares insights on the role intellectual property licensing is playing in the Autonomous Vehicle Industry. Chris Wichser explores how reverse engineering services help protect your patents and defend them during patent infringement litigation. Also in this edition, Shelly Irvine explores the future of standard essential patent licensing in the Internet of Things space.

Intellectual Property Licensing in the Autonomous Vehicle Industry

As new technologies continue to reshape the automotive industry, intellectual property (IP) management becomes a critical factor in staying at the forefront of this dynamic and innovative sector.

Senior Managing Director and Advisory Services lead Ryan Zurek comments on the Ocean Tomo Autonomous Vehicle Industry Report noting:

“The Ocean Tomo Autonomous Vehicle Industry Report examines the components of market value, challenges and changes in the autonomous vehicle marketplace, and the increasingly critical role IP licensing is playing in the industry.”

To explore this topic and its implications for your IP assets and strategies, please contact Dan Principe at [email protected] or +1 312 377 4426.?

To learn more,?download the Autonomous Vehicle Industry Report here.

Reverse Engineering in a Copyright and Patent Infringement Case

While this story takes place in 1990s, the lessons learned ring true today.?Reverse engineering is an important tool to support IP strategy.?In 1992, a high-profile U.S. software copyright case involved Nintendo’s Nintendo Entertaining System (NES) video game console and cartridges. Reverse engineering services played a pivotal role in the legal proceedings.

Nintendo had developed a security system for their NES using microprocessors to ensure only their games could operate on the NES. Atari, a video game company, used reverse engineering and produced unauthorized NES-compatible games. Nintendo filed a lawsuit for copyright and patent infringement.

Although patent reverse engineering is what allowed Atari to infringe on Nintendo’s NES security system patent, it was also reverse engineering that helped Nintendo mount a solid case against Atari when the time came to take them to court. A reverse engineering service team performed a teardown of Atari’s Rabbit to conduct its patent infringement analysis.

As a strategic partner in pre-trial preparations, Ocean Tomo, a part of J.S. Held, helps your company enter the courtroom prepared to achieve the best possible outcome.

To learn more about how reverse engineering services help protect your patents and defend them during patent infringement litigation, click?here.

For further information, please contact?Chris Wichser?at?[email protected].

Exploring the Future of Standard Essential Patent Licensing in the IoT Space

There has been much discussion recently around standard essential patent (SEP) licensing as it applies to the internet of things (IoT) space. Most thought leaders agree that given the vast number of IoT verticals emerging over the coming decades, there will not be a one size fits all model for licensing. Indeed, predictions are that we will see a mix of traditional models of bilateral licensing and patent pooling but also likely new and creative ways of thinking about licensing, centering on more transparency. For example, engaging industry groups and leaders earlier in the licensing process for candid discussions with patent holders around value and contribution could improve efficiency.

Other ideas involve having one or more centralized bodies that determine the FRAND rate by industry vertical using consistent and transparent criteria. Changes such as these would be a mind shift for the industry and might meet with resistance but, if done right, could lower transaction costs and reduce litigation.

Implementers I’ve spoken with indicate a willingness and desire to engage in early conversations with patent holders around fair and reasonable licensing rates in the IoT space. Transparency is key. Taking the good of what has been achieved in the mobile device space and learning from mistakes will help to advance the ball in what is sure to be the next wave of SEP licensing.

To learn more about this topic, click?here.

For further information, please contact?Shelly Irvine?at?[email protected]?or +1 415 946 2556.

Upcoming Events

• Connect with Managing Director?Shirley Webster, CBE, and Director Yuliana Sameroynina, at the ChIPs Global Summit from November 8 – 10th.
• Connect with Senior Managing Director Chris Wichser and Dr. Marek Wernik, Ph.D., at IPBC Asia from November 28-30th.

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