Friday, 22 May 2015

'Breakdown and Transformations in Innovation Economics: a webinar

IP Finance's friends at Oxfirst have another webinar coming up next week -- on Wednesday 27 May, to be precise. It's hosted by Patrick Terroir (right) on the subject of 'Breakdown and Transformations in Innovation Economics'. According to Oxfirst's explanation:
"IP is on the brink of becoming a consistent, transparent transfer instrument and there is a need to explore how these ‘versatile articles of trade’ (McClure 2008) can be leveraged in more open and efficient markets for innovation.

The introduction of new market mechanisms related to IP such as securitizations, pooled patent portfolios, public auctions and a financial exchange offer new opportunities to diffuse and reward inventors. Alternative IP market techniques have the potential to promote enhanced transparency, security and liquidity in markets for technology that cannot be achieved through bilateral licensing agreements.

In this talk Patrick Terroir addresses the opportunities and pitfalls associated with efforts to establish markets for IP".
The registration URL is https://attendee.gotowebinar.com/register/6259358435034874369 (it's also accessible by phone). Good news is that Oxfirst no longer require registrants to have a business or corporate email address: your personal one will do.

Wednesday, 20 May 2015

When iconic may not be enough: the saga of FAO Schwarz

"Iconic".  The Merriam-Webster dictionary defines it, inter alia, as follows: a: widely recognized and well-established" such as "an iconic brand name", or" "b: widely known and acknowledged especially for distinctive excellence", such as an iconic writer", or "a region's iconic wines."

What happens when an iconic store name is intertwined with one of the most iconic scenes in all of moviedom? Surely this must be a sure-fire recipe for brand success. Sadly, however, even being iconic is not enough—just ask FAO Schwarz, which announced last Friday that it was vacating its famous toy store on Fifth Avenue in Manhattan for a presumed relocation to a less pricey site.

I don't think I am unusual in saying that, when I first visited New York more than 50 years ago, one of the top destinations was the FAO Schwarz store. My aunts made a bee-line for several near-by retailers offering clothing that they could never afford. For me, however, there were only three places in Manhattan that I wanted to see—the Empire State Building, the Stature of Liberty and FAO Schwarz. I don't know how I came to know the saga of the store, growing up as I did many hundreds of miles away in a small town in Ohio. But so I did, as did all of my friends. By the time that I made it to New York, I knew that there were all kinds of toys in the store that we could never afford. No matter—it was enough to be able to enter and look at them, secure in my belief that the sons and daughters of the famous and wealthy would provide the custom to support the store.

If that were not enough, the store was the setting for the unforgettable scene in the 1988 movie—Big, in which Tom Hanks joined the boss of the mythical toy store (having been filmed at FAO Schwarz, something that we all recognized), as they played a duet on a foot-operated electronic keyboard, performing "Heart and Soul" and "Chopsticks." If any US toy store was iconic, it was surely FAO Schwarz, where the movie scene merely validated what I had long-known as a child—FAO Schwarz was a toy store like no other.

It was against that backdrop that I was so taken aback by the Reuters report that the store was leaving Fifth Avenue due to the high rent being charged and the other costs of operating the store at the Fifth Avenue location .By July 15th, the company, which was acquired in 2009 by the much less up-scale toy company, Toys "R" Us, will take an early exit from its lease. The exact financial details were not disclosed, although the store did state that it was looking for a new Manhattan location. Previously gone were the FAO Schwarz locations in other cities. At the most, the store advised, in addition to the relocation of the Manhattan site, it will maintain an online presence as well as some boutique presence in various stores of its parent, Toys "R" Us. The next day, Saturday, the store was packed with shoppers, many not even aware of the announcement of the previous day. Typical was.Laurent Orne, visiting from France with his family. He took a number of pictures of his six-year old daughter, aside the well-known toy soldiers adorned in red uniforms, observing that "we wanted to come here because this store is mythical".

Reflecting on all of this, it gives me pause to ask—what exactly is the value of such an "iconic", "mythical" name? True, the store is not apparently shutting its doors, but it is taking a step that will seemingly impair the aura of the name. Indeed, the question can be asked: is FAO Schwarz in the throes of a death-spiral, where the new store location struggles to find the combination of merchandise plus price points that will provide it with sufficient revenues? Will the typical customer in a Toys "R" Us store seriously consider paying the higher price tag of the boutique FAO Schwarz merchandise? However one looks at it, it seems to me that the brand is a fight for its long-term survival, no matter how iconic it is as part of American culture.

Monday, 18 May 2015

No trade, no tax relief for film sale-and-leaseback partners

In the United Kingdom an Upper Tribunal has dismissed an appeal against the decision of the First-Tier Tribunal that partnerships engaged in film sale-and-leaseback arrangements were not trading, and dismissed an application for judicial review of Her Majesty's Revenue Commissioners' decision to depart from its guidance on those arrangements. Accordingly, the individual partners were not entitled to tax relief for the partnerships' losses. The First-Tier Tribunal had been justified on finding, on the facts, that the sale-and-leaseback was a single, composite non-trading transaction (payment of a lump sum in return for an income stream).

The case is question is Samarkand Film Partnership No 3 and others v HMRC [2015] UKUT 0211 (TCC), a 206 paragraph decision of Nugee J and Judge Sinfield. The bottom line on this decision is this:

  • Each specific transaction should be examined on its own merits since the fact that it is of a type that might, in other cases, have constituted trading is irrelevant.
  • The trading requirement must be considered by reference to the partnership's business alone. Partners' borrowings and desired tax reliefs are irrelevant.
  • An interest in making a real, commercial profit (taking into account the time value of money) is at the root of commerciality for trade loss relief.

The Upper Tribunal was however divided on what the expenditure might be attributed to when valueless film rights were acquired, but concluded that the question must be determined by reference to the taxpayer's object in spending the money rather than from inferences derived from the value of the rights.

Friday, 15 May 2015

Commercialising Oxford Science

Oxford Science Industries is the latest attempt to cpaitalise on the commercialisation of intellectual property developed in universities. The Financial Times resported today that Oxford University together with its technology commercialisation subsidiary, Isis Innovation, had partnered with OSI to raise GBP 300 Million to exploit research from the oldest university in the UK (and this author’s alma mater…). The concept is certainly interesting, given Oxford’s succesful track record over the years in exploiting research from the university. The provision of early-stage capital is crucial in ensuring that university research is turned into successful products. More important will be, however, the support from the fund in the form of expertise and know-how to enable scaling up of the technologies.

This author has frequently seen promising intellectual property not being exploited because of the lack of understanding how business really works. He remembers negotiating for several months with one research group from a university (that will remain nameless) to obtain rights to some interesting research. The professor was convinced his IP could be commercially exploited immediately and the university wanted an appropriate remuneration. His company colleagues on the other hand pointed out the need for further development, testing adn certification. They saw only a long-term potential business and were not at all convinced of any immediate success. Both sides valued the technology and IP differently - and there was no way of bridging the gap. He can only wish the venture well in both managing the IP development and the expectations of the university with the requirements of potential licensees and investers.

Thursday, 14 May 2015

Patent fees: do they make a difference? CIPA speaks out

EPO's fee policy?
Do official patent fees make much of a difference to the overall cost of protecting innovation?  It can be argued that, against the cost of professional charges incurred in drafting and processing applications in the first place, the cost is relatively trivial.  This is not however the case for many SMEs and individual applicants, who may have limited resources and borrowing power and little or no inward cash flow.

Put in simple terms, there are two sets of fees. The first relate to the cost of filing and dealing with a patent application and these are incurred by all applicants.  The second relate to the cost of renewal of a granted patent. While these are in theory incurred only by successful applicants, they are higher and are regarded as being more burdensome since it may be many years (or never at all) before a patent generates any sort of income, but non-payment of maintenance fees will lose protection in the relevant market.

In March of this year the European Patent Office (EPO) released its proposals for renewal fees, discussed on the IPKat weblog here.

On the assumption that the level at which official fees are pitched may determine the number of countries in which patent protection is sought or renewed, at least one influential body believes that the scale at which those fees are set may be sending out a message regarding domestic competitiveness.  The following media release was issued by the Chartered Institute of Patent Attorneys (CIPA) in the UK, one of the largest and most articulate professional bodies within the patent profession. This is how it reads:
High fees could destabilise the European patent system, warn attorneys

UK Patent attorneys are warning that setting high fees for the new European Unitary Patent risks destabilising the patent system across the continent. “If fees are too high they could send a message to the world that Europe is uncompetitive,” said Jim Boff, Chairman of the CIPA Patents Committee:
“Lower fees are far more likely to attract businesses that currently only file patents at their national offices, thus increasing the number of European applications, fostering competitiveness, stabilising the new system, and helping small and medium size businesses become big businesses.”
The Court of Justice of the European Union last week dismissed the final legal obstacles to the setting up of a new patent system for Europe. However, the level of court and renewal fees for the new system remains a major issue for agreement among member states.

The lowest of the proposals so far made public is for patent renewal fees to be set at the equivalent of the combined cost of filing in the four countries with the highest number of patent validations (Britain, France, Germany and Netherlands). CIPA believes that setting fees at this level (or higher) risks destabilising the entire European patent system.

Netherlands is the third most expensive country in which to file after Germany (1st) and Austria (2nd), which means that a true “Top 4” calculation for renewal fees based on GB + FR + DE + NL would result in a fee level much higher than average patenting costs.

CIPA is proposing that at the outset renewal fees be set at a near “Top 3½” level as approximating the true average of renewal fees across all Member State signatories to the Unitary Patent Agreement).

Various considerations underpin applicants’ preference for GB, France and Germany among the Member States, but the provisions of the London Agreement, which make patenting in these countries financially attractive and easier as there are no translation requirements, is a key factor.

In CIPA’s view, the fees in these three countries offer a reasonable base line for setting out the Unitary Patent (UP) renewal fees level (even though Germany has the highest fees in Europe – a privilege it enjoys through being the biggest economy in Europe).

Under the Unitary Patent Court (UPC) Agreement, an inventor applying for a UP will be able to enforce this patent in the 25 Member States. Given the geographical scope covered by the patent, it would be understandable to charge more than the basic rate of GB + FR + DE.

CIPA also believes that this formula would align renewal fees with the objectives of the UP system, as set out in Article 12 of Regulation 1257/2012 which addresses various aspects of UP implementation.

In accordance to Article 12(1), the level of renewal fees should be high enough to cover the grant and administrative costs of the unitary patent and ensure that the budget of the EPO is balanced. Article 12(2) explicitly states that the renewal fees should be set at a level which makes the UP accessible to SMEs, facilitates innovation, fosters the competitiveness of European businesses, reflects the size of the market, and is similar to the level of national renewal fees for an average European patent. Our proposal meets these requirements.

If fees were set any higher than our proposal, we fear that: many SMEs would choose to spend their limited budgets on filing at their national office, rather than take the opportunity for broad European protection; and that a message would be sent to the world that Europe is not competitive.

CIPA’s proposal is for renewal fees during the initial stage of the UP. In the light of experience with take up of the UP the fees should be adjusted to ensure that they meet the requirements of the regulation and of European and UK businesses.

CIPA believes that setting fees at our proposed level would:

  • encourage more users into the European patent system,
  • increase income to the EPO
  • stabilise the new UP system
  • have a positive impact on innovation,
  • increase the competitiveness of European businesses.
This blogger is not aware of other professional bodies in the EU having issued their own statements concerning renewal fee levels, and would be grateful if any knowledgeable reader(s) could supplement his knowledge.