As high-technology companies worldwide engage in patent sharing initiatives to address the COVID-19 pandemic, Asia IP featured insights from six intellectual property attorneys – including Jackson Walker partner Chris Rourk – about the advantages and risks associated with sharing their assets with researchers, manufacturers, developers, and those in between.
Ultimately, Chris noted, the pros and cons of IP sharing depend on the specific assets that are shared and how they are made available. An IP with general applications that is shared without restrictions may result in a bigger commercial loss than if an IP with more limited applications is shared with restrictions.
“For example, an artist might provide an open source license to a graphic image that they create to increase public awareness of their style. That graphic image may become popular and be used on commercial works, such as T-shirts and advertisements,” Chris said. “Even though the artist might have generated substantial licensing revenue if they had charged for that work, the fact that it was available at no charge may have been a contributing factor to its commercial use. The artist can then charge more for new graphic images. This is a one-way sharing of IP, where the IP creator is sharing their IP with others and getting nothing in return, at least not immediately, although public awareness could be considered something of commercial value.”
He added, “On the other extreme, an equipment manufacturer might share its hardware design with a firmware creator, and the firmware creator might share its firmware with the equipment manufacturer in return. While that shared IP would be very specific and very limited, the equipment manufacturer might be able to sell more of the equipment with the new firmware, and the firmware creator might be able to sell its firmware adapted to other hardware platforms based on the success of the equipment. While the shared IP would have very little use beyond what is originally contemplated, it could still make commercial sense for both parties to share their IP.”
To read more, see the Asia IP article “Care to share? The pros and cons of IP sharing” (subscription required). For questions related to invention protection and commercialization, please contact Chris at firstname.lastname@example.org.
Christopher J. Rourk is a Dallas intellectual property attorney with extensive experience handling high-profile matters for clients, both those dealing with all aspects of intellectual property as well as corporate transactions, commercial litigation and other complex interdisciplinary matters. He has prosecuted over 400 patents to issuance in diverse technological fields such as nanotechnology devices, semiconductor systems and devices, radio frequency systems and devices, analog systems and devices, telecommunications systems and devices, medical devices, image data processing systems and devices, and consumer electronics. His unique combination of ten years of work experience as an engineer and diverse legal experience has given him insight into solutions for many business problems encountered by clients, as well as preventative measures and strategies for avoiding those problems.