信息通信技术行业应对NPE标准必要专利诉讼风险研究——基于模糊集定性比较分析

[研究目的]相较于实体企业,NPE企业的专利诉讼行为将对被诉企业造成更大的威胁。近几年,在以标准为基础的信息通信行业中,鉴于标准必要专利的高价值性,NPE的标准必要专利诉讼尤为突出。通过研究这种诉讼行为,有利于企业从源头上进行提前预警和防范,有效规避诉讼风险。[研究方法]通过近三年在信息通信行业中NPE利用标准必要专利所发起的40个诉讼案例为研究样本,建立TOE分析框架,通过模糊集定性比较分析方法(fsQCA),探析在信息通信行业NPE频发标准必要专利诉讼的影响因素,利用不同因素的条件组合探讨企业面临NPE的诉讼风险。[研究结论]NPE商业模式、NPE企业规模、被诉企业规模、诉讼国家法律对NPE的友好度、专利有效性和专利必要性均为信息通信行业中NPE提出标准必要专利诉讼的充分条件。规模越小的投机型NPE企业,最有可能针对大规模信息通信技术企业发起诉讼。其次,当信息通信行业企业规模越大时,NPE企业的专利有效且为必要时,法院所在国家的法律对NPE企业较友好时,也容易引发标准必要专利诉讼。当被诉企业规模大,NPE企业规模小且NPE拥有的专利被无效的可能性大时,即使法律对其诉讼有优势,一般也不会发起诉讼,此时诉讼风险最小。针对上述研究结论,提出了有针对性的防范建议。     

The anatomy of a troll? Patent licensing business models in the light of patent reassignment data

We examine patent licensing business models of non-practicing entities that generate revenue by selling, licensing, or litigating patents. They may also pursue R&D activities, invent new technologies, or provide services to inventors or product companies. We describe their business models and patent market behavior and then compare their litigation strategies against product companies using a matched sample of highly comparable patents. The main differences among patent licensing firms stem from their technological capabilities, patent portfolio sizes, and external relationships. We find that licensing firms with technological capabilities often pursue litigation until decision and engage in forum shopping. In contrast, litigation incidence, parties involved, and outcomes are primarily determined by patent characteristics, not entity types. Licensing business models drive the acquisition of certain types of patents that influence the outcomes of the patent system. We argue that patent policy should strengthen mechanisms to discover invention quality rather than focus on the amount of litigation or types of entities.     

通讯行业专利诉讼倾向研究

近年来,通讯行业专利诉讼案件不断增加,非生产型企业在专利诉讼中扮演着重要角色,给相关企业造成了极大的损失。但是,对于专利权人发起专利诉讼的意愿和倾向,并无量化指标。本文通过定义专利诉讼倾向,测量通讯行业著名生产型企业和部分非生产型企业提起专利侵权诉讼的意愿和倾向。实证研究结果表明,非生产型企业的专利诉讼倾向远远高于生产型企业,专利诉讼倾向与产品类型、公司所在国家和诉讼持续时间等都有相关性。     

Patent trolls on markets for technology - An empirical analysis of NPEs’ patent acquisitions

Patent trolls, or NPEs, appropriate profits from innovation solely by enforcing patents against infringers. They are often characterized as relying on low-quality patents, an assessment that, if correct, would imply that eradicating such patents would effectively terminate the NPE business. In this paper, we shed light on this issue by empirically analyzing NPEs’ patent acquisitions. We draw on a unique dataset of 392 U.S. patents acquired by known NPEs between 1997 and 2006, which we compare to three control groups of 784 U.S. patents each acquired by practicing firms. We find that the probability that a traded patent is acquired by an NPE rather than a practicing entity increases in the scope of the patent, in the patent density of its technology field and, contrary to common belief, in the patent's technological quality. Our findings thus support recent theoretical propositions about the NPE business model, showing that NPEs procure patents that are more likely to be infringed, harder to substitute for, and robust to legal challenges. The fact that NPE-acquired patents are of significantly higher quality than those in the control group implies that elevating minimum patent quality will not put an end to the NPE business, and suggests that this business is sustainable in the long run. We furthermore discuss the fact that NPEs are peculiar players on markets for technology insofar as they are solely interested in the exclusion right, not in the underlying knowledge. We posit that transactions involving NPEs may only be the tip of the iceberg of “patent-only” transactions, a conjecture with strong implications for the efficiency and the study of markets for technologies. Managerial and policy implications are discussed.     

专利联盟对遭受联盟伙伴专利诉讼的影响机制

    专利联盟能否帮助联盟成员防范联盟伙伴专利诉讼？基于联盟学习、合作竞争和社会网络理论,着眼于专利联盟网络,以2006—2018年MPEGLA管理的12个专利联盟成员为样本,通过14 454组配对,采用负二项回归模型实证研究专利联盟对遭受联盟伙伴专利诉讼的影响机制,并分析探索式合作、竞争性学习、网络中心位置和技术相似性的调节作用。研究发现：专利联盟与遭受联盟伙伴专利诉讼强度呈正向关系,探索式合作、竞争性学习和网络中心位置显著削弱专利联盟与专利诉讼的关系,而技术相似性显著强化专利联盟与专利诉讼的关系。本文拓展了专利联盟对联盟伙伴互动的影响路径,对于高技术企业有效利用专利联盟并防范联盟伙伴专利诉讼具有现实指导意义。     

涉外诉讼影响企业专利申请的规模异质性研究

    加强专利司法保护就是激励创新,专利诉讼能否促进企业技术创新是专利经济管理研究的重要议题。本文以2000—2018年我国涉外发明专利民事案件为样本,构建动态效应模型,重点考察涉诉后不同规模被告企业的技术创新决策差异。研究发现：（1）涉外专利诉讼会提升我国被告企业的专利申请质量,而且大中型企业专利申请质量的改进效果更明显;（2）与专利申请质量变化不同,涉外专利诉讼发起后,小微企业专利申请数量显著增加,而大中型企业专利申请基本不受影响;（3）考虑创新能力异质性,小微企业涉诉后专利申请数量呈现倒U型增长关系。创新基础薄弱的小微企业涉诉后专利申请更活跃,但受限于经济效率影响,从诉讼后第五年开始,企业专利申请质量不再正向增长。     

Determinants of R&D investment: The Extreme-Bounds-Analysis approach applied to 26 OECD countries

This paper investigates the determinants of R&D investment at the national level with an emphasis on the roles of patent rights protection, international technology transfer through trade and FDI, and economic growth, in addition to the essentials of human capital accumulation and the number of scientific researchers. The Extreme-Bounds-Analysis (EBA) approach is applied to examine the robustness and sensitivity of these factors.The results of the EBA tests on data from 26 OECD countries from 1996 to 2006 showed that tertiary education and the proportion of scientific researchers in a country were robust determinants that had positive effects on R&D intensity. Foreign technology inflows had a robust and negative impact on domestic R&D. Patent rights protection and the income growth rate are fragile determinants of R&D investment.     

The impact of patent protection and financial development on industrial R&D

Stronger protection of patent rights is thought to spur innovation through securing returns to R&D investments. Those investments must be financed, however, suggesting that the responsiveness of R&D to patent reforms varies with financial development levels. We examine the joint impact of domestic and international financial-market development and patent protection on R&D intensities in 22 manufacturing industries in 20 OECD countries for the period 1990-2009. We show that stronger patent rights increase R&D intensities in patent-intensive industries, accounting for the need for external financing and the amount of tangible assets. The primary impact varies across types of financial development: patent protection raises R&D in high-patent industries where countries have more limited equity and credit markets. In contrast, in countries with more developed bond markets industry R&D is more sensitive to patent rights. Interestingly, patent rights in countries that are more exposed to foreign direct investment increase R&D intensities at all levels of financial development.     

The impact of M&A on the R&D process: An empirical analysis of the role of technological- and market-relatedness

Using information on 31 in-depth cases of individual M&A deals, we show that technological and market-relatedness between M&A partners distinctly affects the inputs, outputs, performance and organisational structure of the R&D process. While the findings in the literature on the effect of M&A on R&D are quite mixed, we can sharpen results by analysing data at the level of the R&D process. This comes at the price of a smaller sample and more qualitative data, for which caution in the interpretation is necessary. M&A between partners with ex-ante complementary technologies result in more active R&D performers after the M&A. In sharp contrast, when merged entities are technologically substitutive, they significantly decrease their R&D level after the M&A. Moreover, R&D efficiency increases more prominently when merged entities are technologically complementary than when they are substitutive. These two findings on the R&D level and the performance support the scope economy effect of M&A, on the one hand, and reject the scale economy effect of M&A, on the other. Next, for cases in which partners were active in the same technological fields before the M&A, the reduction of R&D is more prominent, while the R&D efficiency gain is smaller if merged entities were rivals in the product market prior to their merger than if they were non-rival. This suggests that rival firms reap little technology gains from mergers.     

Technological internationalisation in the electro-technical industry: a cross-company comparison of patenting patterns 1986-2000

This paper addresses the issue of R&D internationalisation of two multinationals in the electro-technical industry (GE and ABB), by means of a patent data analysis. The overwhelming majority of both companies’ R&D activities are concentrated in Western Europe and North America. The locational overlap between the two firms’ activities is small. These results are consistent with findings from earlier studies that (1) there is little evidence to suggest that the ‘production’ of technology is globalised in a general sense and (2) that tapping knowledge from an industry's global lead location plays a very limited role in foreign R&D investments.     

The role of inter-organizational relationships in the development of patents: A knowledge-based approach

This paper examines the role of various inter-organizational relationships in patent development, and how these relationships contribute to patent competitiveness. It takes the perspective of individual inventors and describes how they utilize external knowledge in the development of patents. Based on a case study of a European telecom operator, we found interaction with R&D consortia, suppliers and customers to support inventors in the development of new ideas for patents and in solving related problems. In terms of patent competitiveness, buyer-seller relationships were more valuable for an operator than R&D consortia relationships, as they reduced the market and technology uncertainty related to the patent.     

The distinct signaling effects of R&D subsidy and non-R&D subsidy on IPO performance of IT entrepreneurial firms in China

This study investigates how R&D subsidy and non-R&D subsidy affect entrepreneurial firms’ initial public offering (IPO) performance in an emerging economy like China. Analyzing data from 269 IT (information technology) entrepreneurial firms in China, we found that R&D subsidy has an inverted U-shape effect on IPO performance, while non-R&D subsidy has a positive effect on IPO performance. Furthermore, both state ownership and patent intensity moderate the inverted U-shape relationship between R&D subsidy and IPO performance. In contrast, neither of them moderates the positive relationship between non-R&D subsidy and IPO performance. These findings contribute to the literature on the effectiveness of government subsidy by highlighting the symbolic effect of government subsidy on external financing in emerging economies, and offer important practical implications to entrepreneurial firms and government funding agencies in China.     

NPE对我国专利运营模式的启示

伴随着互联网快速发展,经济全球化越来越深入我们的生产和生活。我国企业特别是一些高新技术企业以及知识产权相对集中的产业要走出去,难免会遇到专利纠纷和专利诉讼。而近年来NPE的迅速发展,无疑对经济社会产生了重要影响,引起了世界各国的关注。一些高科技公司和知名企业,已经被NPE给盯上而被迫支付高昂的专利诉讼费或者专利许可费,而一些小企业在走出去的同时也会遇到这样的问题。我国企业需要扬长避短来应对NPE的攻势,不然漫长的诉讼周期以及高昂的赔偿费用,很有可能拖垮中小企业,阻碍各产业的技术创新。本文将从NPE类型、运营模式及其带来的主要影响,并以高智公司为例研究其发展历程和讨论对国内企业可能造成的影响,以及借鉴国外和其他地区关于规制NPE的立法和实践等,从而提出建立和完善我国专利运营模式的可行性措施,对我国专利运营模式未来的发展等方面提出自己的见解。     

Do social policies foster innovation? Evidence from India's CSR regulation

We examine the effect of social policies on corporate innovation using India's mandatory Corporate Social Responsibility (CSR) regulation. This regulation mandates firms with pre-tax profits above a certain threshold to spend 2 % of the profits on CSR. We demonstrate a significant bunching of companies just below the profit threshold post-regulation compared to the pre-regulation period. Firms close to the profit threshold manipulate their earnings to avoid compliance by increasing their R&D expenses. We show that, on average, firms that increase R&D expenses to avoid the regulation apply for one more patent and announce two new products. The increase in R&D expenses and patenting is concentrated in firms with a prior history of innovation. Our results suggest that social policies can generate indirect incentives for innovation.     

The Bayh-Dole Act and university research and development

This paper examines the relationship between university research and development (R&D) activities and the Bayh-Dole Act. This act made it much easier for universities to obtain patents from research funded by the federal government and may have provided universities with an incentive to alter their R&D activities. The Act may provide an incentive to reduce basic research (which does not generate licensing fees) and increase applied research (which does generate patents and licensing fees). In addition, industry might be more willing to fund university R&D projects since the results would now be easier to patent. This paper differs from the existing literature which uses patent data (a measure of research output) by using research and development data (a measure of inventive input) to examine the effect of the Act.     

Specialisation precedes diversification: R&D productivity effects

We model how R&D enters the innovation system in four ways (intramural, extramural, cooperative, and spillover). Despite measuring three different spillovers together, for a very large sample of European enterprises we conclude that the productivity effects of spillovers were at best smaller than intramural R&D productivity effects. We also find that building on the greater skills and experience of enterprises already undertaking R&D (intensity) raised labour productivity more than providing support for those beginning R&D (extensity). Optimal extramural R&D intensity was higher than the actual level; sample firms could boost productivity either by abandoning extramural R&D or by doing much more. There were substantial differences in our sample between enterprises and countries in terms of R&D spillovers. Greater multinational corporation incidence in new EU members accounted for these countries' high direct R&D intensity productivity, regardless of their generally low overall labour productivity. Absorptive capacity made little difference to the utilisation of spillovers.     

Technological similarity,post-acquisition R&D reorganization,and innovation performance in horizontal acquisitions

This paper aims to disentangle the mechanisms through which technological similarity between acquiring and acquired firms influences innovation in horizontal acquisitions. We develop a theoretical model that links technological similarity to: (i) two key aspects of post-acquisition reorganization of acquired R&D operations – the rationalization of the R&D operations and the replacement of the R&D top manager, and (ii) two intermediate effects that are closely associated with the post-acquisition innovation performance of the combined firm – improvements in R&D productivity and disruptions in R&D personnel. We rely on PLS techniques to test our theoretical model using detailed information on 31 horizontal acquisitions in high- and medium-tech industries. Our results indicate that in horizontal acquisitions, technological similarity negatively affects post-acquisition innovation performance and that this negative effect is not mediated by the reorganization of the acquired R&D operations. However, replacing the acquired firm's R&D top manager leads to R&D productivity improvements that positively affect innovation performance.     

Differences in the rates of return to R&D for European and US young leading R&D firms

This paper examines the sources of Europe's lagging business R&D performance relative to the US, particularly the role played by missing young leading innovators in high technology intensive sectors in Europe. It investigates through econometric analysis differences in the rates of return to R&D of European and US large R&D firms. It finds that, while in the US, young firms succeed in realizing significantly higher rates of return to R&D as compared to their older counterparts, including in high-tech sectors, European firms fail to generate significant rates of return, even if they are Yollies and even if they are in high-tech sectors. These findings can at least partly explain why Europe has less R&D intensive young leading innovators in high technology intensive sectors.     

Standing your ground: Examining the signaling effects of patent litigation in university technology licensing

The licensing of university technologies to private firms has become an important part of the technology transfer mission of many universities. An inherent challenge for the technology licensing of universities is that potential licensees find it difficult to judge the early stage technologies and their ultimate commercial value. We reason that patent litigation against universities can have unintended signaling effects about the commercial value of its technologies and results in increased licensing income for the university. We ground this hypothesis in theory integrating signaling mechanisms from patent enforcement research into theoretical models explaining university technology licensing. Within our logic, the public and costly nature of patent litigation against universities creates strong, credible signals to potential licensees about the technologies of a university even if the signal was not created for that specific purpose. We isolate the signaling mechanism that is central to our theorizing by exploring two moderation factors that reveal additional information to potential licensees, i.e. the licensing track-record of the university and whether the lawsuit involves private firms as co-defendants. We test our theory with a unique dataset of 157 US universities and the 1408 patent infringement cases in which they were involved as defendants over the period 2005–2016. Results show that defending against claims of patent infringement enhances technology licensing revenues, particularly when universities are already adept at licensing technology and when they are co-defendants with private firms.     

现有技术抗辩中的技术比对规则－兼议专利法修订中现有技术抗辩建构

引言 近年来,现有技术抗辩受到业界越来越多的关注。第三次专利法修改草案也引入“现有技术”抗辩的条款,即《中华人民共和国专利法》（修改稿）（2008年2月28日修改）（以下简称“专利法修改草案”）第六十四条规定：“在专利侵权纠纷中,被控侵权人有证据证明其实施的技术或者设计属于现有技术或者现有设计的,不构成侵犯专利权的行为。