LES/AUTM 2003 Spring Meeting:
Setting the Gold Standard in Intellectual Asset Valuation

Conference Homepage | Agenda | Plenary Sessions | Add-On Seminars
Workshops | PDS Workshops | Fundamentals of Intellectual Asset Management
Register | Hotel | Philadelphia | About the Organizers

Thursday, May 8
2:00-3:15 pm

In this bioinformation age, companies commonly hold patents covering novel processes (e.g., nucleotide sequencing/identification, drug screening assays using a novel target) whose "products" are information that may itself not be patentable. How can a company protect itself when others practice its patented methodology in secret or offshore, then use or sell the unprotected information "product"? This session addresses aspects of that issue, including
(1) ways to enforce process patents, including laws preventing importation of products made by patented methods;
(2) claim drafting strategies to increase patent protection; and
(3) licensing or business strategies to discourage unpermitted use of patented methods.

Workshop #2
Valuation
Positioning Your IP Portfolio to Achieve Maximum Value
Colin G. Sandercock, Shareholder, Heller Ehrman White & McAuliffe
Bruce Jenett, Shareholder, Heller Ehrman White & McAuliffe
Annika M. Reinemann, Principal, Houlihan Valuation Advisors
Steven D. Hobman, Senior Vice President and Manager, Comerica Bank
Terry C. Bradford, Senior Manager, Intellectual Assets Solutions Group, Ernst & Young

The panel members will present the different views of IP valuation from (1) the corporate lawyer overseeing the transaction on behalf of the acquiring/acquired company and/or the VC, (2) the IP lawyer performing due diligence on the technology for the acquirer/investor, (3) an expert IP valuation consultant, (4) a banker who lends money with IP as collateral and, finally (5) a consultant from a big four accounting firm with experience in IP valuation. Presenting each of these viewpoints should provide attendees with practical advice for building or strengthening their portfolios and advice for dealing with professionals in these industries.

Workshop #3
IAM
Public Investment in the Creation of Intellectual Capital: An Intellectual Asset Management Approach
June Blalock, Technology Licensing Program Coordinator, USDA, ARS, OTT
Mildred Hastbacka, Associate Director, Technology and Innovation, TIAX LLC

Private industry benefits from public policies that encourage investments in the creation of intellectual capital. The public directly invests in the creation of intellectual capital by funding research at universities and government laboratories. With some adjustments, the intellectual capital company model can be adapted to describe public/private partnerships created for the purpose of converting intellectual assets to achieve technology transfer. The model can be used to analyze how best to manage the intellectual assets of a public sector research program and to extract value for private sector partners. The public sector indirectly invests in the creation of intellectual capital by implementing tax policies that encourage investment in the development of intellectual assets.

Workshop #4
University Licensing
Corporate Champions: Internal Marketing and Review of Intellectual Property
Kenneth H. Levin, Ph.D., Harvard Medical School

This workshop will be run as a focus group. Attendees will be active participants in a forum exposing the mysterious process that transpires inside the corporate walls after an academic invention is targeted as a potential in-license.

Thursday, May 8
3:45-5:00 pm

Licensing deals within the healthcare sector are more difficult to negotiate than ever. License terms include running-royalties, milestone payments, up-front payments, equity, options, minimums, maximums, etc. This workshop will highlight the ways business case analysis and common IP valuation techniques can be used to successfully negotiate complex deals. The workshop will have both a theoretical discussion as well as a discussion of the Lipitor deal between Warner-Lambert and Pfizer.

Workshop #6
Valuation
Trends in Patent Statistics and Royalty Rates - Impacts on IP Valuation
Michael F. Maloney, Director, Navigant Consulting, Inc.
Russell L. Parr, CFA, Intellectual Property Research Associates, Inc.
Michele Riley, Principal, Navigant Consulting, Inc.

Trends in patent statistics, royalty rates and patent damages are typically studied and analyzed independently. Patent statistics include a variety of measures intended to understand relationships between patent activity and company or industry performance. Royalty rates include rates in licensing and litigation, by technology area and/or industry. Patent damages include published royalty rate or lost profits awards in a variety of industries. An empirical study of recent trends in these three areas, both generally and within key industries and technologies, will provide useful information to licensing, financial and legal practitioners in understanding trends in overall IP valuations.

Workshop #7
IAM
Enterprise Management of Digital Assets
Laurie DeJack, IT Licensing Manager, Ford Global Technologies

In the information age the ability of an enterprise, regardless of size, to manage, protect, and exploit its digital assets is of the utmost importance. One model for a digital assets business strategy will be discussed. Three main areas will be discussed; development and acquisition of digital assets, protection and management of digital assets, and internal and external exploitation of digital assets.

Workshop #8
University Licensing
Optimizing Your Patent Portfolio by Investing in Future Biomedical Breakthroughs
Imma Barrera, Ph.D., Senior Licensing Associate, Mount Sinai School of Medicine
Alejandro Donoso, Ph.D., Director, Technology Licensing and Alliances, Aventis Pharma
Jeffrey M. Bockman, Ph.D., Vice President, Defined Health
Melinda S. Shockley, Ph.D., Director, Business Development, Medarex, Inc.

When triaging an invention disclosure, the university technology manager often considers how the disclosure defines a product and fits into a market. As part of this process it is necessary to assess industry's needs and the perceived value of potential products. In order to allocate the proper resources and to optimize the University's patent portfolio, the university technology manager needs to be familiar with current industry trends and perceptions. This workshop will explore such trends and the direction of applied research in hot therapeutics areas such as the central nervous system diseases, cancer and anti-infectives.

Friday, May 9
10:30-11:45 pm

As the biotechnology and pharmaceutical industries have leapt into the forefront of technological innovators and the number and scope of technology providers/developers in the industry has multiplied, the use of reach-through royalty provisions in licenses has increased. Reach-through type licenses can provide both benefits and challenges for both the licensor and the licensee. Further, the use of such licenses can present drawbacks and legal concerns in the areas of antitrust and patent misuse. Additionally, how does one determine the value contribution of the technology in the specific licensing situation? This workshop aims to explore both the benefits and the risks of using reach-through licenses, discuss when they may be most appropriate, and discuss methods which can aid in understanding the value of technologies that can be licensed in this manner.

Workshop #10
Legal
Diligence: What Kind of Investigation is "Due"?
Peter C. Lando, Shareholder, Wolf Greenfield & Sacks P.C.

When considering purchasing or licensing new technology or a technology-based business, a buyer and its counsel will typically focus on how much diligence to perform. IP counsel wishing to add value to the diligence processes will look beyond "traditional" due diligence and address what kinds of investigations to conduct (i.e., what information will produce a fuller picture of risk). This session will consider, in addition to conventional diligence inquiries, non-standard areas when conducting due diligence, including: reviewing competitors' IP positions; understanding competitive technologies; determining how customers will exploit or use the technology; and determining whether the technology will be core technology or whether (and for how long) it will fill a gap.

Workshop #11
Start-Ups
Academic Start-Ups Ð Part I: Conception to Birth
Joseph D. Fondacaro, Ph.D., Director, Intellectual Property and Venture Development, Cincinnati Children's Research Foundation
David R. Scholl, Ph.D., President and CEO, Diagnostic Hybrids, Inc.
Carol J. Frankenstein, President, Bio/Start Biomedical Incubator
John M. Rice, Ph.D., Director, Medical Technology, Sentron Medical, Inc.

Although the exception several years ago, the genesis of new companies from academic research centers is now commonplace. This double workshop will explore academic start-ups from three perspectives during two critical phases of the start up company activity. Session I will focus on (1) issues that are of concern to the academic entrepreneur, (2) the role of the incubator facility and (3) the issues under consideration by the venture and angel investment community during the stage prior to actual company formation.

Workshop #12
University Licensing
The University Faculty/Industry Consulting Agreement Dilemma
Kathryn Doyle, Ph.D., J.D., Partner, Morgan Lewis & Bockius
Stephen Roth, Ph.D., CEO, Immune Control, Former CEO and Chairman, Neose Technologies, Inc.
Sandy Retzky, Vice President, Business Development, Incyte Genomics, Inc.
Kathleen Denis, Ph.D., Associate Vice President, Technology Transfer, Rockefeller University

University professors have a history of entering into consulting agreements with Industry where the faculty member provides know-how and guidance to Industry in the development of technology in which the faculty member has expertise. It is standard policy for University faculty to assign their inventions to their University employer; however, Industry desires to benefit from the consulting arrangement by having an interest in any intellectual property that develops during the interaction. This workshop will address the dilemma these arrangements pose from both the University and Industry perspective.

Friday, May 9
2:00-3:15 pm

The panel discussion will focus several items that should not be overlooked when putting value on your technology: finding the right partner, defining your IP within the final product, and identifying who will sell the final product (pharmaceutical company?), and taking into account the risk taken by each party (academia, biotech and pharmaceutical) and using these in determining value.

Workshop #14
Legal
Structuring Licensing Deals to Maximize IP Value
Bernard Tiegerman, Licensing Executive and Senior Counsel, Nortel Networks

The presentation will explore ways to leverage IPR and develop and enter into deals and associated agreements to maximize the value of IPR which can be and is licensed. A portion of the presentation will focus on ways to use IPR for more than just income. Another portion of the presentation will highlight patent licensing versus technology licensing and the benefits coming from each, and the five basic aspects of a license/license deal: what IPR, what product/technology is licensed, what rights are granted, field of use and territory - all with a focus on maximizing both the rights granted and the rights to be saved for other uses.

Workshop #15
Start-Ups
Academic Start-Ups - Part II: Infancy to Maturation
Joseph D. Fondacaro, Ph.D., Director, Intellectual Property and Venture Development, Cincinnati Children's Research Foundation
David R. Scholl, Ph.D., President and CEO, Diagnostic Hybrids, Inc.
Carol J. Frankenstein, President, Bio/Start Biomedical Incubator
John M. Rice, Ph.D., Director, Medical Technology, Sentron Medical, Inc.

Session II will examine (1) issues of priority for successful company growth, (2) the role played by the incubator facility in this phase and (3) what investors are watching after they've invested following company formation.

Workshop #16
University Licensing
Reducing Patent Costs
Lee C. Heiman, Attorney, Nath & Associates PLLC
Louis P. Berneman, Ed.D., Managing Director, Center for Technology Transfer, University of Pennsylvania
Todd L. Juneau, Partner, Nath & Associates PLLC

Are patent costs running out of control? Are potential licensing partners and investors telling you that your patents are too narrow, too broad, or don't cover the product? Is patent counsel billing you for services you did not expect or authorize? This session will address these and other issues related to controlling the cost of developing the most valuable assets held by University Technology Transfer Offices and Start-ups.