Additional Sessions
BUSINESS DEVELOPMENT
MODELS TRACK
WORKSHOP 1-A: CREATIVE MODELS FOR
UNIVERSITY TECH TRANSFER
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
This workshop explores the cultural, environmental,
and strategic influences on university
technology transfer. It then proposes a number
of analytical frameworks and models for
universities to assess their particular situations
and develops policies and practices that are
best suited to their needs, and that will
result in the conversion of research dollars
into economic and social value. Rather than
accept the "one size fits all" approach to
technology commercialization, we will
explore three innovative models: Resource
Consolidation, Local Seed Scattering and
Third Party Agency Engagement.
- Daniel Trotzer, Consultant, Penn State Smeal
College of Business and Bowling Green
State University
- Anthony Warren, Penn State Smeal
College of Business
WORKSHOP 2-A: CLICK AND MORTAR
TECHNOLOGY ACQUISITION
AND LICENSING
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
Thanks to PCs and lots of transparent
IT/SCM/ERP resources, we never have to
leave the house to shop. We can browse
online stores, see what's for sale, haggle
over price, buy value-priced goods and have
them delivered right to our doorstep. Is technology
acquisition and licensing headed this
way? Are we there now? Not exactly. This
workshop examines Web-based approaches
to technology acquisition and licensing.
Faults and pitfalls will be discussed, including
failure to use these services properly and
for their intended purposes. Web-based
approaches are a supplement to, not a
replacement for, the "human touch" by
knowledgeable professionals. We will discuss
the Kauffman Foundation's iBridge pilot
initiative. We will advance a “click and mortar”
model for industry/university interaction,
scalable for different sized companies and
different sized research institutions, and
examine a case study with P&G Bioscience
Business Development Group.
- Dale Cooper, Head of Bioscience Business
Development – Americas, Procter & Gamble
- Ken Lynn, President, Kauffman Innovation
Network, Kauffman Foundation
- Dan O’Neill, Associate Director, Intellectual
Property Office, University of Cincinnati
WORKSHOP 3-A: BATTELLE-MANAGED
DEPARTMENT OF ENERGY NATIONAL
LABORATORIES: COMMERCIALIZATION
APPROACHES AND LESSONS LEARNED
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Battelle is a global science and technology
enterprise that develops and commercializes
technology and manages or co-manages five
national laboratories for the Department of
Energy—Pacific Northwest National
Laboratory, Idaho National Laboratory, the
National Renewable Energy Laboratory, Oak
Ridge National Laboratory and Brookhaven
National Laboratory. These laboratories differ
in terms of their core scientific strengths
and the structure of their technology transfer
operations, but have a common influence
from Battelle in the implementation of their
commercialization approaches. An overview
of scientific strengths, structure of the technology
transfer office and results of each
laboratory will be presented. The Battelle
influence on technology commercialization at
each laboratory, as implemented via contract
mechanisms or approaches which May be
unique, will be discussed in some detail as
a “lessons learned” experience.
- Casey Porto, Director, Technology Transfer,
Oak Ridge National Laboratory
- Cheryl Cejka, Director, Technology Transfer,
Pacific Northwest National Laboratory
- Tom Williams, Director, Technology Transfer,
National Renewable Energy Laboratory
WORKSHOP 4-A: FOR-PROFIT TECHNOLOGY
TRANSFER FIRMS
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
For-profit technology transfer consulting
firms are thriving in the niche between
academic and commercial technology transfer.
Several business models have emerged, from
fee-only consulting to active licensing and
investing in technologies. This session will
explore the demand for technology transfer
consulting, reveal the modi operandi of
recently launched firms, and conclude with an
audience-inclusive discussion of the pros and
cons of working with for-profit consulting firms.
- Michael Batalia, Ph.D., Director, Office of
Technology Asset Management, Wake Forest
University Health Sciences
- J. Heidjer Staecker, Principal and Co-Founder,
TreMonti Consulting, LLC
- Gina Stewart, Ph.D., Associate, Seed Stage
Associates, LLC
WORKSHOP 5-A: INTEGRATING LICENSING WITH
BUSINESS DEVELOPMENT IN A
NATIONAL LABORATORY Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
Transferring technology to the commercial
sector is a major responsibility of all
Department of Energy (DOE) Laboratories.
In dealing with very early stage technologies,
commercialization success often hinges on
involving the inventor in the product development
effort with the licensee. In this setting,
making a patent decision quickly is one of
the keys in executing a licensing effort in a
timeframe that ensures the availability of
the inventor for the commercialization effort.
Delays can result in missed opportunity as
the researchers move on to other projects.
Learn about the radically new approach the
Idaho National Laboratory has taken to
dramatically reduce the cycle time needed
to make patent decisions, and its positive
results for the Lab.
- Ray Barnes, Director, Technology Transfer & Commercialization,
Idaho National Laboratory
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HEALTH CARE TRACK
WORKSHOP 1-B: BE READY FOR WHAT YOU
WISH FOR
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
In the post-9/11 environment, and in light
of emerging health care crises, companies
and licensees working in the biomedical /
antiterrorism sectors, particularly start-ups,
need to be prepared for the success they
wish for, especially if the world will need
more of the product or service than the
company itself can provide. Companies need
to know that mandatory third party licenses
(under March-In, 28 USC 1498, and Doha)
May be imposed upon them. Companies
should also be interested in hearing about
proposed state legislation to use mandatory
third party licenses under eminent domain
to control drug prices (Vermont and DC bills,
and proposed Model State Pharmaceutical
Eminent Domain Act). Case studies will be
drawn from among past March-in petitions
to NIH (CellPro, Norvir and Xalatan, which
were related to drug price); Decca Ltd and
1498; Anthrax/CIPRO/Bayer; and now Avian
Flu/Tamiflu/Roche.
Moderator:
Kathleen Sybert, Of Counsel,
Clinical Technology Transfer Group
Speakers:
- Barbara McGarey, Deputy Director, Office
of Technology Transfer, National Institutes
of Health (Invited)
- Tamsen Valoir, Partner, Baker & McKenzie
WORKSHOP 2-B: THE CHANGING PARTNERING
PARADIGM BETWEEN ACADEMIA
AND THE BIOPHARMACEUTICAL
INDUSTRY
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
New legislative initiatives such as The
Create Act, court decisions such as Merck
KGA Vs Integra, and challenges to the
Bayh-Dole Act represent external environmental
events that have an impact on life science
industries' perception of and willingness to
work with academia. Because of the increased
need to improve R&D productivity, there is
an increasing need by pharma in particular
to license research tools, access scientific
thought leaders and fund major collaboration
agreement in academic centers of excellence.
A panel of seasoned pharma executives will
share their view and ideas about the evolving
nature of their relations with academia.
Moderator:
Patricia Weeks, Fox Chase Cancer Center
Speakers:
- Christopher Yochim, Director, Global Discovery
Alliance, AstraZeneca
- Mark DellaPorta, Senior Director, Strategic
Alliances, Pfizer Groton Labs
- Robert Gould, Vice President, Licensing and
External Research, Merck & Co. (Invited)
WORKSHOP 3-B: ELEVEN MISSTEPS IN VALUATION
AND HOW TO AVOID THEM
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Every business development executive recognizes
the high levels of risk and uncertainty
inherent in developing and commercializing
pharmaceutical products. Even if accurate
discounts could be identified for clinical and
regulatory risks, valuations would still need
to reflect the uncertainties of product labeling,
market adoption, and competitive entry. With
so many real drivers of uncertainty, there is
little room for avoidable missteps in conducting
valuations. Nevertheless, forecasters often
overlook opportunities to improve their models.
In this session, the presenter will review
some of the most frequently encountered
errors found in valuation models. The audience
will then participate in an interactive discussion
of how decision makers can increase
the likelihood that the models they rely on
reflect the “real world” of pharmaceuticals
commercialization.
- Ben Bonifant, Senior Practice Executive,
Campbell Alliance
WORKSHOP 4-B: PERSPECTIVES AND ISSUES IN
BUILDING GLOBAL HEALTH ALLIANCES
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
The rising awareness over the last few years
of the enormous challenges of global health
inequity has led to a steadily growing commitment
of various organizations to effectively
address the issues. There are now initiatives
to increase the accessibility and affordability
of existing interventions for neglected diseases
and to encourage more research and innovation
to create new and improved diagnostics,
vaccines, and drugs. These efforts have
produced novel alliances that involve governments,
academia, foundations, and the
industry, including the formation of product
development partnerships. The panelists will
address how they identified their current
partners and successfully formed an alliance
with them, including issues and challenges
they encountered during their experiences
and how they came up with the solutions
that led to the formation of the partnership.
Moderator:
Tari Suprapto, Technology
Manager, Office of Technology Transfer,
The Rockefeller University
Speakers:
- Kevin Kuehm, Vice President North America Licensing, Bayer Healthcare Pharmaceuticals
- Gerald Siuta, PhD, President, Siuta Consulting
- Richard Wilder, Partner, Sidley Austin Brown & Wood
WORKSHOP 5-B: LICENSING ISSUES IN
PERSONALIZED MEDICINE AND
PHARMACOGENOMICS
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
The fields of pharmacogenomics and
personalized medicine are rapidly expanding,
creating significant opportunities in both
the pharmaceutical and diagnostic industries.
Biomarkers are enabling the development of
new targeted therapeutics as well as rescuing
failed drugs and repositioning existing drugs
for new indications. Several products and/or
services have been launched, yet many more
are still in development. Opportunities and
challenges exist, including combination of
assays and tests with therapeutics along
with associated regulatory issues. The
reimbursement for tests versus therapeutics
represents a key issue that will certainly
have significant implications for licensing
professionals in this area. Also, several technology
platforms exist with different licensing
implications. This workshop will focus on key
licensing issues in this important field.
- Robert Morrison, Vice President and
Managing Partner, C. Berke & Associates
- Samantha Truex, Director, Business Development, Genzyme Corporation
- Meryle Melnicoff, Director, Business Development, The Wistar Institute
[back to top]
HIGH TECH TRACK
WORKSHOP 1-C: NAVIGATING THE PATENT
THICKET OF NANOTECHNOLOGY
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
This workshop will explore how nanotech
patents can be licensed without restricting
innovation. We will start by describing the
major differences that separate patents in
nanotechnology and other fields of inventions
over the past century, such as (1) basic
patents being patented at the outset; (2)
patents crossing industries; (3) the large
number of basic patents being issued to
universities; and (4) the ownership of basic
science and applications around the world.
We will move on to a discussion of case
studies from universities and companies
to explore licensing strategies for
nanotech patents.
- Linda Chao, Senior Associate, Stanford
University Office of Technology Licensing
- Dr. Paul Germeraad, President, Intellectual
Assets, Inc.
- Mark Lemley, Professor, Stanford Law School
- Bill Perry, Vice President Business
Development, Marketing & Sales, Nanomix, Inc.
WORKSHOP 2-C: LICENSING IN THE
TELECOMMUNICATIONS INDUSTRY:
THE EVOLVING LANDSCAPE
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
It has been over 20 years since the breakup of
AT&T. In this workshop, licensing executives
from the telecommunications industry will
discuss the changing role of intellectual
property in their industry. Gain insight from
the perspective of equipment vendors, software
and service providers as well as the operating
companies. Learn the ways in which their
approaches are similar and how they differ.
Expect a thoughtful discussion on the evolving
intellectual property trends in this market.
- Jim Finnegan, Vice President, ipIQ
- Joe Sommer, Lead Director, AT&T Intellectual
Property Management, AT&T
- Vernon Anthony, Executive Director,
Intellectual Capital Products,
TelcordiaTechnologies, Inc.
WORKSHOP 3-C: PATENT LANDSCAPES - A GUIDE
TO SETTING LICENSING STRATEGY
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Performing a patent landscape during the
planning stages of a licensing campaign is
an important exercise in assessing the risks
posed by the various companies that May be
approached as part of the licensing program.
Aside from the obvious identification of
the patents that the company May use in
retaliation, a thorough landscape will also
give insight into which companies might
be the best targets and, in some instances,
could help build a case for infringement. In
this workshop, the process of implementing
a proper patent landscape will be discussed.
Fundamentals such as selecting search
techniques and tools to maximize effectiveness;
assessing the relevance of the patents
identified by the search; and applying the
results to help set strategy are demonstrated
through a case study.
- Mike McLean, Vice President IPinsights,
Semiconductor Insights
- Theresa Howe, Director, Marketing,
Chipworks
WORKSHOP 4-C: UNDERSTANDING HOW THE
INTERNET EXPOSES YOU TO RISK
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
The Internet can be a useful business development
tool, but it can also be a minefield.
This panel will discuss the importance of
protecting your intellectual property on the
Web, protecting your brand identity from
cyber squatters, protecting your trademarks
from your own licensees and retailers, and
when disclosures in e-mails or on the Web
can give rise to statutory bars preventing
patentability. Related issues include how
your Internet presence can create nationwide
personal jurisdiction, create problems under
export control laws, and other areas of concern
when doing business on the Internet.
- Michael Albert, Shareholder, Wolf Greenfield & Sacks P.C.
- Ilan Barzilay, Associate, Wolf Greenfield & Sacks, P.C.
WORKSHOP 5-C: WHAT YOU NEED TO KNOW
WHEN YOUR ORGANIZATION
PARTICIPATES IN AN SSO -
BEST PRACTICES
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
Standard Setting Organizations (SSOs) have
different business models for standards and
IP. What effect do these varied models have
on the SSOs expectations for participation of
companies in the standard setting process?
This workshop will focus on what organizations
should do, or avoid doing, when participating
in an SSO. Among the topics that will be
discussed are: 1) how a company determines
which SSOs to participate in; 2) which personnel
should participate in the standard setting
process; 3) what the company’s role should
be during SSO meetings; 4) what the company’s
role should be outside of SSO meetings; and
5) the type of participation that SSOs want
and expect.
- Larry Goldstein, Vice President & General
Counsel, Sedna Services, LLC
- Mike Pellon, Vice President of Standards,
Motorola
- Dorothy Raymond, Senior Vice President and
General Counsel, Cable Television Laboratories
- Michele Herman, Attorney of Counsel,
Woodcock Washburn
- Ed Rashba, Manager of New Technical
Programs, IEEE
[back to top]
INDUSTRY, ACADEMIA, AND
GOVERNMENT LABORATORIES
TRACK I
WORKSHOP 1-D: MAXIMIZING THE VALUE OF
EARLY STAGE RESEARCH
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
This panel will address the issues, both
pro and con, associated with early stage
research partnerships. Specific issues relating
to combining core research competencies of
universities and federal laboratories will be
the primary focus of these presentations.
Additionally, a host of IP and partnership
strategies will be outlined to provide the
participants with information and resources
required to engage in these types of
partnerships. Panel members will discuss
the importance of evaluating research and
facility competencies in addition to technologies;
addressing IP development and protection
strategies early in partnership development;
and sustainability of long-term relationships
with partners.
- Joseph P. Allen, Vice President and General
Manager, Intellectual Property Management
Group, WVHTC Foundation
- Jill A. Tarzian Sorensen, J.D., Executive
Director, Technology Transfer,
Johns Hopkins University
- Amy Centanni, J.D., Director Technology
Transfer Program, Office of Research and
Development, Department of Veterans Affairs
- Paul Zielinski, Chief, Cross Program Staff,
Office of Research and Development, EPA
WORKSHOP 2-D: TECHNOLOGY TRANSFER
BUSINESS PLANNING: A NOVEL WAY
TO INCREASE SYNERGY BETWEEN
ACADEMIA AND INDUSTRY
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
A technology transfer office is the crossroads
between academia and industry, much like
the joint AUTM/LES meeting. The University of
Louisville Office of Technology Transfer (OTT)
has a strong research base, a blossoming
Technology Transfer Program, and a strong
history of spinning out companies even in its
short existence. Learn how the OTT engaged
in a strategic planning process to develop a
5-year business plan that identified specific
business strategies, which allow much more
effective interactions with industry and position
the OTT to move forward in a way that will
maximize engagement potential with
corporate partners.
- Jeff Cope, Senior Research Engineer, RTI
International
- Melea East, BB.A., J.D., Deputy Director,
Office of Technology Transfer,
University of Louisville
- James R Zanewicz, J.D., LL.M., Director,
Office of Technology Transfer,
University of Louisville
WORKSHOP 3-D: STRATEGISTS TO A SUCCESSFUL
CONNECTION
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Whether your goal is to become the licensor
or the licensee of a given technology, you will
need to invest time and effort to effectively
connect with your counterparts at the other
side of the table. In this interactive forum,
the moderators will encourage participants
to discuss from their own perspective (either
as a seller or as a buyer) marketing and/or
negotiation strategies that they have utilized
successfully, and those they would not
recommend, to reach this goal. The moderators
will prepare questions and conduct a preliminary
survey to gather suggestions and to
help stimulate discussion at the forum.
- Imma Barrera, Ph.D., Director, Business
Development, Xenogen Biosciences
- Susan Riley Keyes, Ph.D., Technology Transfer
Executive, Northeastern University
- Imran Nasrullah, M.S., J.D., Associate
Director, Business Development,
Genzyme Genetics
WORKSHOP 4-D: INDUSTRY NEEDS, UNIVERSITY
SOLUTIONS: MAKING THE CONNECTION
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
In his 2003 book Open Innovation: The New
Imperative for Creating and Profiting from
Technology, Harvard Business School
Assistant Professor Henry Chesbrough
discusses how the old model of “closed
innovation”— whereby companies develop
all of their technology within their own
internal R&D departments—is being
abandoned for “open innovation”—that is,
in-licensing technology from outside sources.
Research universities can be a significant
innovation resource for industry. However,
discrepancies often exist between what
universities have to offer and what industry
needs. Although sometimes these discrepancies
are tied to the time/R&D gap between the
bench and the marketplace, more often the
problem lies in industry and academia not
understanding the other’s position and goals.
This session will explore how universities
and industry can better work together to
transfer technology from the former to the
latter. Practical tools will be provided, and
cases studies from the presenters’ experience
will be discussed.
- Laura Schoppe, President, Fuentek, LLC
- Joseph Holmes, Chief Executive Officer,
Acuity Edge
WORKSHOP 5-D: THE NUTS AND BOLTS OF
FORMING AND MANAGING
CONSORTIUMS
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
Forming and running consortiums continue
to provide benefits and challenges. This
forum remains a viable conduit for government,
universities, industry and others that are
willing to combine their resources for the
purpose of a defined project(s) to work as a
team with the intent that the project will be
accomplished faster and more efficiently.
This collaborative mechanism can be more
cost effective and allow entities with varying
and/or complementary skills to work together
for a common goal while retaining their
individuality. This workshop will investigate
what works, what does not and provide some
thoughts on the lessons learned from those
who have been there.
- Shirley Vanier, Business Development Officer,
NFGC at H. Lee Moffitt Cancer Center and
Research Institute
- Carl A. Rust, Associate Director of Packaging
Research Center, Georgia Institute of
Technology
- Douglas E. Stoner, Esq., Special Counsel,
Hoffmann, Warnick & D'Alessandro LLC
[back to top]
INDUSTRY, ACADEMIA AND
GOVERNMENT LABORATORIES
TRACK II
WORKSHOP 1-E: NATURESEAL® AND THE HOOAH!
ENERGY BAR: CONSUMER PRODUCTS
FROM FEDERAL LABS
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
This workshop will highlight two consumer
products resulting from federal laboratory
research programs: 1) NatureSeal®, jointly
developed by the USDA, Agricultural
Research Service and Mantrose-Hauser
Company, and 2) the HOOAH! Energy Bar,
developed at the U.S. Army Research
Institute of Environmental Medicine. This
license deal was facilitated by TechLink,
a technology transfer organization funded
primarily by the Department of Defense
and NASA to link companies with federal
laboratories. These are just two examples
of successful public-private partnerships in
the consumer products market. The workshop
will describe the past, present and future of
these partnerships and discuss how companies
can participate in partnership opportunities
with federal labs.
Moderator:
June Blalock, Coordinator,
Technology Licensing Program, USDA,
ARS, OTT
Speakers:
- A.J. Martinich, Director of Sales, NatureSeal®
- David Nicholson, Technology Transfer
Coordinator, USDA, ARS
- Darin Oelkers, Technology Manager, TechLink
WORKSHOP 2-E: LOS ALAMOS AND P&G: THE
LAST 10 YEARS, A CASE STUDY IN
INDUSTRY/GOVERNMENT ALLIANCE
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
On the surface, Los Alamos National
Laboratory (LANL) and Procter & Gamble
(P&G) do not have much in common.
However, for the past ten years, LANL and
P&G have been working together to solve
technological challenges of interest to both
organizations, undertaking over a dozen
collaborative projects which have saved
P&G over $1 billion while accelerating the
development of critical global security science.
This session will describe how this unlikely
alliance came into being, highlight some of
the most important successes, and describe
how the interactions have grown to cover a
wide range of product areas with focus on
the lessons learned in management of the
alliance. The discussions will include the
benefits to each partner and mechanisms
for realizing those benefits.
- Erica Sullivan, Business Development
Executive, Los Alamos National Laboratory
- Kevin Jakubenas, Industrial Fellow to Procter & Gamble,
Los Alamos National Laboratory
- Charles Eberhard, Licensing Manager,
Procter & Gamble
WORKSHOP 3-E: RECONCILING TECHNOLOGY
MARKETING AND CONFIDENTIALITY
MANAGEMENT TO ELICIT INDUSTRY
INTEREST IN UNIVERSITIES
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Effective University-Industry technology
transfer is built upon the efficient use of
non-confidential technology marketing
packages. These packages set expectations
for both organizations and can impact future
intellectual property negotiations. The usefulness
of these packages is determined by
how well university technology managers
deliver the information that industry decision
makers need for initial opportunity assessment,
based on an analysis of the:
- type of opportunity assessment process used;
-
level of information required at each stage;
- degree of disclosure of potentially
sensitive information
An interdisciplinary panel of experts will discuss
this critical step toward a rewarding universitygovernment-
industry relationship.
- Isabella Gorrillot, Sc.D., Director, Technology
Transfer, Wright State University
- Pamela Cox, JD, Marshall,
Gerstein, and Borun LLP
- Dr. Nathan Golden, SANDIA National Lab
- Mr. Matthew Mull, Procter
& Gamble
- Eugene
Buff, Yet2Com
- James R. Zanewicz, J.D., LL.M., Director,
Office of Technology Transfer, University
of Louisville
WORKSHOP 4-E: PROTECTING INNOVATION BY
SAFEGUARDING INTELLECTUAL
PROPERTY
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
With the world's increasing dependence on
technology, today's marketplace is pressured
to find better ways to protect its technology
assets. Learn how you can develop the best
practices necessary to protect your intellectual
property (IP) - in the form of software source
code, plans, ideas or processes. This presentation
discusses ways to develop a strategy
to protect your technology investment
through escrow, and to build trust between
the buyers and sellers of technology by
carefully laying out the terms of the escrow
agreement. Two different cases will be
explored: the case of an educational institution
that has developed IP and the case of a
start-up that uses its IP for collateral.
- John Boruvka, Vice President, Iron Mountain
Intellectual Property Management
- Kelly Frey, Attorney, Baker Donelson
WORKSHOP 5-E: CHANGING ORGANIZATIONS -
PRIVATE AND UNIVERSITY ISSUES
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
A private firm attorney and two university
tech transfer managers, all of whom recently
changed jobs and organizations, will discuss
the issues relating to the practical and ethical
problems with the change. Both the due
diligence in finding a new position and
the problems extant with the change will
be discussed.
- Ronald Grudziecki, Parnter, Drinker Biddle & Reath
- Robert Pozner, Director of Technology
Development, Medical University of South
Carolina Foundation for Research and
Development
- Robert McGrath, Director of Technology
Transfer, Drexel University
[back to top]
INTERNATIONAL TRACK
WORKSHOP 1-F: STRATEGIC INTELLECTUAL
PROPERTY RESPONSES TO THE
GLOBALIZATION OF INNOVATION
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
This workshop will explore the challenges
facing innovator firms and universities that
wish to protect their inventions in today's
increasingly global competitive environment.
While the business world is becoming
borderless, the intellectual property laws
that protect technology innovations and the
cultural contexts in which those laws are
enforced remain firmly fenced in. The workshop
will explore the risks and opportunities
created by this incongruity and will provide
strategies for firms struggling to compete
in this new global context.
- William Barrett, Patent Attorney, Moore & Van Allen,
PLLC
- Dr. Christopher Price, Executive Director,
Piedmont Triad Research Park and Senior
Vice President, Wake Forest University
Health Sciences
- Catherine Innes, Director, Office of
Technology Development, University of
North Carolina
- John Cronin, Managing Director and Chairman, ipCapital Group, Inc.
WORKSHOP 2-F: CROSS-CULTURAL NEGOTIATIONSTHE
BARRIERS TO OVERCOME AND
THE EXPECTATION TO BE REALIZED
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
This workshop will focus on providing an
overview of the cultural and language barriers
that exist in multi-country negotiations, as
well as monitoring and controlling the parties
real and preceived behaviors and actions.
This is a highly interactive session focused
on the art and science of negotiation.
Extensive dialogue and active participation
are hallmarks of this dynamic presentation.
- Gary Nath, Managing Partner,
Nath and Associates
- Ilan Cohn, Patent Attorney,
Reinhold Cohn & Partners
WORKSHOP 3-F: EXPORT CONTROL
REQUIREMENTS AND IMPLICATIONS
FOR TECHNOLOGY TRANSFER
PARTNERSHIPS
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
This workshop will present information
regarding current export control requirements
and the implications of these requirements
for technology transfer partnerships. The
presentation will address frequently asked
questions about export control, such as:
when is an export license required, what is
the “deemed export” rule, how is this rule
applied to visiting scientists, and what
technologies are subject to Commerce
Department controls. Examples will be provided
explaining how U.S. federal laboratories
are working to meet these requirements,
both in their internal research programs and
in research collaborations with public and
private partners. Suggested procedures for
facilitating compliance will be discussed,
and participants will be encouraged to share
their experiences and to pose hypothetical
situations for discussion.
- June Blalock, Coordinator, Technology
Licensing Program, USDA, ARS, OTT
- Todd E. Willis, Senior Export Policy Analyst,
U.S. Department of Commerce
- Richard J. Brenner, Assistant Administrator
for Technology Transfer, USDA, ARS
WORKSHOP 4-F: INDUSTRIAL BIOTECHNOLOGY
AND THE CHEMICAL INDUSTRY
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
Biotechnology has had impact on both the
agricultural and therapeutic sectors. With
less fanfare, it is having impact on the
chemical industry. Currently about 5% of
the chemical industry ($1.8 trillion worldwide)
is based on biological processes. There are
many factors that will cause this percentage
to increase at a rapid rate. The result will be
a restructuring of the chemical industry as
we know it today.
- Larry Drumm, Managing Director,
Bio-Technology Group LLC
- Peter Kelly, Manager, Industry Member
Programs, American Chemical Society
WORKSHOP 5-F: INTERNATIONAL PATENT
PROTECTION: HOW TO STOP
HEMORRHAGING MONEY
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
Nearly ninety percent of all expenses for
international patent filing are unnecessary
and provide little, if any, useful protection.
This session will present a systematic
approach to designing a strategy for
international patent portfolio protection.
Drawing upon domestic and international
patent protection research, this workshop will
explore the growing complexity of international
laws and how to optimize patent protection.
Participants will also learn how to identify
knowledge gaps and develop a plan to obtain
the necessary legal and technical expertise.
- Michael Lasky, Managing Partner, Altera Group
[back to top]
SPECIAL WORKSHOP
NEGOTIATING THE FLOOR:
CONNECTING THROUGH
PUSH-PULL IN ACADEMIC
INDUSTRIAL PARTNERSHIPS
Thursday, May 11, 2006
5:00 p.m. - 6:30 p.m.
Ever been stepped on while dancing? Or at
the negotiation table? Then this is the workshop
for you. This interactive ballroom
dance workshop will explore the concept of
push-pull during partnership negotiations
through its parallelisms with partner
dancing. Like in business negotiations,
the key to leading and following on the
dance floor is not about a one-sided
endeavor of power vs. submission. Rather,
it is about exercising the appropriate level
of either resistance or rendition to ensure a
graceful and spectacular outcome, where
both parties are complemented and pleased.
Push-pull negotiation in academic-industry
partnerships will be explored through actual
audience dance instruction and participation.
No special equipment or sequins required.
- Fernando Sallés, Ph.D., Senior Director,
Global Strategy and Portfolio Management,
Organon International
- Erika Geimonen, Ph.D., Assistant Director
of Life Sciences, SUNY Stony Brook
- Julia Calonge, Ph.D., Licensing Associate,
Memorial Sloan-Kettering Cancer Center
[back to top]
LEGAL TRACK
WORKSHOP 1-G: CAN THE PATENT TROLL
REACH YOU ON THE OTHER
SIDE OF THE BRIDGE?
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
Over the past year, in several decisions,
the Court of Appeals for the Federal Circuit
(CAFC) has addressed the extraterritorial
reach of U.S. Patent Laws. More specifically,
the CAFC, in interpreting the provisions of
the statute, has arguably expanded the
reach of protection provided by U.S. Patents
to further cover activities outside of the
United States. Particular decisions in this
area include Eolas v. Microsoft, AT&T v.
Microsoft, and NTP v. Research in Motion.
Further judicial and legislative activity is
expected to continue in this area over the
next year. This session will include a discussion
of these developments, patenting strategies
in light of these developments, and strategies
for structuring business operations and
corporate entities to minimize potential
infringement exposure.
- Thomas Sullivan, Partner, Lowrie, Lando & Anastasi,
LLP
WORKSHOP 2-G: MANAGING THE GLADIATORS -
SURVIVING PATENT LITIGATION
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
Patent litigation is both an increasingly
necessary evil and one of the most stressful
events that a company or tech transfer
department can endure. This workshop will
comprise an experienced patent litigator, a
representative of a university tech transfer
office that has managed patent litigation
and a patent prosecutor/opinion expert who
has seen a patent through litigation. They
will discuss how to prepare for litigation
and present tips for surviving it.
- Warren Woessner, Shareholder, Schwegman,
Lundberg, Woessner & Kluth
- Ronald J. Schutz, Esq., Shareholder, Robins
Kaplan Miller & Ciresi
- Robert H. Sloss, Esq., Shareholder, Farella,
Braun + Martell
- Robert S. MacWright, Ph.D., J.D., Executive
Director, UVA Patent Foundation
WORKSHOP 3-G: DEALING WITH DIVORCE
IN INTELLECTUAL PROPERTY
COLLABORATIONS: THE TOP 10
CONTRACT PROVISIONS YOU
WILL WISH YOU HAD
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
The panel will discuss common mistakes in
collaboration agreements and identify some
key intellectual property provisions you will
wish you had, did not have, or had written
more clearly, when your collaboration ends in
divorce. The discussion will cover the topic
from a business, licensing, and litigation
perspective, identifying both tips and traps
for the unwary. The discussion will focus on
ownership provisions for intellectual property,
implications of sharing information, defining
responsibilities in obtaining appropriate IP
protection, protecting pre-collaboration rights,
and defining the rights and responsibilities
of the collaborators after the collaboration
concludes.
- Steven J. Henry, Shareholder, Wolf, Greenfield & Sacks,
P.C.
- Jim Foster, Shareholder, Wolf, Greenfield & Sacks,
P.C.
- Karen K. Rivard, Assistant Director and
Counsel, MIT Technology Licensing Office
WORKSHOP 4-G: THE CREATE ACT: CREATING OR
SOLVING PROBLEMS?
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
The Cooperative Research and Technology
Enhancement Act of 2004 (CREATE Act)
amends certain provisions of Patent Laws to
facilitate patenting of inventions that arise
out of projects undertaken collaboratively by
multiple institutions (such as universities)
pursuant to a “joint research agreement.”
We will discuss the amendments introduced
by the CREATE Act and their impact on
securing patent protection for such
collaboratively conceived inventions.
-
Thomas Engellenner, Partner, Nutter
McClennen & Fish LLP
- Nina Green, Director, Tufts University
- Dean Stell, Assistant Director, Technology
Asset Management, Wake Forest University
Health Sciences
WORKSHOP 5-G DR. JEKYLL AND MR. HYDE:
THE FACULTY MEMBER AS
COMPANY CONSULTANT
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
All universities allow their faculty members
to consult for industry, but most all of them
have policies that need to be followed. Learn
to avoid trouble and get the most out of your
consulting dollars by discussing commonly
found policy terms and compromises that
should work for all. Join a lively exchange
among representatives from different sized
companies, university tech transfer offices and
the counsel charged with making it all work.
- Kathleen Denis, Associate Vice President,
The Rockefeller University
- Myra McCormick, Patent Attorney, Johnson & Johnson
Corporation
- Thomas Tillett, Chief Executive Officer,
RHeoGene
[back to top]
VALUATION AND
TAXATION TRACK
WORKSHOP 1-H: TECHNOLOGY MARKETING:
CONNECT WITH POTENTIAL
LICENSEES THROUGH VALUE
PROPOSITIONS
Thursday, May 11, 2006
10:30 a.m. - 12:00 p.m.
Seekers of competitive advantage are bombarded
with the new, the improved, or novel
features of emerging technology. Yet much
technology goes unnoticed, passed over,
unsung. To get your technology noticed,
highlight the benefits of the technology,
thereby instilling the value of the technology
in the minds of potential licensees. This is
the value proposition; it is what remains in
licensees’ minds after they have read about
or discussed the technology. The experience
of knowing these value propositions is the
essence of branding. It is what propels the
demand for diligence, for term sheets, for
licenses, for new product development. You
must be able to articulate it in a succinct
way…think billboard, elevator pitch. This
workshop will be both instructional and
interactive as you learn to better connect
with your audience by transforming sets of
features and benefits into value propositions
for more effective marketing of your
technologies available for licensing.
- Catherine Vorwald, University of Maryland,
Baltimore
- Steven M. Ferguson, NIH, Office of
Technology Transfer
- Sandra Holtzman, Holtzman
Communications, LLC
WORKSHOP 2-H: DILIGENCE PROVISIONS IN
LICENSE AGREEMENTS: A MATTER
OF PERSPECTIVE
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
Diligence clauses can be some of most
contentious provisions to negotiate in license
agreements. Nevertheless, such clauses are
critically important, particularly in the case
of academic licenses, where early-stage
technology is typically the subject. Licensees
are expected to marshal appropriate levels
of research and development resources to
ensure that commercialization is diligently
pursued. That said, the rapidly changing
competitive environment demands that
companies make strategic decisions based
on finite resources. Diligence provisions
must therefore be structured to reflect the
reality of the commercial environment while
recognizing the licensor’s legitimate need to
ensure diligent efforts from the licensee. This
workshop will specifically explore diligence
provisions from the perspective of both the
licensee and the licensor. In doing so, it is
anticipated that the audience will have a
better appreciation of the sensitivities
involving these provisions and take away
useful strategies to negotiate mutually
beneficial diligence terms.
- Anthony delCampo, Vice President, Office
of Research and Technology Ventures,
Dana-Farber Cancer Institute
- Stacy Feld, Manager, Business Development,
Genentech, Inc.
WORKSHOP 3-H: ROYALTY MONETIZATION
Thursday, May 11, 2006
3:30 p.m. - 5:00 p.m.
Explore the risks and benefits, valuation and
deal structures, and case studies of a variety
of royalty monetization deals. Panelists from
research institutions, royalty buyers and
bankers will present and discuss with workshop
participants considerations in the sale and
purchase of royalty streams, valuation methods,
deal structures and case scenarios.
Moderator:
Louis P. Berneman, Ph.D.,
Principal, Texelerate
Speakers:
- Walter Flamenbaum, Partner, Paul
Capital Partners
- Joseph Fondacaro, Ph.D., Director,
Intellectual Property and Venture
Development, Cincinnati Children's
Research Foundation
- John J. Moore, Jr., Managing Director,
Co-Head, Global Healthcare Banking Group
- Meryle J. Melnicoff, Ph.D., Director, Business
Development, The Wistar Institute
WORKSHOP 4-H: PROVIDING EFFECTIVE
ROYALTY TESTIMONY
Friday, May 12, 2006
10:30 a.m. - 12:00 p.m.
Are you an experienced licensing professional
with an interest in serving as an expert witness
in patent litigation or a licensing dispute?
Or, is your organization currently involved in
or likely to become involved in such matters?
This interactive workshop will provide an
overview of the dispute resolution process
addressing such issues as the differences
between litigation and arbitration, the
discovery process, and the role of the expert
witness at deposition and trial. Using the
framework of a case study, workshop participants
will learn about the fundamentals of
determining "reasonable royalties" including
a discussion of the landmark Georgia-Pacific
Factors. The workshop will also use a mock
trial format to illustrate how effective expert
testimony can bolster your case. Participants
who have prior experience in providing expert
testimony, particularly on reasonable royalties,
will be encouraged to provide their own
insights and perspectives.
- Carla Mulhern, Managing Principal,
Analysis Group
- John Jarosz, Managing Principal,
Analysis Group, Inc.
- Lisa Pirozzolo, Wilmer, Cutler, Pickering,
Hale & Dorr
WORKSHOP 5-H: RATIONAL TECHNOLOGY
EVALUATION METHODS
Friday, May 12, 2006
1:30 p.m. - 3:00 p.m.
In this session, we describe an efficient and
cost effective process for the assessment of
commercialization potential of inventions.
The process is objective and utilizes industrystandard
patent mapping and citation
analysis techniques to provide rapid and
accurate predictors of commercialization
potential as well as IP protection and
competitive landscapes. The process provides
a means of accurately evaluating very earlythrough
late-stage technologies, and of
standardizing a decision-making process for
IP protection and commercialization. UIC
previously obtained similar services from
consultants at great cost. Developing this
process in-house has enabled us to quickly
and accurately assess the market potential
for technologies, then obtain a list of potential
licensees and identify where the subject
technology fits within licensee IP portfolios.
The results obtained using the process are
superior to the results provided by outside
consultants at a much lower cost, enabling
the UIC to cost-effectively manage an IP
portfolio of over 400 technologies with minimal
staff and satisfied inventors. In addition, the
information provided as a result is useful in
due diligence.
- Justyna Ciegotura, Business Analyst,
University of Illinois at Chicago
- Mary Dicig, Director, Office of Technology
Management, University of Illinois at Chicago
[back to top]
ADDITIONAL SESSIONS
2006 LICENSING FOUNDATION
SHALLOWAY GRADUATE STUDENT
LICENSING COMPETITION
Wednesday, May 10, 2006
2:00 p.m. - 5:00 p.m.
Sponsored by The Licensing Foundation, Inc.
The Licensing Foundation (LES) is once again
sponsoring a competition for graduate students
interested in intellectual property and licensing
issues. Three groups of finalists will be
selected to present their business plans at
the LES/AUTM Spring Meeting in Philadelphia.
This event is by invitation only.
http://www.lesfoundation.org/graduate_student/
2006 LICENSING FOUNDATION
SHALLOWAY GRADUATE STUDENT
LICENSING COMPETITION
AWARDS PRESENTATION
Thursday, May 11, 2006
12:00 p.m. - 1:30 p.m.
The Licensing Foundation, Inc. will recognize
the finalists and present the award to the
winning team in this year’s Shalloway
Graduate Student Licensing Competition.
WRITING A COMPELLING BUSINESS
PLAN: THE PERSPECTIVE OF THE
LICENSING COMPETITION FINALISTS
AND SEASONED PROFESSIONALS
Thursday, May 11, 2006
1:30 p.m. - 3:00 p.m.
Moderator:
Arthur S. Rose, Partner Knobbe, Martens, Olson & Bear, LLP
Speakers:
- Linda Chao, Senior Associate,
Stanford University
- Robert R. Gruetzmacher, Director, Technology
Commercialization DuPont Company, Center
for Collaborative Research & Education
- Gary R. Hooper, President, Hooper & Associates
- Ada C. Nielsen, Manager, Commercial
Development, BP America Inc.
- Licensing Competition Finalists
Finalists will share their experiences in
preparing and presenting business plans
for virtual or real start up companies that
involve significant IP and licensing issues.
Specific examples of successful business plans will be presented and techniques
used to catch the attention of investors and venture capitalists will be discussed.
The workshop is being put on in collaboration with the 2006 Edwin A. Shalloway
Graduate Student Licensing Competition, a program sponsored by LES (USA/Canada)’s
Licensing Foundation. The top three teams compete at the Spring Meeting and
these teams give us their perspective on preparation of a business plan that
involves substantial IP licensing and management components.
