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LES 2008 Spring Meeting & LES International Conference
Licensing Without Borders
May 4-7, 2008
Sheraton Chicago Hotel and Towers
Chicago, IL
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Workshop Sessions
MONDAY, MAY 5, 2008
WORKSHOP SESSION 1, 2:00 P.M. - 3:15 P.M. |
1-A Hot Topics in Diagnostic Licensing
BIOMEDICAL DEVICES
The Diagnostics industry is an integral and important part of the Health Care system across the globe. However, the Diagnostic industry suffers from an identity crisis in which it is both highly fragmented in the number of providers and technologies available, yet it mimics the Pharmaceutical industry in that most of the products and services within a technology offering are concentrated among a relatively small number of providers. This workshop will highlight one industry veteran’s perspective on the development and licensing of technologies that are encompassed by the term "Diagnostics," as well as delve into the subject of the likely evolution of the Diagnostics industry in the coming years.
Moderator:
Mark Bloom, Vice President, Projects & Consulting, Business Success Strategists, LLC (USA)
Speaker:
Andrew Schapals, Senior Licensing Manager, Abbott Laboratories (USA)
1-C Shift in Petrochemical Business Model and the New Prospect for New Licensing Opportunity
CHEMICALS, ENERGY AND MATERIALS
The global petrochemical business is experiencing significant changes which add up to significant opportunities. First, petrochemicals are in a growth business: the industry is providing valuable products that facilitate significant economic growth and improve living conditions everywhere. Demand for chemicals is growing much faster than the world GDP. That average growth rate of 5% per year is about triple expected growth rate for energy. This high growth reflects continued penetration of chemicals & plastics into both existing and new uses. Second, market demand in the developing Asia-pacific is driving most of the growth we will see over the next decades. This means North America will shift from a net exporter of chemicals to a net importer by 2015. Over the next 10 years, about 60% of the world's petrochemical growth will occur in Asia, and China may account for 25 percent of global demand. Third, critical to meeting future demand is innovation rooted in leading-edge technologies. The manufacturing processes are improving and becoming more efficient. Accordingly, the products developed in Asia are finding new applications and markets. Innovation continues to provide solutions to emerging needs in transportation, packaging, construction, and health care.
Moderator:
Mohammed Alansari, Administrator, Saudi Aramco (Saudi Arabia)
Speakers:
Tom Higgison, Technology Strategy Manager, Edinburgh Research and Innovation Limited (UK)
Rashid Khan, Intellectual Properties & Technology Management, Saudi Arabian Oil Company (Saudi Arabia)
V. Lakshmi Kumaran, Managing partner, LAKSHMIKUMARAN & SRIDHARAN (India)
1-D Choosing a Licensing Automation Vendor
CONSUMER PRODUCTS
Trying to keep track of licensing data such as sales, deal points, approvals and royalties-all across multiple channels, categories, territories and partners-can be overwhelming. To meet this challenge, many licensing companies are looking for automated tools to help streamline their licensing-related financial and contract management. Today, most licensors and agents are demanding that their licensees provide more detailed information, such as reporting sales by channel, market and territory. This requirement creates a larger burden for licensees, licensors and licensing agents alike, as each tries to monitor or comply with the many points incorporated into every licensing agreement. Automation not only brings benefits in terms of financial reporting, but also in terms of helping licensing executives make sound strategic and business decisions based on accurate information.
Rick A. Daffron, President, Color Technology, Inc. (USA)
Marty Malysz, President, Dependable Solutions, Inc. (USA)
Todd Melioris, Executive Vice President of Worldwide Field Operations, United ERP (USA)
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1-E Managing Intellectual Property in Global Business
HEALTH CARE
Big Pharma and Technology Acquisition
This workshop will present a case study regarding the consolidation of a global portfolio of intangible property ("IP"). It will focus on the following areas: 1) process of determining legal /tax ownership of IP within global development process; 2) business reasons for consolidating ownership centrally; and 3) international tax and transfer pricing implications given heightened audit scrutiny of tangible transfers and high value services. The presenters for this workshop will include: 1) a representative of the company describing the process by which IP ownership was determined and catalogued; 2) a tax professional (from within or outside of the company) speaking to the tax complications of restructuring global IP ownership, and 3) an economist speaking to the valuing of the IP, transfer pricing issues post restructuring, and potential tax audit challenges. This workshop will first cover relevant facts of the transactions and the business motivations behind such a restructuring. This will be followed by a discussion of the tax, transfer pricing, audit and implementation challenges, with time for an open discussion with attendees.
Robert Alltop, Vice President, The Ballentine Barbera Group, A CRA International Company, (USA)
Stephanie Rauls, Tax Counsel, GE Healthcare (USA)
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1-F Global Licensing Strategies for Japanese Pharmaceutical Companies
HEALTH CARE
International and Regional Issues
Japanese pharmaceutical companies have established a significant presence in the North American marketplace. Successful product launches, acquisitions and consolidation within the Japanese industry have established these pharmaceutical companies as important global players. A panel of distinguished licensing executives will discuss the current global licensing strategies of Japanese pharmaceutical companies.
Moderator:
S. George Simon, Managing Director, Q Life Sciences, Inc. (USA)
Speakers:
Gary A. Gabrielsen, Vice President, Business Development, Astellas US LLC (USA)
Catherine Sazdanoff, Senior Director, Business Development, Takeda Pharmaceuticals North America, Inc. (USA)
Alex Scott, Vice President, Business Development, Eisai (USA)
1-J Open Source Landscape from Patent Perspective: Conflicting or 'Win-Win'?
HIGH TECHNOLOGY
Despite its beginning as philosophical and political g-free-h software, Open Source has taken a dominant position in the real world, in IT, Telecom and Consumer Electronics industries. GPL v3, the most major Open Source license for Linux operation system, emerged in July 2007. This first version of GPL includes explicit provision of non-discriminatory patent license free of charge. As a result, due diligence on GPL compliance and enforcing patents are now an issue, as well as patent enforcement risk from third parties. Open Source and patent system have the same goal of promoting innovation. Nevertheless, the means for reaching the goal seem contrary each other. The panel will discuss the issues of Open Source implementation status in different jurisdictions, patent enforcement risk from third parties, and the measures and efforts to eliminate such enforcement risk. The panel will also discuss to what extent patents are enforceable as proprietary software and the accompanying policies on the due diligence on GPL compliance and best practice under GPL v3 circumstances.
Jason Albert, Director of International Intellectual Property Policy, Microsoft (USA)
Don Jarrell, President, Digital Thinking Inc.
Kei Konishi, Patent Attorney, Miyoshi & Miyoshi (JAPAN)
Scott Peterson, Senior Counsel, Hewlett-Packard Company (USA)
1-L Global Patent Licensing -- Mining to Enforcement
PATENT & LICENSING TECHNOLOGY
Global patent licensing strategies and tactics are essential to any business functioning in today's global economy. Whether finding new revenue streams, increased value derived from an existing portfolio, or litigation solutions, today's patent licensing professional needs new approaches and tools to manage the information effectively. This panel features experienced licensing and patent professionals doing business internationally -- from North America to Asia -- who will provide an interactive panel format including foundational material to catalyze intense Q&A to address the experienced licensing professional's current needs.
Neil Bagchi, Kennedy Covington (USA)
Noel Courage, Bereskin & Parr (Canada)
Mark Lavender, Chief Technology Officer, Neopatents (USA)
1-LL A Comparative Study of Well-Known Trade Mark Protection in the Pan Asian Region
INTERNATIONAL
Learn about how well-known trade marks are protected in the different Asian countries. With the Asian markets playing an increasingly important role in the world economy, experts from leading firms in Australia, China, Thailand, the Philippines and India will discuss on the prevailing law and practice in the various Asian jurisdictions, how protection can be acquired and what strategies should be adopted by brand owners.
Rani Boazz, Partner, Anand & Anand (India)
Patricia Bunye, Partner, Villaraza & Angangco Law Offices (Philippines)
Guizeng Liu, Trade Mark Attorney, CCPIT Patent and Trademark Law Office (China)
Areeya Ratanayu, Legal Consultant - Enforcement, Intellectual Property Department, Tilleke & Gibbins International Ltd. (Thailand)
Karen Sinclair, Principal, Watermark (Australia)
1-M 2008 Patent Damages Study + Litigation v. Real Life
LEGAL
This panel discussion will provide insights into patent damages, discussing issues in royalty analysis for litigation versus real life.
Ed Brosius, Amstead Industries, Ltd.
Aron Levko, Partner, PricewaterhouseCoopers LLP (USA)
Joseph Mahoney, Partner, Mayer Brown LLP
Vincent Torres, Manager, PricewaterhouseCoopers, LLP (USA)
1-O New Ways to Jump-Start Innovation, Patenting and University-Industry Collaboration: National Views
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
This session will evaluate ways to jump-start innovation, universityindustry collaboration and technology transfer on a national scale. It will discuss effective models for developing regions or countries to apply and will be instructive for multinational companies seeking insight on structuring collaborations in developing countries. Speakers will examine this topic through their experiences, which have been particularly positive in Chile where a confluence of government interests, public funding and the country's attractiveness as a Latin American business destination have created a vibrant laboratory of experimentation. Representatives from government, university and industry, in life and physical sciences, will discuss topics including: national innovation strategy; government funding for start-ups, patenting and international partnerships; business incubators; university-industry consortiums; collaborations with national and multinational companies (i.e. Microsoft, Intel); and patent competitions. Specific questions will include: 1. What primary approaches have been used to jump-start innovation in your institution? 2. What are the objectives, structure and results of this approach? 3. What are its strengths and weaknesses? 4. What opportunities exist for other companies or institutions, and especially international ones, to collaborate with your institution? 5. What are common barriers to such collaboration, and your advice to overcome them?
Catherine Jelinek, CEO/General Manager, CREATECH S.A. (Chile)
Iván Mimica, General Manager, CTI Salud S.A. (Chile)
Harold Paredes-Frigolett, Next-Generation Internet Services Division, SEPARI - Universidad Tecnica Federico Santa Maria (Chile)
MONDAY, MAY 5, 2008
WORKSHOP SESSION 2, 3:45 P.M. - 5:00 P.M. |
2-C Novelty of Chemical Compositions - Interpretation of Sale as Public Prior Use
CHEMICALS, ENERGY AND MATERIALS
Speakers from several jurisdictions, including Europe, Australia, Asia, U.S. and Japan, will present the current practice, problems and suggestions for overcoming the problems or improving the system. Topics will include 1) whether or not sale of any chemical compositions including alloys, emulsions which are totally unknown, should be interpreted as a public use which can destroy the novelty of the same invention filed after the sale in different jurisdictions; 2) distinction between patent protection and trade secrets protection; and 3) possible impact on the conditions in licensing agreement involving patent or know-how relating to such composition. A panel discussion will follow, addressing A) whether or not any distinction between cases of chemical composition which is totally unknown and mechanical cases is present in determining the interpretation of sale above; B) whether or not it is practical or feasible in general to chemically analyze the composition which is totally unknown such as Coca Cola; C) understanding on difficulties of chemical analysis of such compositions; D) whether or not any requirements are made for "sale" to be a public use. The session will wrap up with Q and A from the audience.
Moderator:
Sumiko Kobayashi, Partner & Patent Attorney, Abe, Ikubo & Katayama (Japan)
Speakers:
Richard D. Kelly, Senior Partner and Attorney at Law, Oblon, Spivak, McClelland, Maier & Neustadt, P.C. (USA)
Andreas Winkler, Patent Attorney, Boehmert & Boehmert (Germany)
John Walker, Managing Director, Intellectual Property Management Pty Ltd. (Australia)
2-D Virtual Worlds - Licensing and Branding in Second Life ®
CONSUMER PRODUCTS
Virtual worlds - such as Second Life® - are becoming increasingly popular with companies setting up virtual stores and even countries setting up virtual embassies. This session will explore the licensing implications for brand owners using and licensing their products in the virtual world. We shall also look at means for trademark and copyright enforcement strategies.
Edmund Ferdinand, III, Partner, Grimes & Battersby, LLP (USA)
Jed Ferdinand, Partner, Grimes & Battersby, LLP (USA)
Christian Fortmann, Patent Attorney, LIMA (Germany)
Robert Harrison, Partner, 24IP Law Group (Germany)
2-E Evolution of the Pharma-Biotech Universe - Black Holes and Rising Stars
HEALTH CARE
Big Pharma and Technology Acquisition
The face of the pharma and biotech world is fast changing. Amid the rising costs of R&D, blockbuster and merger "mania", and patent expirations, companies continue their quest for better product ideas, reaching newer disease areas, and customer segments within new geographic locations. Reduced funding for academic research and a shift in the interest of venture capital firms towards funding later-stage products have further affected the pace of drug discovery and development. Despite this scenario, the industry seems to be thriving, thanks to some novel business strategies. Recent examples include partnerships between Roche and Plexxikon, Wyeth and Ablynx, which have strengthened the pipeline of big pharma. Furthermore, the strategic alliance between Novartis and Intercell AG, and Biocon's divestment of its enzyme business to Novozymes, show that the reach of businesses continues to be global. Outsourcing has become a new, viable avenue for established and virtual companies alike. Visionaries from top-notch companies will discuss various business strategies and what the future may hold for the pharma-biotech sector. No matter your area of focus in the health care industry, this discussion on deal trends and business models will revitalize your own licensing and business development strategies.
Raghav Chari, Vice President of Corporate Development - New Chemical Entities, Dr. Reddy's Laboratories Ltd. (USA)
Mohan S. Iyer, Managing Director, Burrill & Company (USA)
Vasu Pestonjamasp, Managing Director, Bio-I.P. Management Co. (USA)
Jeff Southerton, Executive Director & Head, Therapeutic Area Strategic Alliances Organization, Pfizer Global R&D (USA)
Barbara Yanni, Vice President and Chief Licensing Officer, Merck (USA)
2-F Healthcare Licensing in Latin America: Trends, Tools and Experiences
HEALTH CARE
International and Regional Issues
This workshop will be an overview of the Mexican environment for licensing in the health sector. This includes regulatory issues, IP enforcement and generic competition.
Hector Chagoya, Technology Analysis & Transfer, Manager, Becerril, Coca & Becerril, S. C. (Mexico)
Manisha A. Desai, Regional Patent Counsel, Eli Lilly & Company (USA)
Sergio Ulloa, Assistant General Manager, Schering-Plough (Mexico)
2-G A Good Deal More than a Great Deal: Exploring Deal Ethics
HEALTH CARE
Various legal obligations exist in the sourcing and execution of business deals in health care. Extending beyond these legal obligations, every licensing professional carries a sense of commitment to an ideal of fairness in the transaction. These commitments are not always well articulated, operationalized and shared within organizations, much less across the table. This session will discuss why deal ethics are not only important but also economically desirable and how we can best clarify and perpetuate them.
William R. Mattson Jr. , Chairman, The Mattson Jack Group
David Messner, Vice President, Business Development, Bausch & Lomb Inc. (USA)
Alex Scott, Vice President, Business Development, Eisai Inc
2-H The Latest on European Parallel Imports in the Pharmaceutical Sector
HEALTH CARE
The last 18 months have seen numerous developments affecting parallel trade in pharmaceutical products within the EU. The ingenuity of parallel traders and manufacturers alike has been tested before courts up to the European Court of Justice in the fields of both intellectual property and anti-trust law. The need to gain better control of their downstream supply chains has caused several manufacturers to adopt completely novel distribution arrangements. This workshop will introduce attendees to this significant feature of the European intellectual property landscape and outline the recent developments.
Nigel Jones, Intellectual Property, Linklaters LLP (UK)
George Pickering, Senior Associate, Reed Smith (UK)
Jean-Christophe Troussel, Partner, Bird & Bird (Belgium)
2-I Legal Issues Affecting Deals in the Life Sciences
HEALTH CARE
Have you ever felt alone wading through the ever complex legal framework of laws and regulations affecting deals in the life sciences? In this workshop, a panel of leading experts from around the world will share their experiences, which may sound very similar to your own, and provide suggested solutions on how to address issues typically encountered in life science deals.
Allan Bowie, Partner, AJ Park Law (New Zealand)
Pamela Cox, Partner, Marshall, Gerstein & Borun LLP (USA)
Xiaoguang Cui, Partner/Attorney, Beijing Sanyou Intellectual Property Agency Ltd. (China)
Stephen S. Yoder, Senior Counsel, Head of Licensing and Intellectual Property, MorphoSys AG (Germany)
2-L Avoiding Intellectual Property Hurdles in the U.S. - The View from China
INTERNATIONAL
As China's influence in the world economy continues to grow, the importance of IP to Chinese companies is simultaneously increasing. Correspondingly, there has been a growth of IP litigation involving Chinese companies, both within China and the U.S. Among other topics, this panel will examine the results of a recent survey of Chinese businessmen and attorneys regarding their perceptions of U.S. and Chinese IP protections and environment. The roundtable will be led by Richard Bero, an IP valuation damages expert in the U.S. Mr. Bero has made multiple presentations in China on various IP valuation topics, and has met and discussed IP issues with numerous individuals from Chinese law firms, government officials and hi-tech companies. Panelists include a high level IP Chinese government official, an IP manager from an IP intensive Chinese electronics company, Chinese IP attorneys with extensive experience in the Chinese legal system and a U.S. IP attorney with Chinese clients.
Moderator:
Richard Bero, Managing Director, CFA-LLC (USA)
J. Donald Best, Partner, Michael Best & Friedrich (USA)
Chun Lee, President, Shenzhen Lawyers Association (China)
Harold C. Wegner, Partner, Foley & Lardner LLP (USA)
Jilin Xue, Intellectual Property Director, ZTE (China)
Jinqian Zhang, Managing Partner, Grandall Legal Group (China)
2-M The Patent Playbook-How Corporate Counsel and Business Executives Can Work Together to Drive Profits
PATENT & LICENSING TECHNOLOGY
In today's worldwide marketplace, managing your company's global patent assets is more important and complicated than ever. Companies can use their patent portfolio to help reach a variety of potentially divergent local, national and regional business goals. So how do you decide which global patent strategy to pursue? Too often, companies make patent-related decisions in a disjointed way. A classic example is patent hording-such as amassing patents of little or unknown value. The result is an unbalanced, inefficient and costly patent portfolio. The Patent Playbook is a comprehensive portfolio model designed to optimize profits through strategic acquisition, enforcement and licensing of patents and other intellectual assets. In this session, you will learn how to systematically review your global patent portfolio and determine which aspects of the Patent Playbook are best for you. Specifically, you will learn how to manage risk by diversifying your patent portfolio; increase profits by properly valuing patents and distributing resources; optimize your global patent enforcement strategies; and leverage your patents and reduce investment risks through cross-licensing arrangements.
Moderator:
Jeremy Lowe, Partner, Axinn, Veltrop & Harkrider LLP
Panelists:
William Barrett, Vice President Intellectual Property, Advanced Liquid Logic, Inc. (USA)
Michael Gollin, Member, Venable LLP, and author of Driving Innovation
Mark Ramberg, Director of IP Strategy, Microsoft
Kate Shore, Consulting Manager, ipCapital Group, Inc.
TUESDAY, MAY 6, 2008
WORKSHOP SESSION 3, 2:00 P.M. - 3:15 P.M. |
3-C Licensing Policy on Green Technologies in Automotive Industries
Chemicals, Energy and Materials and LESI Automotive Committee
Global warming and CO2 reduction are growing concerns in the world. Automotive manufacturers and components manufacturers, as well as many other companies having catalytic technologies, have interests in the environment-friendly and energy-efficient technologies, including advanced catalytic technologies, to cope with such global concerns. In this respect, licensing policies for such green technologies in automotive industries will be presented and discussed.
Walter Copan, Executive Vice President, Clean Diesel Technologies, Inc. (USA)
Masahiro Ezaki, Senior General Manager, Toyota Motor Corporation (Japan)
Bertram Huber, Senior Vice President, Robert Bosch GmbH (Germany)
3-D Current State of Affairs: Intellectual Property Protection in Asia
CONSUMER PRODUCTS
Asian nations form an important manufacturing region of every day consumer products. In addition, developing or newly developed countries/regions such as the People's Republic of China, Hong Kong, Singapore and South East Asia are working hard to turn themselves into significant owners of technology-related intellectual property. Yet, there have been continuous reports of violations of intellectual property rights. What is the current situation in these countries and regions? Dr. Jacqueline Lui is a U.S. patent agent based in Hong Kong with experience in patent prosecution in China. Her presentation will include insights into the patent protection situation in China, statistics on patent procurement, and enforcement by foreign companies in China. Mr. Martin Schweiger is a Singapore and German patent attorney based in Singapore. His presentation will include insights into the patent protection situation in South East Asian countries such as Malaysia, Indonesia and the Philippines. In particular, Martin will present the drive of Singapore to become a strategic IP hub for IP holding companies. Ms. Susan Fentress is a member of the East Asian Committee of AIPLA and will be the moderator of this session.
Susan Fentress, Baker, Donelson, Bearman, Caldwell & Berkowitz (USA)
Jacqueline Liu, Managing Director, Eagle IP Ltd (China)
Martin Schweiger, Schweiger & Partners LLP (Munich & Singapore)
3-E Issues in Life Sciences Licensing in the Middle East and Africa
HEALTH CARE
International and Regional Issues
The Licensing of Technology and IP in the Middle East and Africa presents companies and organizations with a myriad of different issues and obstacles that are unique to the region. Securing financing for early stage deals, the lack of capacity for handling technology-based ventures, the lack of demand-driven research infrastructure and of expertise in technology transfer and how to properly do it are just some of these issues. Such issues are especially pronounced in the Life Sciences field, where emotive issues, such as GMOs, IPR schemes, access to affordable drugs and technology and benefit sharing pose political, financial, institutional, social, and cultural challenges unique to the region. How to successfully deal with these and other issues will be addressed for first time in LES roundtables by experts from, and with experience in, the region. This session will help you and your organization better understand the issues and how to successfully address them to increase the chances of successfully licensing technology and IP within the region. Panelists will present real-life case studies of how to approach such deals so that you may avoid the common pitfalls when licensing and doing business in the region.
Abdallah Alnajjar, President, Arab Science & Technology Foundation (United Arab Emirates)
Alaya Bettaieb, Secretary General, Arab Venture Capital Association (Tunisia)
Michael Ryan, Director, Creative and Innovative Economy Center, The George Washington University Law School (USA)
3-F Unique and Trendy Aspects of Biotechnology Licenses and Trade Secret Protection Strategies
HEALTH CARE
As biotechnology has many unique requirements not found in other fields, biotechnology licenses and transactional agreements require unique provisions. For example, many aspects of biotechnology require government approval, which can be difficult to predict or obtain, before commercialization is permitted in a given country. Also, although some fields of biotechnology are touted and sought after in some countries, they may be banned elsewhere as immoral or against public policy. Biotechnology is one field where, without access to materials from the patentee, optimizing a patented technology simply may not be possible. Accordingly, these issues must be addressed in biotechnology agreements via provisions not relevant to other fields. Additionally, as intellectual property law becomes more sophisticated regarding biotechnology, licensing and counseling practicioners must keep up or fear extinction. Trends in biotechnology licenses and other transactions will be addressed in this presentation, including provisions such as grant-back provisions, collaboration agreements (including the necessary intellectual property procurement, ownership, and enforcement issues inherent in such agreements), detrimental conduct provisions and data access provisions. This program will also address the applicable laws available for protection, including Utility Patents, Method Patents, Plant Variety Protection Act, Plant Patents, trade secret, contract and other state laws.
Christine Lebrón-Dykeman , McKee, Voorhees & Sease (USA)
Steven P. Smith, Attorney, McKee, Voorhees & Sease (USA)
3-G Licensing and Business Development and Intellectual Property: Critical Partnership for Performance Improvement
HEALTH CARE
3-G has been moved to a MiniPlenary
3-H Deal Killers in Health Care and Biotech Licensing
HEALTH CARE
This workshop will explore the "deal killers" in health care/biotech legal and business matters that frequently arise during licensing negotiations. Real-life experiences coupled with identifying unrealistic expectations will be explored. The presentation will cover the principal provisions of the "Make or Break" contract terms and conditions, the parties' tactics and behavior, communications skills and key factors leading to a successful arrangement.
Ross Epstein, Partner, The Nath Law Group (USA)
Gary Nath, Managing Partner, The Nath Law Group (USA) |
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3-J Digital Content in a Borderless World - Intersections of Law & Technology in Developing Markets
HIGH TECHNOLOGY
This workshop will focus on the challenges of digital content licensing for parties who are in the business of content management and distribution, and/or new digital technologies. In particular, the workshop will consider the sometimes contradictory challenges for digital content owners and licensors to both open new geographic and technical revenue streams for their product, while protecting such product from piracy. To keep this workshop focused, two key developing regions - the Indian sub-continent (India, Pakistan, Bangladesh, Sri Lanka) and Greater China (the People's Republic of China, Taiwan and Hong Kong) - will be considered.
Sandra Aistars, Assistant General Counsel, Intellectual Property, Time Warner, Inc. (USA)
Francis Chang, Associate Counsel, Blake, Cassels & Graydon LLP (Canada)
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3-K Freedom to Operate 2008
HIGH TECHNOLOGY
This will be the second annual "Freedom to Operate" workshop for computer hardware and consumer electronics licensing professionals, as part of the High Technology Sector committee activities. It is the annual update to the following fundamental question: What issues and practices should I be aware of to assure freedom to make, use, or sell electronics industry products or to facilitate effective licenses intended to grant freedom to operate within these markets?
Scott Bechtel, President, AmiCOUR International (USA)
Robert Hart, Chief Intellectual Property Counsel, Harman International Industries, Inc. (USA)
Ray Throckmorton, Executive Vice President, AmiCOUR International (USA)
3-M What is Patent Quality? How Do Newer Industries Gauge Patent & Technology Strength?
LEGAL
The question, "What is Patent Quality?" is one that has long been answered, not by the presenters here, but by the marketplace itself. Corollary questions are, "What is the technology strength of a company?" and, "What the relationship of patent quality to the market perception of the value of the company?" There are several current measures of the answers to these questions. One is by the actions of patent holders in their decisions to maintain patents of quality and abandon patents of lesser value. Ownership of quality patents has been rewarded by both public and private markets with a scale and precision that simply has not been well understood. Not surprisingly, upon further study, the attributes which drive an owner's assessment of patent quality are well correlated to those which affect investor returns. The purpose of this presentation is first to shed light on the activities of the market to forestall attempts by lawmakers to solve problems that simply do not exist - or certainly do not exist as perceived. Ocean Tomo will share its perspective as an investor in patents as an asset class - an intellectual property merchant banc. They will put forth their argument that patent quality has not diminished, demonstrate the statistical analysis supporting this conclusion and discuss briefly the public stock returns and venture capital success rates that confirm these statistics to be reliable. The Patent Board will discuss its approach to patent quality that has a different basis. Their measure of technology strength is now being featured every Tuesday in the Wall Street Journal.
Christopher Ainsley, Chief Executive Officer, The Patent Board (USA)
Jonathan A. Barney, Chief Executive Officer, Ocean Tomo (USA)
Michael Lasinski, Managing Director, Ocean Tomo (USA)
3-S LESSONS LEARNED FROM ROYALTY MONETIZATION AND STRUCTURED REVENUE INTEREST FINANCING: Deal Structures, Valuation, Prosecuting IP, and License Drafting
In the brave new world of a knowledge economy, the value of intellectual property has risen dramatically and financiers have developed a variety of new methods to capture and extract value from patents. Royalty monetization is one method that is gaining in popularity due to the high valuations, flexible deal structures, available capital, and experts to help with best practices to guide interested sellers. Organizations and inventors with royalty interests are increasingly monetizing existing and projected royalty streams to provide immediate cash and to diversify risk.
With a similar gain in popularity among both private and public small to mid-size healthcare companies, structured revenue interest financing has become an attractive alternative or compliment to equity and/or debt financing. Revenue interest financing can be useful for acquiring late-stage products and companies, funding clinical trials, extending a product's life cycle by way of new indications and formulations, and building a sales force or other company infrastructure.
Based on real world experience, workshop presenters will engage participants in an interactive discussion about lessons learned -- deal structures that work, valuation methodologies, and patent and license considerations.
Moderator:
Louis P. Berneman, Principal, Texelerate
Speakers:
Stephen Johnson, Partner, Kirkland & Ellis LLP
Ken Macleod, Principal, Paul Capital Partners
Steven M. Rauscher, President and Chief Executive Officer, Oscient Pharmaceuticals (Invited)
6-P Priming the Pump to Self-Sustaining Copyright Projects
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
Moved from Wednesday at 3:15 p.m.
Technology licensing offices often struggle with how to best serve the humanities and other groups with copyrighted intellectual property that comes from across a diverse campus. And, as federal/state funding sources become scarcer and budgets tighten, the need increases for revenue generation for such department/project sustainability. Who do these groups go to for assistance? Does the group give up a work that they and the university are known for due to lack of funding? Is the licensing office set up to help such groups think outside the box for new and creative ways of gaining self-sustainability and royalty generation? Is the licensing office making the most out of these opportunities to serve? This talk will focus on how the copyright group at the Office of Technology Management at the University of Illinois at Urbana-Champaign works at assisting various groups in non-traditional ways that help generate funds for sustainability of a project, potential for royalty flow while achieving a higher level of institutional branding.
Gabrielle Campbell, Assistant Vice President, Association of Medical Colleges (USA)
John T. McEntire, Copyright, Software and Trademark Officer and Senior Technology Manager, University of Illinois, Office of Technology Management (USA)
TUESDAY, MAY 6, 2008
WORKSHOP SESSION 4, 3:45 P.M. - 5:00 P.M. |
4-A The Effect of KSR on Issues of Enablement and Possession of the Invention
BIOMEDICAL DEVICES
The Supreme Court, in KSR v. Teleflex, modified the treatment of patentability questions, and in so doing, reinterpreted the nature and abilities of "the person of ordinary skill in the art". While the KSR case directly changed the obviousness analysis, the "person of ordinary skill in the art" standard is also applied in formal determinations of enablement, and questions of whether the inventor "possessed" the claimed invention at the time of filing. These issues arise frequently in biotechnology cases, where a patent application can precede commercialization by many years, and the application may evolve during prosecution to track commercial potential of the technology. The law remains unsettled, and therefore KSR and the uncertainty it brings have impacted R&D decisions and patenting opinions of counsel, representations and warranties in agreements, pending applications, and issued patents, for both substantive issues of obviousness, and formal issues. This session will review the evolving treatment of enablement and possession of the invention issues in the aftermath of KSR by the U.S. Patent Office, District Courts and Federal Circuit Court of Appeals, and provide strategic guidance directed to the issues of portfolio management and licensing.
Steven M. Hoffberg, Partner, Milde & Hoffberg LLP (USA)
4-E Evaluating Drug Licensing Opportunities in a Competitive Environment
HEALTH CARE
Biotech and Technology Marketing
Hear the processes that work for choosing the right opportunities and beating your competition to them. The competition for promising even early stage compounds is fierce. Buyers must be able to quickly evaluate opportunities without shortcutting the critical due diligence that must be done on all aspects of a compound. Licensing groups must efficiently evaluate hundreds of opportunities per year, gathering opinions and seeking formal approval at various levels. The presenters will share experiences for efficiently and effectively reviewing opportunities in conjunction with executives and approval committees, and in partnership with colleagues outside the licensing group. We will focus on answering questions such as these: · How much process is too much? · What metrics can we use to measure whether we are moving quickly enough and where? · How can we monitor opportunities of interest when there are so many and when we must be ready to watch for key development milestones? · How can we best work with our colleagues in R&D and other groups? · Where should we use e-mail vs. team room vs. traditional meetings in reviewing opportunities? · How can we coordinate information as we follow the process?
Angela Blylancik, Executive Director, Business Development and Alliance Management, Novartis
Allen Downs, Senior Executive Director, Business Development, Purdue Pharma
Melissa Fitzgerald, Associate Director, Business Development, Amylin Pharmaceuticals, Inc. (USA)
Mark Gordon, Director, Product Strategy, Business Solutions, Pharmaceutical and Chemical Markets, Thomson Scientific (USA)
Gwen Melincoff, Senior Vice President, Business Development, Shire Pharmaceuticals
Jeff Southerton, Executive Director - Worldwide Business Development, Pfizer Corporation
Jack Tupman, Senior Director, Corporate Business Development, Eli Lilly and Company
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4-F Recent High Profile Partnering Deals
HEALTH CARE
Big Pharma and Technology Acquisition
This workshop will describe several recent partnering deals. The exact deals to be discussed will be selected shortly before the meeting and the speakers will be people associated with the deals being discussed. Details will be posted on the LES Web site as they become available.
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 4-G Successful Pharma Licensing Strategies for the Post-Blockbuster World
HEALTH CARE
The global pharmaceutical industry is in the midst of a transformation that is redefining the competitive ground rules, and companies need to adjust their business development strategies to succeed in the new environment. The growing power of payers, increased regulatory scrutiny, aggressive tactics of generic players and greater dependence on external research have challenged existing pharma business models. At the same time, licensing and acquisition markets have become intensely competitive, leading to aggressive valuations and increased risk. Pharma business development programs need to raise their games across many fronts. For example, they need to: strengthen their knowledge and capabilities in targeted high-value therapeutic areas, in alignment with their company's strategic direction; improve their ability to evaluate and manage risk with both early-stage and 'picked over' late-stage deals; increase their attention to the 'voice of the payer' and payer-defined value; and differentiate themselves to potential alliance partners as the true 'partner of choice'. This workshop will discuss these challenges and identify some ways that leading companies can retool their programs to sustain success in this environment.
Jack Nightingale, Consultant, Numerof & Associates, Inc. (USA)
4-J Content Licensing for Converging Devices
HIGH TECHNOLOGY
Distribution of music and content through phone/laptop/handheld from content producers is expanding. There are new entrants into the field from distribution networks and hardware manufacturers. There are also specific business models for different content formats depending on the hardware and delivery mode. With the right content and the right delivery model, the impact could be quite large. This panel will focus on the converging technologies and their impact on licensing and product development. With media and devices merging, how can industry cope? What should industry be thinking about? What are the regulations and barriers around this? What are the opportunities? How does geography play a role?
Gloria Archuleta, Vice President, Intellectual Asset Management, Fluid Innovation, Inc. , (USA)
Tyler Lenane, Corporate Counsel, RealNetworks, Inc. (USA)
Joy Murray, Director of Intellectual Property Licensing, Corporate IP Licensing Group, Microsoft (USA)
Dave Williams, Chief Technology Officer, Comcast Wireless
4-K Intellectual Property Due Diligence
HIGH TECHNOLOGY
As liquidity for patent assets grows, there are a host of challenges for both the buyer and the seller. This session will cover many issues in negotiating and closing Patent Asset dispositions (sales and exclusive licenses). There are many common pitfalls that the unwary can fall into and seriously damage licensing value and hence the seller's ability to monetize the assets acquired. This session will discuss those issues and provide case studies of recently complete transactions to highlight these issues.
Kurt Becker, Vice President of Legal Affairs, Intellectual Ventures (USA)
Donald Merino, General Manager Acquisitions, Intellectual Ventiure (USA)
4-M U.S. , European, and Australian Patent Law Reform
LEGAL
This workshop is designed to update attendees on the major changes in European, U.S. , and Australian patent law, practice and litigation as a result of the recently enacted legislation.
Thorsten Bausch, Partner, Patent Attorney, Hoffmann·Eitle (Germany)
Peter Klusmann, Hoffmann·Eitle (Germany)
Russell E. Levine, Partner, Kirkland & Ellis LLP (USA)
Rob McInnes, Principal, Spruson & Ferguson (Australia)
4-N Use of Alternative Dispute Resolution to Resolve Intellectual Property and Licensing Disputes
LEGAL
Alternative dispute resolution (ADR) is especially well suited for the resolution of intellectual property and licensing disputes. Arbitration, for example, is a better alternative than litigation in most cases because it provides privacy, promptness, cost effectiveness and attention to the problem by a person or panel that is steeped in relevant knowledge and expertise. By incorporating arbitration clauses into international transactions, companies can also avoid the delay, cost and uncertainty of litigation in foreign courts. In addition, enforcement of international arbitration awards are typically easier to acheive than foreign court judgments. This workshop will include a discussion of how to draft an effective ADR clause (i.e. in licensing agreements) as well as best practices when arbitrating an IP dispute.
Douglas Eveleigh, Chief IP Counsel, Solo Cup Company (USA)
Robert Matlin, Vice President, American Arbitration Association, (USA)
Donald Rupert, Partner, Marshall, Gerstein & Borun LLP (USA)
4-O Bridging the Gap between Industries and Universities in Developing Economies: Success Stories
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
This session will present the success story of a 3 year plan started in the year 2004, somewhere in a developing technology-transfer-industry country. More thanThis session will present the success story of a ongoing plan started in 2004, to develop the technology-transfer industry in an entire country. More than 30 international professional experts in IP and licensing participated in the IP TOUR across Chile over the past three years. The speakers have transformed their experience into a replicable method to be applied in countries where the licensing and technology transfer industry is embryonic or not as well develop as in the U.S. The IP TOUR began in 2004 with a grant from the Chilean government to initiate the first steps of development. In 2005, the first in a series of three events occurred, visiting 22 universities lecturing about IP and technology transfer policies in a roundtable format with the decision makers (Presidents, Deans, Directors, etc. ) in each university. In 2006, the second event took place though this time focused at industry, visiting 35 mid-to-large size companies, explaining the culture and benefits of the I-U relation. In 2007 the IP Tour was focused upon a series of opportunity matching events directed towards aligning the technology needs of industry with the expertise of national centers of research. This year a week long course will take place uniting both sides in an educational series aimed at instilling international best fit policies to the successful collaboration between industry and university. To conclude the session, focus will be widened to a much larger scale to depict the entire Open Innovation model of partnering with Latin American universities.
John A. Fraser, Director, Office of Intellectual Property Development & Commercialization, Florida State University, Office of Research (USA)
Robert R. Gruetzmacher, Director, Technology Commercialization, DuPont Company, Center for Collaborative Research & Education (USA)
Allan Jarry, General Manager Partner, Estudio Harnecker (Chile)
Nathan Young, Vice Precident, Global Operations, NEOS (Chile)
WEDNESDAY, MAY 7, 2008
WORKSHOP SESSION 5, 2:00 P.M. - 3:15 P.M. |
5-A Biomedical Device Claim Drafting Practice: An International Comparison
BIOMEDICAL DEVICES
This workshop will address claim drafting practice and issues unique to or commonly seen in biomedical device claim drafting. Such issues will be examined from an international perspective and comparisons will be made to the laws and practice of major countries.
Moderator:
Roger C. Hahn, Partner, Hahn & Voight PLLC, Washington DC. (USA)
Speakers:
Brian Casler, Supervisory Patent Examiner, US Patent & Trademark Office
Robert Harrison, Partner, 24IP Law Group
Yoshinori Shimizu, VP/Patent Attorney, Soei Patent & Law Firm
5-E Bridging the Gap - Negotiating across Cultures
HEALTH CARE
Biotech and Technology Marketing
The session highlights how cultural differences impact licensing negotiations and provides hands-on tools on how to avoid pitfalls and achieve the best outcomes. It is loaded with war stories from veteran negotiators representing different cultural backgrounds. It is a timely session in the global licensing environment. Materials covered will include cultural differences (focus on US, Europe, Japan, Asia) and how they impact negotiating styles related to: collaborative vs. competitive approaches; building and managing relationships and trust; meaning of the written agreement; the role of time; importance of face saving; negotiation tactics and tricks; and pitfalls and how to avoid them. In addition to organizational cultural differences between pharma, biotech and university, how to discover and utilize your own cultural negotiation strengths will also be addressed.
Stefan Koehler, Licensing Associate, Epicentre Biotechnologies (USA)
Kening Li, Ph.D. J.D., Pinsent Masons (China)
Cyrus K. Mirsaidi, Executive Director, Genomics Business Development, Althea Technologies, Inc. (USA)
5-J Assessing Patent Quality: New Perspectives in Patent Prosecution
HIGH TECHNOLOGY
With recent decisions of the U.S. Supreme Court and Court of Appeals for the Federal Circuit, looming possibilities of patent reform, continued increases in litigation expense and unexpected results in trial court decisions, many companies are moving toward a more value-focused approach in patent prosecution. The value propositions of patent programs are coming under heightened scrutiny. Licensing campaigns have become increasingly risky, and managers are under increased pressure to determine whether or not prosecution costs should be incurred far in advance of any measurable return from such costs. This panel will review the compelling drivers for assessing the strategic worth of a patent program and discuss measures for improving the odds for patent issuance, predictable enforceability and successful licensing.
Russell Boltwood, Vice President, Licensing & Intellectual Property, UTStarcom, Inc. (USA)
Mark C. Bach, Former Chief Patent Counsel, Snap-on Inc. , Counsel for Rosenbaum et al. (USA)
Bradley Hulbert, Partner, McDonnell Boehnen Hulbert & Berghoff LLP (USA)
5-K Harmonized European Contract Law
HIGH TECHNOLOGY
The European Commission is preparing a new statutory "tool" in the form of a common civil (contractual) code to be opted in by the parties as the basis of their contracts. It is prepared by a group of professors from various European universities and controlled by a network of experts from all interested groups within the EU (industry, judges, governments, lawyers, consumers etc. ) The tool shall be accepted from all legislations within the European member states so that it will be possible to contract on its basis with partners in any of the member states with the same contractual provisions. The draft of the tool was presented by the EU Commission at the end of 2007 and by 2009 the Commission wants to implement such statutory tool in a way that it will be usable in practice.
Dr. Thomas Wirth, Partner, Attorney, Wirth-Rechtsanwaelte, (Germany)
5-L Preparing for a Multi-National Litigation - The Global Dispute!
INTERNATIONAL
You say 'tomato' we say 'tomahto'. When considering a global legal dispute for your patents, the rules of engagement can change drastically from territory to territory. Claims and evidence requirements do differ and what is considered strong in one geography may be inadequate in another. This session looks at preparing for international disputes and what steps need to be taken to ensure a well prepared litigation on a global scale.
Terry Ludlow, Chief Executive Officer & Founder, Chipworks (Canada)
Jeffrey Miller, Partner, Intellectual Property, Orrick (USA)
Stephen Schott, Counsel, Townsend and Townsend
5-O Successful Approaches in Business Incubation and Science Parks
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
Speakers will compare respective experiences in a roundtable discussion setting.
Chair & Moderator:
Rinaldo Plebani, Patent Attorney, Studio Torta, (Italy)
Speakers:
Fabrizio Conicella, Business Development Manager, BioIndustry Park (Italy)
Tetsushi Inada, President, Pharma-East Insight, Inc. (Japan)
Alan Paau, Vice Provost for Technology Transfer & Economic Development, Cornell University (USA)
Giovanni Tata, Director Intellectual Property Services, Brigham Young University (USA)
5-P Managing Intellectual Property Rights - After the Deal
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
Universities and public sector research agencies can generate significant revenues through exploitation of their IP rights. Broadly, such exploitation is through rights to use (licensing) or rights transfer (start up, spin off company). Either way, the commercial deal requires specific arrangements about how the IP comprising the deal is managed after the deal. If such arrangements are not clearly identified, and more particularly, assiduously managed, the entire basis of the commercial deal can be put at risk. The session will commence with an overview of the types of transactions and the principles underlying the orderly transfer of IP rights and responsibilities. A speaker from a U.S. university will then address the specific issues involved in the licensing arrangements, particularly where the licence is exclusive and the licensor has certain ongoing obligations with respect to the IP. A speaker from an Australian public sector research agency will then discuss the specific issues where ownership of rights is transferred and the obligations of both assignor and assignee. Both speakers will identify areas where particular attention is required. This workshop will provide a clear framework around which participants will be invited to share their own experiences.
Louis P. Berneman, Principal, Texelerate
John Walker, Managing Director, Intellectual Property Management Pty Ltd (Australia)
5-Q IQ. EQ. Now Power-up your IP-Q! Practical Tips to Further Your Licensing Career
WOMEN IN LICENSING
Learn from this high-powered panel as they share practical strategies for success in IP law and licensing, including:
- Making persuasive presentations in IP cases - applicable lessons from the courtroom and how to apply them to licensing deals
- Tips for effective leadership in technology matters
- Developing strong client relationships
The Honorable Cathy Ann Bencivengo, United States Magistrate Judge, U.S. District Court, Southern District of California (USA)
M. Elizabeth Day, Partner, Patent, Copyright and Trademark Litigation, DLA Piper (USA)
Pamela K. Fulmer, Partner, Patent, Copyright and Trademark Litigation, DLA Piper (USA)
Jennifer Hall, Senior Counsel, Intellectual Property, Wm Wrigley Jr. Company (USA)
Wendy Lim, Senior Attorney, Intel Corporation (USA)
Ada Nielsen, Manager, Commercial Development, BP America, Inc. (USA)
WEDNESDAY, MAY 7, 2008
WORKSHOP SESSION 6, 3:45 P.M. - 5:00 P.M. |
6-B Biomedical Device Regulation: An International Comparison
BIOMEDICAL DEVICES
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Regulation of the biomedical device industry is complex and ever-changing with many key players. This workshop with explore current hot topics in the U.S. FDA regulatory process for the testing and marketing of biomedical technologies and will highlight trends that will need to be recognized and addressed by developers of such technologies. A overview of the European regulatory framework will also be provided.
Mark Bloom, Vice President, Projects & Consulting, Business Success Strategists, LLC
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6-E Biosimilars and Follow-on Biologics: Where Do We Stand and Where Are We Going?
HEALTH CARE
Biotech and Technology Marketing
Whether they are called biosimilars, biogenerics or follow-on biologics, one thing is clear - they are soon to become a reality. Legislation providing for the expedited regulatory approval of biosimilars is coming, perhaps as soon as 2008, and it will no doubt have a dramatic impact on the biopharma industry. This workshop will provide an update on the pending biosimilar legislation, and discuss how such legislation is likely to be implemented by the FDA. Also, the likely impact on the biopharmaceutical industry will be assessed, using the experience of the European, Middle Eastern, and African areas as a benchmark.
Vince Capulano, Director, Sterne, Kessler, Goldstein & Fox
Tim Shea, Director, Sterne, Kessler, Goldstein & Fox (USA)
6-J Setting up the "Perfect High Technology Intellectual Property Team" for Long Term Global Success
HIGH TECHNOLOGY
The glass wall that exists between the prosecution and licensing groups could very well limit your success in longer term patenting strategies and reduce your return on investment. Getting these two groups to talk and collaborate is difficult at best and impossible for most organizations, since corporate structures typically give them different objectives (number of patents granted vs. revenue) and often have different reporting structures. This panel will look at setting up the "Ideal IP Group," where both teams work collaboratively for the single end goal of a strong, value generating portfolio. Specific topics covered will be: 1) bridging the gap between the licensing and prosecution groups; 2) reviewing and discussing a mock organizational chart; 3) who you need on your team globally; 4) what, when and why outsource? and 5) how the business strategy drives the IP strategy for ultimate success.
Chuck Donohoe, Chief Intellectual Property Officer, Pachira IP (USA)
Frank Kahlmann, Intellectual Property Manager, Automotive Industrial Multimarket Business Group, Infineon Technologies (Germany)
Hironori Seki, Deputy General Manager, Intellectual Property Division, Renesas Technology Corporation (Japan)
Michael Thumm, Vice President, Patent Intelligence, Chipworks (Canada)
6-L Developments in Biofuels and Renewable Energy
INTERNATIONAL
Research and development of biofuels and production processes for biofuels have become increasingly important issues for developed countries which need fuels that are cleaner, cheaper, and renewable. They have also become increasingly important opportunities for countries that have agricultural capabilities and an interest in adopting a sustainable energy policy that is less dependent on traditional fuels. Brazil has been a leader in this area and has significant experience in renewable and alternative energy such as bioethanol. The speakers will address the technology development and business models relating to biofuels including the international aspects.
Catherine Jelinek, Founder and Chief Executive Officer, CREATECH SA (Chile)
Lucas Ribeiro, Promon Engineering (Brazil)
Sergio C. Trindade, SE2T International, Ltd. (USA)
6-M From Invention to Innovation: How to Incubate Tomorrow's High Technology
INTERNATIONAL
This workshop will focus on a best practice of technology transfer in Europe.
Moderator:
Dr. Günter Isenbruck, Patent Attorney, Partner, Isenbruck Boesl Hoerschler Wichmann Huhn (Germany)
Panelists:
Peter Haring Bolívar, Institute of Highest-Frequency and Quantum Electronics, University of Siegen
Julian Nolan, Director, Iprova; (former Vice President for Licensing, Honeywell Europe)
Guido von Scheffer, Director, IPB - IP Bewertungs AG (Germany)
6-O Peaceful Coexistence - How Faculty Startup Founders Can Continue University Research in the Licensed Field
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
Balancing the competing interests of a faculty-founded university Startup with the continued research of the faculty-inventor-founder in the same field as the Start-up company is a challenge. The competition begins when a faculty researcher desires corporate sponsorship to supplement U.S. Government funded research. The negotiation of a Sponsored Research Agreement (SRA) with a Big Company in the faculty's lab when the Background Intellectual Property (BIP) was exclusively licensed to a university Start-up Company AND the university pre-committed certain exclusive license rights to future IP to the Start-up (albeit time limited) is difficult. Regardless of how the development of such IP was funded, the issue for the Big Company is that it could not use the BIP licensed to the Start-up Company for commercial exploitation of research that the Big Company had already paid for under the SRA, without taking a license from the Startup Company, AND the Big Company could be funding the development of future IP, under the SRA, for the benefit of the Start-up Company.
Mark Kaczor, Senior Technology Manager, University of Illinois-Office of Technology Management (USA)
John T. McEntire, Copyright, Software and Trademark Officer and Senior Technology Manager, University of Illinois, Office of Technology Management (USA)
6-P Priming the Pump to Self-Sustaining Copyright Projects
INDUSTRY-UNIVERSITY-GOVERNMENT INTERFACE
Moved to Tuesday at 2:00 p.m.
CLP & You
You are Certify-ABLE! The Certified Licensing Professional program launched by LES USA-Canada is the right program at the right time for individuals pursuing a career in licensing. The workshop will offer background on the development of the CLP as well as reasons why this program is of benefit to those who become certified. We will discuss in detail the qualifications required and the details you will need to take to become a CLP. Come to the workshop and discover how you, too, can become a Certified Licensing Professional.
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