Masters Class: Principles and Practices of Intellectual Asset Management
March 26-29, 2012
Mintz Levin, LLP
San Diego, CA
This intensive 3 ½-day course provides a strong foundation in licensing, enabling course attendees to use the language of IP and licensing, apply licensing principles and practices, and develop an intellectual asset management process within their organizations. Taught by world-class licensing experts, this curriculum-based program combines lecture and small group formats to address four major topics: The Basics of IP and Licensing; A Business Framework for Licensing; The Deal; and Living with the Deal. Specific take-aways for course attendees include being able to: identify basic legal and ethical issues; assess needs, opportunities, and risks; and establish strategies for technology transfer, including finding and qualifying prospects, and negotiating and closing deals.
Brad DeSandro, CLP™, Patent Attorney, DeSandro Law Group PLLC
Karen B. Dow, Partner, Sughrue, Mion, LLC
Jeff Leedom, Partner, PricewaterhouseCoopers
Malcolm McGowan, Partner, Womble Carlyle, LLP
Rand P. Mulford
Dwight C. Olson, CLP™, Director IP Licensing, EXEN Technologies; Principal, Deposix Software Escrow; Sr. IP Advisor, AmiCOUR IP Group; Principal, Intellectual Assets, Sr. Software IP Advisor, IP Metrics; Founder, V3Data
Mark Peterson, Chief Executive Officer, Robinwood Consulting
John Somich, Intellectual Strategy Manager, BP America Inc.
(Includes course materials, breakfasts, lunches & networking reception):
Interested in supporting the Master's Course? Sponsor opportunities are available for the Monday evening networking reception. Please contact LES San Diego Chapter Education Chair, Vasu Pestonjamasp, email@example.com, for more information.
After 25 years in law, mostly with larger law firms, Brad DeSandro recently started a solo practice to focus on intellectual property (IP) strategy for his clients. Brad’s practice involves IP procurement, preparing freedom to operate opinions for companies bringing products and services into US markets, and negotiating IP license agreements. Mr. DeSandro's practice also includes patent disputes, including pre-litigation investigations, analyses and negotiations. He has filed hundreds of U.S. and foreign patent applications in a variety of technologies. Mr. DeSandro, a former U.S. Patent Examiner, has technical experience with business methods, software, semiconductor and mechanical technologies, including work as a software developer before being admitted to the Patent Bar. As a Certified Licensing Professional, and co-chair of the Arizona Chapter of the Licensing Executives Society (LES), he is a perennial faculty lecturer in the LES Professional Development Series. He is also a member of the American Intellectual Property Law Association in which he has held various leadership positions.
Karen B. Dow
Karen Dow is a partner in the San Diego office of Sughrue Mion, PLLC where she focuses on patent prosecution and client counseling. Ms. Dow has more than 20 years of patent experience in biotechnology and pharmaceutical issues including work as patent counsel for Eli Lilly and Company and Triton Biosciences.
Ms. Dow's practice includes all phases of patent prosecution, including, preparing and prosecuting original patent applications and reissue applications for both domestic and foreign companies. She possesses extensive experience in intellectual property transactions, patent interferences and due diligence investigations. Ms. Dow practices in the chemical and biotechnological arts, particularly in the areas of immunology, molecular biology, stem cells, bioinformatics, bioarray technology, microbiology, pharmaceuticals, diagnostics and organic chemistry.
Mr. Leedom is a Partner at PricewaterhouseCoopers that leads the Licensing Management and Contract Compliance practice in Southern California. He is experienced in a range of dispute analysis and corporate recovery engagements as well as general business consulting. His dispute analysis engagements include intellectual property, business interruption, wrongful termination, and breaches of construction contracts. His consulting support covers analysis of opposition’s damage and liability claims, development of damage models, financial cash flow modeling, and business valuation. Mr. Leedom’s main focus of expertise is in the area of licensing management and contract compliance.
Mr. Leedom has worked with many different companies in various fields such as technology, telecommunications, biotech, entertainment and media, aerospace, software, etc. to provide consulting in the area of licensing/contract compliance and revenue recovery. He has assisted companies all over the world including many locations across the U.S, France, Italy, China, Hong Kong, Taiwan, Japan, Korea, and both the east and west coast of Canada.
He has spoken to international audiences in the area of licensing management and contract compliance in locations all over the world. Mr. Leedom is published in area of licensing, and intellectual property protection and enforcement.
Malcolm is a member of the Biotechnology/Chemical/Pharmaceutical Patent team within Womble Carlyle's Intellectual Property Practice Group. Based in the firm's Washington, D.C., office, Malcolm focuses his practice on IP matters related to the life sciences industry. He has represented clients at the U.S. Patent and Trademark Office in patent prosecution, reexamination, and interference matters in a wide variety of technological disciplines, including biotechnology, pharmaceuticals, computerized healthcare management, software, electronics, and designs.
Malcolm's clients benefit from his substantial experience drafting intellectual property licenses, confidential disclosure agreements, and material transfer agreements. He has represented clients in arbitration and mediation proceedings, and assisted European counsel in opposition proceedings before the European Patent Office.
Malcolm's experience also includes litigating patent cases before U.S. District Courts in New York, California, and Illinois. He has written briefs and argued appeals of patent cases at the U.S. Court of Appeals for the Federal Circuit. Malcolm also dedicates a portion of his practice to pro bono representation of veterans at the U.S. Court of Appeals for Veterans' Claims.
Rand P. Mulford
Rand Mulford has a depth of experience in early stage, technically-based companies primarily in the medical field. His particular expertise lies in assisting organizations in four related areas: developing overall strategy; generating business plans to achieve the strategy; leading a team in executing the plans; and conducting corporate financing and development programs.
Most recently, Mr. Mulford has led a variety of consulting projects including:
- Negotiation of investment and out-license to a large pharmaceutical company on behalf of a biotech company in ophthalmic applications
- Formulation of strategy for a medical device company focused on Incisionless Surgery for use in obtaining additional equity financing
- Developing strategy and a complex financial model for a early-stage company developing therapeutic antibodies
- Managing acquisition of a financial services company by a Fortune 500 corporation
- Strategy development for a not-for-profit company developing a potential cure for AIDS
Previously, Mr. Mulford had joined with two other partners to found a company that combined development of anti-viral technology with management of two operating companies in specialty pharmaceuticals and pharmaceutical packaging. Before that, Rand was E.V.P for Strategy with Chatham Capital and Forest Health Services, a for-profit chain of hospitals that specialized in Bariatric Surgery.
For two years, Rand worked with a small investment banking firm that specializes in funding early stage companies and technology-based spinouts using private placements. He worked directly with four portfolio companies. Mr. Mulford was asked to identify critical issues and develop business strategy, serve on three of the Boards of Directors, assume a direct managerial role in two of the companies, and negotiate the successful sale of one of the companies.
His corporate experience includes: Group V.P. of planning and control for a petrochemical company; head of corporate planning at Merck; C.F.O. of a human tissue company; C.O.O. of a drug discovery company and president of its subsidiary, a research chemical company; C.O.O. of a diagnostics company; co-founder and Chairman of the Board of a medical device company; and head of the corporate development at a bio-pharmaceutical company.
Rand obtained a bachelors degree in engineering with honors from Princeton University in 1965. For the next five years he served as a naval officer in the nuclear submarine program. Subsequently, he earned an M.B.A. with high distinction at Harvard Business School.
Rand started his business career with the consulting firm of McKinsey & Co. in the Chicago office. During an eight-year period, he served about twenty clients working on a variety of issues primarily related to strategy and organization.
Rand has served as a director on numerous boards of companies in medical equipment, drug discovery, for-profit hospitals, and diagnostics.
Dwight C. Olson
Dwight C. Olson, is a Certified Licensing Professional, Director IP Licensing at EXEN Technologies, a Principal at Deposix Software Escrow, a Sr. IP Advisor to AmiCOUR IP Group, a Principal at Intellectual Assets, a Sr. Software IP Advisor to IP Metrics, and Founder of V3Data. Dwight was founder of Data Securities International (DSI) acquired by Iron Mountain Inc. the world's largest record management company in 1997. Mr. Olson has over 40 years of experience in the computer software industry. He began his career in the research and development of supercomputers, parallel processing systems and related application architectures in the 60's and 70's.
Mr. Olson is called the "father of technology escrow" and writes and speaks on the topics of technology escrow as a business tool, valuation of software, trusted third parties in licensing, IP, and about securities firms using only electronic records. He has been involved in the start-up of several software companies as well as serves on the board of several companies.
Mr. Olson is past President of the Certified Licensing Professionals, Inc, a former President of the Licensing Executives Society (LES) USA and Canada, and he serves as co-chairs of the Licensing Executives Society International (LESI) endowment committee and IP valuation committee. As an international delegate to LESI he serves as a voting member of the Intellectual Property Constituency (IPC) of ICANN. He was an associate member of the American Bar Association's Electronic Commerce Law and Information Security Committee working on the ABA's Digital Signature Guidelines.
Mr. Olson received a bachelor's degree in mathematics in 1965 and teaching credentials in 1966 from Augsburg College in Minneapolis, Minnesota.
Les Nouvelles "Role of 3rd Party in Electronic Commerce" - December 1997
Les Nouvelles "Part 1 Software and Valuation in the Information Society" June 2008
Iron Mountain "Leveraging Software Assets via the Capital Markets", July 2008
Les Nouvelles "Leveraging Software" September 2008
Les Nouvelles "Part 2 Software Valuation TSV" December 2008
Les Nouvelles "Part 3 Software Valuation TSV(OV), June 2009
Les Nouvelles "Part 4 Software Valuation TSV(MV), September 2009
Les Nouvelles Book Review "The Software License Unveiled", December 2009
Les Nouvelles "Part 5 Software Valuation TSV(ICS)", March 2010
Les Nouvelles "Open Source Software Valuation", June 2010
Les Nouvelles "Managing Software Intellectual Assets in Cloud Computing" Oct 2011
Les Nouvelles "Software IA in the Cloud, Part 2, Records and Databases" Dec 2011
Mark Peterson is the Chief Executive Officer and founder of Robinwood Consulting. He has extensive experience in the valuation of intellectual property and has assisted clients in valuing technology for licensing purposes; including negotiating licenses and packaging technology for sale, as well as in litigation matters.
In the area of litigation, Mr. Peterson has provided consulting assistance to clients in the evaluation of economic damages resulting from the infringement of intellectual property rights. These evaluations have included lost profits, reasonable royalties, and claims for unjust enrichment. His analyses have included determinations of fixed and variable costs, incremental profit determinations, cost savings, analyses of market demand, capacity, price erosion, convoyed sales, as well as the economic effects of acceptable non-infringing alternatives, among others. These analyses have culminated in both deposition and trial testimony. He has assisted clients in the licensing of technology both in settlement of litigation as well as the avoidance of litigation. This assistance has taken the form of determining the economic impact of potential license terms to provide for appropriate sharing of risk between the parties to the agreement.
Mr. Peterson's experience includes a wide range of industries, including biotechnology, chemical, computer software, defense, electronics, and heavy equipment manufacturing, among others. Prior to forming Robinwood Consulting, Mark was a Vice President in an international consulting firm where he focused in consulting on intellectual property and commercial damage issues.
Mr. Peterson has a Bachelor of Business Administration degree in accounting and economics from Ohio University. He is a Certified Licensing Professional, a Certified Public Accountant in Illinois, and a member of the American Institute of Certified Public Accountants, the Illinois CPA Society, and was a Trustee from 1995-2001 of the Licensing Executives Society. During 1999, Mark served as the Central Region Vice President and during 2000-2001 as Treasurer of the Licensing Executives Society. From 1998-2001 Mark was also a member of the Executive Committee of the Licensing Executives Society. From 2001 through 2006, he held numerous offices including Secretary, Treasurer and Vice President of the Board of Governors of The Mid-America Club in Chicago. For many years he also served as a member of the Advisory Board of the Ohio University Edison Biotechnology Institute.
John D. Somich is the Intellectual Strategy Manager for BP Exploration & Production - Research & Technology. Mr. Somich is responsible for establishing and executing IP strategies for BP's key oil and gas technologies including BP's fieldofthefuture™ digital oil fields program. Mr. Somich's activities span many areas of technology development and commercialization including third-party collaborations, strategy development, technology portfolio management, value extraction, licensing, technology transfer, coaching, and training.
Previous to this, Mr. Somich was the Asia Sourcing Program Manager for BP Refining & Marketing, responsible for launching BP's first global procurement office in Shanghai.
Mr. Somich has extensive experience in licensing negotiations and technology transfer having led multiple projects in W. Europe, E. Europe, and Asia. He has spent over 20 years in international project management, technology licensing, strategy development, PSCM management, engineering and manufacturing operations.
Mr. Somich holds a Bachelor of Science in Mechanical Engineering from the University of Texas at Austin and is a graduate of the Executive Education Program, McCombs School of Business, University of Texas.