Workshops
Late Breaking Workshop 1: To Deal or Not To Deal, That Is the Option -The Rising Popularity of Options and the Art and Science of Using Options in Life Sciences
Late Breaking Workshop 2: Is China Still Open for Business? Indigenous Innovation and Other Policies: A Discussion
Late Breaking Workshop 3: Win without Fighting: How Improving Patent Quality can help Companies Reduce the Cost of Patent Infringement Litigation, including the Litigation Increase by Non-Practicing Entities
Late Breaking 4: Is There Any Difference Between A Licensing and Litigation Strategy?
Late Breaking Workshop 5: Monetizing Royalty Streams in Life Sciences-Licensing Agreements
Monday, September 27, 2010
2:00 p.m. - 3:15 p.m.
1-A (CEEM & CP) Capitalizing on the Growing Desire for Externally-Developed Technology by Chemical, Materials and CP Companies: How Universities and Small to Medium-Sized Companies Can Successfully Market Their Technologies to Non-Traditional Customers
Advanced
The number of organizations seeking marketable innovations from outside of their own R&D infrastructures is increasing today. This trend will grow as more companies realize that the only way to obtain growth is through accelerated product introductions. Today's leaner organizations will increasingly go outside to seek innovations through adoption of "Open Innovation" models and/or by developing competencies in external business development and corporate technology transfer. The "good news" for those who seek licensing revenue streams is that there will be many more buyers of technologies developed at universities and small to medium-sized companies; the "bad news" is that they will likely seek later stage, or more "applied," innovations. Those seeking to sell technology to corporations must be able to get the attention of corporate buyers, many of whom will be less technical and more business-focused. This panel will address these issues.
Ben du Pont, Chief Executive Officer, Yet2.com
Jackie Hutter, Chief IP Strategist, The Hutter Group LLC
Jason Lye, Director, External Business Development - Technology Assets, Newell Rubbermaid
1-B (CP & HTS) The Automotive Industry - Leaders or Laggards in the Development and Execution of an IP Strategy?
Advanced
At the inception of the auto industry, innovation prevailed in technology, business practices and collaboration, setting standards for the industrial world for years to come. Today, the auto industry, for many reasons, has been brought to its knees...or so it seems. This incredibly complex, highly regulated and capital-intensive industry, continues to innovate and remains fiercely competitive, yet highly collaborative. To thrive, an underlying, robust IP strategy must support overall business objectives. While this strategy varies for each company, its importance cannot be over-stated. From a defensive posture of patenting to proactive asset value extraction, combined they form the basis of long term value creation, a primary indicator of future profitability. We'll share examples of how our IP strategy has developed, linking "opportunities" to "deal pipeline", and how GM has come through these challenges with a "healthy attitude" and an unwavering commitment to innovation.
Frederick Cartwright, Director, New Business Development, General Motors
Clay Phillips, Director, Strategic Initiatives, General Motors
1-C (HTS & LGL) China: The Next Hotbed for IP Enforcement
Intermediate
China is emerging as the next hotbed of intellectual property rights enforcement. With a growing number of companies looking to defend or grow market share either in China or in other markets, the changing IP landscape is ripe for deal making. This session will address game changing strategies that corporations are undertaking with respect to leveraging Chinese IP. Senior licensing executives from large multi-national corporations as well as outside counsel representatives will share their insights with respect to: - adapting their IP strategies based on evolving Chinese patent law and LGL infrastructure -leveraging domestic Chinese strategies into multi-national cross licenses
Kasim Alfalahi, Chief Intellectual Property Officer, Ericsson
Terry Ludlow, CEO, Chipworks
Richard Thurston, Vice President and General Counsel, TSMC
Chris Bailey, Executive and Deputy China Country Manager, Rouse - China
1-D (IUGI) Enhancing Deal Flow between Non-profit Health Agencies, Tech Transfer Offices, and Biotech/Pharma to Translate Promising Academic Discoveries into Breakthrough Therapies
Intermediate
At a recent workshop organized by The Leukemia & Lymphoma Society (LLS) in January 2010, the fragmentation and lack of standardization for procedures for working together to craft deals was highlighted by non-profits, tech transfer offices, and biotech/pharma offices. Specific examples of effective partnering deals and mechanisms to enhance communication between these three sectors will be highlighted by the workshop organizers to introduce this session. Workshop leaders will also highlight key barriers that need to be addressed. Workshop members will discuss cultural/communication barriers and will work together to develop solutions to enhance successful deal outcomes across these three sectors.
Anthony del Campo, Vice President, Research and Technology Ventures, Dana-Farber Cancer Institute
Linda Egger, Senior Director - Franchise Licensing Integrator, Merck & Co., Inc.
Allison Formal, Vice President, Research Business Development, Leukemia & Lymphoma Society
Steven Tregay, Founder, President and Chief Executive Officer, Forma Therapeutics, Inc.
1-E (LOSM & IUGI) Setting-up the Deal - Best Practices in Marketing
Intermediate
Round table discussions will be led by discussion leaders (speakers) to identify, compile and rank methods attendees use when marketing technologies for license. The round tables will be broken up into sectors - industry, academia & government labs and service providers. The discussion leaders will guide the discussions along basic questions for attendees - all related to the first steps involved in setting up a deal. For example, What is currently being done? What does/does not work? What changes are needed?, etc. The Session leaders will spend the first 5 minutes setting up the discussion parameters through a brief introduction. The round tables will conclude 15-20 minutes before the end of the session. Discussion leaders and volunteers will compile their notes. A 5-10 minute presentation, reporting the results of the discussions, will end the session.
Halina Dziewit, Partner, Patton Boggs, LLP
Matthew Raymond, Director of Intellectual Property, Rush University Medical Center
Larry Saret, Attorney at Law, Michael Best and Freiderich, LLP
Shrijay Vijayan, Assistant Director, Biomedical Sciences, Rutgers University
1-F (LSS & LGL) The Effect of Healthcare Reform and Biosimilar Legislation on Licensing
Intermediate
Healthcare Reform appears to change much of how business is conducted in the Lifesciences Sector. Similarly Biosimilar legislation has divided Congress on what exclusivity period would protect the innovator while not imposing too great of a tax on the consumer. After a brief review of the status of the Healthcare Reform and Biosimilar legislation, Professors Eisenberg and Holman will provide differing views as to the merits of such legislation and the effects of each on licensing.
Paul Gallagher, President, Compass Strategic Consulting, Inc.
Chris Holman, Associate Professor of Law, University of Missouri-Kansas City School of Law
Joshua Sarnoff, Visiting Professor of Law & Associate Professor, DePaul University College of Law
Michael Samardzija, Counsel, Bracewell & Giuliani
1-G (LSS & STRAT) What's Hot and What's Not in Oncology Licensing
Intermediate
We will have a lively, interactive, and candid Q&A on the trends and challenges in oncology licensing, bringing perspectives from big pharma (Pfizer), big biotech (Amgen), an Asian pharma (Astellas), a biomarker discovery company (Compendia Biosciences), and a consultant working with small companies (Pullan Consulting). We will talk about what kinds of deals are getting done, what are hot targets and mechanisms, what types of deal structures are in vogue, why some opportunities are hard to partner, and what kind of data makes it easier to get a deal done. We will ask if personalized medicine is really here, do companies believe in cancer vaccines and cancer stem cells, and do all the companies chase the same products. Come and add your questions!
Elizabeth Bachert, Sr. Director, Worldwide Business Development, Pfizer Inc.
Dave Johnson, Director, Oncology Licensing, Amgen
Linda Pullan, Business Development Consultant, Pullan Consulting
Jean Rumsfield, Director, Business Development, Astellas Pharma
1-H (HTS & LSS) How is Innovation, Licensing, and Compliance Impacted by Tough Economic Times?
Advanced
We propose a panel setting where we'll have Paul Stewart from Eli Lilly, Art Rose from Knobbe Martens, and potentially one other key player discuss along with audience participation the following themes: 1. How the recession (i.e. cut backs) impacted the corporate strategy on R&D/innovation? 2. Does the current economic climate changed the corporate strategy around the use of IP (licensing vs. internal use) 3. Have tough economic times impacted the compliance of licensees? 4. Have compliance programs helped companies extract additional value from IP?
Ryan Halversen, Director, Licensing Management & Contract Compliance, PricewaterhouseCoopers
Jeff Leedom, Partner, Pricewaterhouse Coopers, LLP
Paul Stewart, Director - Global Business Development, Eli Lilly and Company
Art Rose, Partner, Knobbe Martens Olsen & Bear LLP
1-J (HTS & LGL) The Devils in the Deals: Sticky Transactional Issues
Advanced
Aside from reaching an agreement on the payment terms of a license agreement, the most difficult issues to resolve in order close a deal involve the allocation and management of risk. This workshop will discuss several challenging risk-related issues for IP dealmakers, such as: - indemnities and exceptions - limitations on liability - warranties and disclaimers - control over IP enforcement - ownership and residual knowledge in R&D agreements - balancing business concerns with "getting the deal done". Examples will be taken from actual deals, primarily in the high tech sector. However, the general principles discussed are relevant and transferable to other technology sectors.
Michael Bishop, General Counsel, AT&T Intellectual Property Corporation
Kevin Cranman, General Counsel, Ericsson Television, Inc.
James Sobieraj, Partner, Brinks Hofer Gilson & Lione
Monday, September 27, 2010
3:45 p.m. - 5:00 p.m.
2-A (CP) The Art of Trademark Licensing: Burton Snowboards, The Warhol Foundation and Playboy
Intermediate
As Andy Warhol once wrote "Being good in business is the most fascinating kind of art". In this talk, Jaime Heins and Rachael Schwartz will talk about the art of the licensing deal. As the Associate General Counsel for Burton Snowboards, the world's leading snowboard company and the company that created the sport, Jaime is involved in developing and negotiating numerous product collaboration and trademark licensing deals for Burton. Jaime will recount two recent well-publicized licensing deals. The first deal involved licensing images of Playboy models for a limited edition "adults-only" snowboard line that generated national controversy and protests. The second deal involved licensing images of Andy Warhol's art from The Warhol Foundation for a line of Warhol inspired snowboards, bindings, bags and outerwear. Rachael Schwartz, an IP strategy expert, will lead participants on how to: develop a licensing strategy and value IP for inlicensing, using the deal as an illustration.
Rachael Schwartz, Senior Manager, ipCapital Group, Inc.
Jaime Heins, Associate General Counsel, Burton Snowboards
2-B (HTS) Cloud Computing 101: Business Models, Technologies and Licensing Issues
Intermediate
Cloud computing is the hot new buzzword in the world of computing, combining elements of the traditional mainframe approach with client/server technologies, the Internet, and wirelessly connected mobile devices. Every industry is in the process of having its business disrupted by this new delivery of information, computer services and resources. This disruption also extends to the licensing of IP as new ownership and jurisdictional issues (to name a few) become important. The purpose of this session is to ground LES members in the terms and concepts being used to define the technologies and business models that are evolving around cloud computing, and provide an interactive discussion of the licensing issues that accompany them. Panelists will include a cloud computing platform provider, cloud computer services provider and a practising attorney in this area of law.
Richard Greeley, Director, Licensing, Microsoft Corporation
2-C (HTS) Content Protection and Distribution 2010 in Review and a look forward to 2011
Intermediate
This workshop continues a series of annual workshops to discuss the latest trends regarding Content Protection and Distribution. The workshop discusses all aspects of this contemporary and controversial topic. These aspects include government actions, LGL actions, technology Advancement and its affect on government and LGL actions. The presentation incudes the unique aspects of licenses that address content protection and distribution and how these license not only include common terms such as grants, warrantees and indemnification, but also delve into how products that include technologies to protect content must be designed. The presentation is of interest to people involved with digital content and of especial interest to those that are responsible for licensing related technologies.
Jim Burger, Attorney at Law, DowLohnes
Don Drinkwater, Licensing Manager, Bose Corporation
2-D (IUGI) Sponsored & Collaborative Research: IP Demands in Deals Between Universities/Research Institutions and Industry
Intermediate
This session will focus on the intellectual property interests of universities/research institutions and industry in negotiating and administering sponsored and collaborative research agreements. The panel includes speakers with substantial experience in sponsored and collaborative research agreements from the perspectives of the university/research institution, high tech and LSS companies, and outside counsel. The session will cover the extent to which IP rights are retained by the university/research institution and granted to the research sponsor; sharing licensing revenues; the right to the free publication of results; and universities'/research institutions' interests in making inventions available under conditions that will promote their effective development and utilization in the public interest. Additional topics will be include who owns the IP; IRS issues; background rights; patent prosecution; patent enforcement; and development and commercialization.
Susan Capello, Senior IP Attorney, Intel Corporation
Steven Ferguson, Deputy Director, Licensing & Entrepreneurship, NIH Office of Technology Transfer
Peter B. Kramer, Executive Director, External Science and Technology, Bristol-Myers Squibb Company
Thomas Meagher, Shareholder, Volpe & Koenig, PC
John Ritter, Director, Office of Technology Licensing, Princeton University
2-E (IUGI) It's Not a Partnership Deal - It's a Collaboration: When Academia Inks Deals with Industry, the Do's and Don'ts of Business Relations
Intermediate
How does a major academic medical center, like Mayo Clinic, handle media and business relations when licensing technologies to commercial industry? It's actually addressed in every deal we do. For Mayo, licensing agreements are not partnership agreements. In the public eye, Mayo views all deals with industry as "collaborations". This sets the stage for everything we do with the company. Conflict of interest is everywhere in this environment and Mayo has created processes and tools for managing conflict, working with industry and handling media relations. Part of every deal includes collaboration between the licensing manager, the company and Mayo's Department of Public Affairs. We take a unique approach to supporting the commercial endeavor, while protecting Mayo's brand and reputation. This workshop will take an in depth look at the relationship Mayo has with AssureRx Health, a company started around Mayo technology.
Kathy Anderson, Business Relations Consultant, Mayo Clinic
James Burns, President and Chief Executive Officer, AssureRx Health
Susan Stoddard, Senior Licensing Manager, Mayo Clinic
Donald Wright, Senior Vice President, AssureRx Health
2-F (LSS) Proof of Relevance: The New Standard for Partnering
Intermediate
Pharma's licensing interest is back to its traditional post-PoC comfort zone. Today's headline deals involve biotechs with robust Ph-IIb data, often from large patient trials. Examples are Rigel's Ph-IIb deal for a Syk inhibitor for RA ($100mm upfront and $1.24bln potential value) and Targacept's Ph-IIb deal for a nicotinic channel blocker for refractory depression ($200mm upfront and $1.2bln potential value), both with AZ. While those deals look like good news for the "sell side," these sellers achieved value inflection after years in the clinic and hundreds of millions of spend. Today's biotechs won't have that "capital runway," they must exit far earlier, often on pre-PoC data. Early biotechs need to refocus from a standard of PoC to one of Proof of Relevance (PoR): showing the indisputable clinical and commercial value of compounds earlier in development. We will focus on screening early-stage programs for PoR and strategies for achieving value inflection from establishing PoR.
Vincent Aurentz, Senior Executive Vice President, Portfolio Management & Business Development, Merck Serono International SA
Martin Birkhofer, Vice President Strategic Transactions, Bristol-Myers Squibb Company
Jeet Mahal, Head of Corporate Development, Portola Pharmaceuticals
Dennis Purcell, Senior Managing Partner, Aisling Capital LLC
Ed Saltzman, President & Founder, Defined Health
2-G (LSS) The Softer Side of Negotiation Revisited
Intermediate
Over the last three years, the speakers have presented a wide variety of topics related to some of the softer aspects of negotiation. These include the various "psychological biases" that interfere with objectivity, the importance of non-verbal communication during negotiations, as well as a look at how human beings are not always rational decision-makers. The object of this presentation will be to take an updated look at these topics and how they may impact the licensing/M&A process.
Anjan Aralihali
2-H (LGL & LSS)Patent Litigation Settlement Agreements: The Story Behind the Purdue v. Endo OxyContin® Settlement
Advanced
Come and hear from in-house lawyers from Purdue and Endo to understand the roles of in-house counsel during settlement negotiations as well as how focusing on the "needs" vs. the "wants" in both the litigation and business context lead to an acceptable agreement.
Guy Donatiello, Vice President, Endo Pharmaceuticals
Brian O'Shaughnessy, Shareholder, Buchanan Ingersoll & Rooney, PC
Philip Strassburger, Vice President & Chief Intellectual Property Officer, Purdue Pharma LP
2-J (WIL) Lipstick and Heels at the Negotiation Table
Intermediate
There is a persistent perception that women are at a disadvantage in negotiation for numerous reasons - assertive or passionate women are "less likeable," women are less aggressive in demands, or they focus more on the role of the peacemaker, etc. This panel seeks to understand the reality behind these perceptions through the experiences of three women who have been very successful in deal negotiations, even when they find themselves as the only woman in the room. In this session, we will briefly explore barriers that women have to overcome at the negotiation table. However, the primary focus of the session is the positive tactics or approaches that women can use to be successful at the deal table. Each of the panelists will draw on her own personal experience of negotiating numerous deals to share lessons learned, recommendations, and insights.
Kate Shore, Senior Manager, ipCapital Group, Inc.
Judith Paul, Intellectual Asset Strategy Manager, BP America
Robin Sitver, Executive Director, Business Development, Johnson & Johnson Consumer Products Company
Tanya Moore, General Manager, Outbound Licensing, Corporate IP&L, Microsoft
Tuesday, September 28, 2010
2:00 p.m. - 3:15 p.m.
3-A (CEEM & INTL) Strategies for Actually Transferring the Technology of International Chemical Deals; Dealing With the Hangover After the Signing Celebration
Intermediate
After the deal is signed somebody has to transfer the technology and maintain the agreement. In any situation this can run into communication and logistical problems. However, complex international deals bring even greater challenges. The speakers will discuss the lessons they learned from implementing transfer of the technology in real life international deals. For example, this will deal with export control issues, transferring and controlling chemical trade secrets and know-how, and how to find and share the people in which this information resides. It is sometimes not as easy as the negotiators thought it would be. While the lessons particularly apply to international chemical deals with places like Asia and the Middle East, these lessons would also be helpful domestically as well as across other technologies. This will include a lively panel discussion and audience participation in problem solving will be encouraged.
Moderator: Anthony Venturino, Partner, Novak, Druce + Quigg, LLP
Patrick Desmond, Attorney and Licensing Manager, USG Company
Pete Sahu, Intellectual Property Counsel, USG Corporation
Erik Verbraeken, Associate Director, Business Law and Contracts Division, Institut Francais du Petrole
3-B (HTS & LGL) Emerging Trends in Patent Enforcement: Implications for Licensing Executives
Advanced
Recent Federal Circuit and district court decisions and ongoing legislative efforts at patent damages reform provide an important backdrop for licensing executives in valuing patents for license negotiations. A number of these cases may make it more difficult for patent holders to secure large damages awards. The Patent Reform Act of 2010 also seeks to curb damages award. The perception that patent damages have been getting larger seems to have emboldened patent holders and even led to the emergence of a new class of licensors - the non-innovating entity. This workshop will explore the practical effects of recent court decisions and legislative initiatives and whether these assumptions about damages awards need to be revisited. This will be a highly interactive workshop with ample opportunity for Q&A.
Louis Berneman, President, Texelerate
Oliver Bennett, Counsel, Kaye Scholer LP
John Paul, Attorney, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
John Veschi, Chief Intellectual Property Officer, Nortel
Mary Woodford, Vice President, Cornerstone Research
3-C (HTS & LSS) The Bilski Decision - Ramifications for Business Methods, Information Technology, and Life Science IP
Advanced
In re Bilski is an important Supreme Court decision that deserves special attention because, although the Bilski claims are directed to non-technological business methods, the court's decision on subject matter eligibility may lead to new standards for patentability that could profoundly affect the future of software, telecommunications, and life science patents. Bilski is one of the most closely watched Supreme Court cases, and generated a record number of amici curiae briefs, some of which expressed concern that innovation in modern computer, communication, and medical technologies may decline or retreat into secrecy. A panel of experts, including a representative of the law firm that represents the Bilski applicants at the Supreme Court, will provide their views on Bilski and its real-world implications in their respective industries. Bilski will also be reviewed in the context of other important Supreme Court and CAFC decisions on subject matter eligibility.
Erika Arner, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Daniel Broderick, Associate Director, California Institute of Technology
Matthew Kelly, Chief IP Counsel, CME Group, Inc.
Stasia Ogden, Assistant General Counsel, Intellectual Property, Baxter Healthcare Corporation
3-D (IUGI & STRAT) Are Academic Institutions Losing Their Way on Technology Transfer?
Advanced
In the 30 years since the Bayh-Dole Act, licensing perspectives of academic institutions have gone from distain to tolerance to acceptance to encouragement, all positive steps. But it can be argued that some have gone one step too far, to greed. Most institutions point to public service, faculty service and economic development as laudable tech transfer goals, but in the privacy of the board room, some see tech transfer more in terms of revenue generation - a growing trend in this period of weak endowment returns and state budget cuts. Of course, profit motives have driven industry for millennia with incredibly positive results, why can't the same happen for academia? In this session, a panel of academic tech transfer professionals and the business development professionals that license from them will discuss the proper role of money-making and other goals, and what problems can arise when tech transfer programs behave as corporate arms of otherwise altruistic institutions.
Alan Bentley, Director, Commercialization, Cleveland Clinic Innovations
Reid Leonard, Executive Director, Licensing & External Research, Merck & Co., Inc.
Robert MacWright, Partner, Frommer Lawrence & Haug LLP
Robin Rasor, Director of Licensing, University of Michigan
John Reid, Director, Business Development, AstraZeneca Pharmaceuticals
3-F (LSS) Necessity is the Mother of Invention: Innovative Use of Contingent Payments and Escrows and Survival in the Great Recession of Late 2000s
Intermediate
Innovation is alive and well and the full measure of a company's talents must align to ensure its survival. This panel will explore recent M&A activity ranging from "licensing-like" asset acquisitions to corporate mergers and acquisitions all using contingent payments (e.g. CVRs) or escrow terms to facilitate the transaction. Specific examples will be discussed by the deal makers in the context of the challenges that led to the use and evolution of these terms. Merck will highlight the use of CVRs in asset acquisitions. Ligand Pharmaceuticals, Inc. will highlight the use of CVRs and the derivative markets for CVRs through their multiple acquisitions of Pharmacopeia, Neurogen and Metabasis. CombinatoRx will highlight their merger with Neuromed and the use of an equity escrow arrangement with sizable distributions of shares dependant on the timing of FDA approval of Exalgo, which decision determined the final ownership by the stakeholders in the merged company.
Jason Cole, Senior Vice President and General Counsel, CombinatoRx, Inc.
Fernando Sallés, Neuroscience Franchise Licensing Integrator, Merck
Syed Kazmi, Vice President, Business Development and Strategic Planning, Ligand, Inc.
3-G (LSS & STRAT) Negotiating for Long Term Alliance Results
Advanced
The presentation will highlight several alliance management challenges that originated from well intentioned contractual provisions and identify the key learnings for future negotiations. Examples discussed are drawn from the presenters extensive experience in both negotiating and managing strategic partnerships in the global pharmaceutical environment.
Angela Bylancik, Executive Director, Global Alliance Management, Novartis Pharmaceuticals
Carolyne Zimmermann, Head of Negotiations and Alliance Mgmt, CVM,Novartis Pharmaceuticals
3-H (LSS & STRAT) Development & Commercialization Diligence in BioPharma Alliances
Intermediate
Is there more to development and commercialization diligence in biopharma alliances than "use reasonable efforts"? Should there be? The business terms of biopharma alliances have changed substantially over the past decade with respect to financial payments, risk sharing and development options. However, the diligence standards for clinical development, regulatory approval and commercialization are generally unchanged when big pharma is the licensee, and only occasionally more specific when specialty pharma in-licenses a compound. As more products come to market through alliances, should there be a tightening of performance requirements with respect to: * Clinical development timetables * Development expenditures * Minimum annual sales * Commercial expenditures We will survey recent biopharma alliances, describe and discuss novel approaches, and debate the merits and drawbacks of such provisions.
Mark Edwards, Managing Director, Deloitte Recap
Barbara Kosacz, Partner & Head, Life Sciences Practice, Cooley Godward & Kronish
Late Breaking Workshop 1: To Deal or Not To Deal, That Is the Option -The Rising Popularity of Options and the Art and Science of Using Options in Life Sciences
Recently the use of options is becoming more popular in life sciences transactions. Companies who invented them love to use them. Companies who haven't used them are thinking about them. What is the allure of options? What are the "dos" and "don'ts" in using them? First , options are not created equal. Options can be used in licensing transactions, in mergers and acquisitions and even in financing transactions. This workshop will discuss the use of options in different kinds of transactions and address issues such as how to select the option trigger, how to negotiate the exercise price and how to combine the use of options with other deal tools. This workshop will also discuss business, financial, technical and legal considerations in structuring option-based transactions and how to use options as a strategy to get access to hot assets, allocate costs and risks, and maximize upside benefits while minimizing downside exposure.
Donald Dwyer, AstraZeneca
Beth Fordham-Meier, Vice President, Licensing and Intellectual Property, Targacept, Inc.
Gwen Melincoff, SVP, Business Development, Strategic Investment Group (SIG), Shire Pharmaceuticals
Wendy Pan, Morgan, Lewis & Bockius LLP
Late Breaking Workshop 3: Win without Fighting: How Improving Patent Quality can help Companies Reduce the Cost of Patent Infringement Litigation, including the Litigation Increase by Non-Practicing Entities
By nearly all measures, companies are facing an increasing onslaught of patent infringement litigation. For example, there is an industry perspective that non-practicing entities are increasing investment in further litigation and engaging in aggressive tactics. Intellectual property professionals are forced to devote a significant amount of their limited resources reacting to and defending against the assertion of patents, which are in many cases of questionable quality. Landmark Supreme Court decisions and patent reform legislation seek to remedy many of the deficiencies in the patent system. However, in order to mitigate these substantial risks, companies must take control of their own destiny and transition from short-term reactive tactics to implementing long-term proactive and preventative strategies, such as focusing on patent quality. The panelists will share successful, cost effective strategies, tactics and tools companies can implement to reduce the threat from aggressive litigation. Only then will intellectual property professionals be able to devote their energies towards promoting "the Progress of Science and useful Arts." We anticipate and will encourage a spirited debate on how, if at all, companies can marginalize non-practicing entities.
Ray Felts, Chief Operating Officer, Article One Partners
Doug Luftman, Vice President & Chief Patent Counsel, CBS Interactive
John Squires, Partner, Chadbourne & Park, LLP
Tuesday, September 28, 2010
3:45 p.m. - 5:00 p.m.
4-A (CEEM & CleanTech Committee) Making CleanTech Deals Work: Best Practices in an Environment of Risk and Uncertainty
Intermediate
Proposed Workshop: Making CleanTech Deals Work: Best Practices in an Environment of Risk and Uncertainty Proposed Panel: · Ian Hatton, CEO (and/or) Graeme Walker, CFO, Baryonyx Corporation · Daniel Cheifetz, CEO Indie Energy · Elias Hinckley, Partner, Venable LLP · Lisa Cameron, Senior Consultant, The Brattle Group · Evan Cohen, Senior Associate, The Brattle Group · Venture Capital Firm partner with substantial Cleantech investment experience Our proposed workshop will feature a 75 minute roundtable discussion between an IP owner, an investor, a Cleantech lawyer and economic consultants focusing on our assorted and related experiences with clean technology driven deals. Our roundtable will feature an executive from Baryonyx who have developed and deployed wind farms in Europe and the United States; an executive from Indie Energy, a technology-driven geothermal company, Elias Hinckley, a partner with the law firm Venable LLP and professor at Georgetown University,
Lisa Cameron, Senior Consultant, The Brattle Group
Elias Hinckley, Partner, Venable LLP
4-B (CP & INTL) Deal or No Deal? Setting the Stage for More Profitable IP Licensing
Intermediate
This interactive panel presentation will share key strategies for getting the most value from an IP asset portfolio while also protecting the value of the business. The session structure will be based on a series of hypothetical case studies created from real-life deals. Audience participation will be solicited throughout. Example Case Study: You were recently hired at a large CP company. Your executive team has instructed you to perform an assessment of the current internal and external licensing strategy. Your goal is to provide recommendations to optimize the value of the company's IP assets that can be used for both internal and external licensing policies. Issues to be discussed include: When/ how can my organization be more profitable exploiting IP internally and externally? What factors/values should be considered if my organization decides to migrate IP assets from one location to another? How do I know I set the right royalty rate for each IP asset?...
David Jarczyk, Chief Operating Officer, ktMINE
George Kyroudis, Senior Tax Director, Playboy Enterprises, Inc.
Vanita Spaulding, Managing Director, Valuation, Ceteris
Chrysso Sarkos Sarris, Assistant General Counsel, Fortune Brands, Inc.
4-C (HTS & LGL) Anatomy of an Open Source Conundrum: How Licensors Can Identify Open Source Software in their Products, Address Resulting Problems, and Turn Hassles into Opportunities (Includes an Introduction to "Open Source" and "Copyleft")
Advanced
Three-person panel on creating corporate structures & IP management systems to address open source software in
licensed applications. Discussion re: (1) meaning of "open source" and "copyleft"; (2) processes & technology for identifying open source software;
(3) addressing and working around open source problems; and (4) option of becoming an open source distributor. Content focuses on real-world examples
faced by IP owner panelists and attorney panelist. Highly interactive. David Tollen is the author of the ABA's handbook on technology licensing, directed
to both lawyers & non-lawyers (pub. date 6/2010). He's an experienced presenter/trainer and focuses on blending education with interaction and
fun. John Keagy is CEO & co-founder of cloud computing provider GoGrid, an IP owner experienced w/ open source issues. He led GoGrid to recognition in
Deloitte's Technology Fast 500. Before GoGrid, he founded the West Coast's largest profitable dial-up ISP. Kamal Hassin is Director of Product
Management at Protecode, a provider of software IP management and license compliance solutions. He is responsible for current and future product
portfolio capabilities at Protecode, and has authored a number of papers on software IP management.
Kamal Hassin, Director, Product Management, Protecode, Inc.
John Keagy, Chief Executive Officer, GoGrid
David Tollen, Partner, Adeli & Tollen LLP
4-D (HTS & IUGI) Silicon Valley Commercialization Strategies - What the Experts in Silicon Valley Are Doing in Hard Times
Intermediate
An in-depth look at what industry, universities, research labs and brokers are doing in Silicon Valley to commercialize technology in light of the economic challenges facing patent owners. This specially chosen panel will provide a broad vision of examples of how and why licensing deals, under the right circumstances and management, are working in various aspects of industry, university and government. Hear the experts provide what they are doing and the requirements and preparation that to lead to successful negotiations and getting the deal done. It takes much more than technology to achieve licensing objectives, especially in hard economic times. Hear what the experts are doing in Silicon Valley to meet the challenges.
Mark Holmes, Chief Executive Officer, PatentBridge LLC
Katharine Ku, Director Office of Technology Licensing, Stanford University
Damon Matteo, Vice President, Palo Alto Research Center
Craig Smith, Commercial Licensing Manager for Emerging Technologies, Sandia
Chris Talbot, Senior Director Strategic Licensing Group, Applied Materials, Inc.
Larry Udell, Founder & Co-Chair, LES Silicon Valley
Jerry Wald, Senior Business Leader, Intellectual Asset Strategy & Management, Visa
4-E (IUGI) Early Stage Technology Licensing: Challenges and Lessons Learned
Intermediate
Panelists will share perspectives on specific challenges they have encountered while negotiating early stage technology licensing deals. They will discuss issues encountered and innovative deal structures they have developed to address some of the challenges they have faced. Multiple perspectives will be provided, including those of early stage technology owners as well as perspectives of counsel advising licensees. Discussion will focus on specific issues associated with completed deals, such as strategies which allow the technology owners to capture value, enable broad adoption of the technology, and avoid the problems of reach-through or downstream royalty rights in pharmaceutical licensing. Panelists will discuss deals completed in different industries and examine similarities and differences in deals across these industries.
Lisa Dhar, Senior Technology Manager, University of Illinois
Brian Frizzell, Principal, Charles River Associates
Patrick Gattari, Partner, McDonnell Boehnen Hulbert & Berghoff LLP
Nancy Sullivan, Director, Office of Technology Management, University of Illinois-Chicago
4-F (LSS & IUGI) Wishful Thinking? Avoid the Missteps in Valuing Early Stage Compounds: A How-To Guide
Intermediate
So you have a compound that everyone - or at least someone - wants. How do you make sure you get the deal done at the best short term AND long term value for your company? Or, maybe the situation is reversed. Perhaps you found the perfect early stage asset to fill a hole in your company's pipeline. How do you make sure you secure the necessary rights without overpaying? In either scenario, how do you go from first look to a happily ever after NME? Learn what works, what doesn't and what will get you to the compound alter.
Kevin Bitterman, Principal, Polaris Venture Partners
Lauren Foster, Assistant Director, Biotechnology, Massachusetts Institute of Technology, Technology Licensing Office
Skip Irving, Partner and Managing Director, Health Advances
Reid Leonard, Executive Director, Merck & Co.
Cat Oyler, Sr. Director, Emerging Technologies, Johnson & Johnson
4-G (STRAT & LSS) Why Can't We Be Friends? - Evolving an Adversarial Relationship to a Successful Partnership
Intermediate
The panelists will present a case study demonstrating how strategic thinking in a patent opposition proceeding can form the basis of a relationship between a company and an academic medical center to create a successful, worldwide campaign to market and license a technology to potential infringers. Participants from each of the relevant parties will discuss approaches and tactics. After short presentations by the panel, this workshop will use in-depth, interactive discussions to highlight key issues in structuring a successful collaboration as the basis for moving beyond an adversarial relationship. The panel will focus the discussion on managing organizational expectations and dynamics to implement an IP strategy that is aligned with their organization's corporate business strategy.
Daniel Castro, Business Strategy and Licensing Manager, Partners Healthcare / Massachusetts General Hospital
Nick Lee, Partner, Kilburn & Strode LLP
Rebecca Menapace, Director, Research and Licensing, Partners Healthcare
Bernd Merkl, Chief Business Officer, Geneart AG
4-H (LSS & IUGI) License Terms that Impact Downstream Value Creation - The Devil in the Details
Advanced
Licensors and licensees can advance downstream value through increased attention to the impact of certain license terms. In equity-based start up and other transactions, parties should attend to deal terms that matter in an exit -- including, but not limited to, assignment provisions, lock up limitations, preemptive rights, redemption rights, tag along (co-sale) rights and piggy-back registration rights. In biopharmaceutical transactions, parties should attend to terms which will affect the use of the license as the basis for a subsequent structured financing. These terms include assignability, ability to grant security interest in IP, clarity and conditions of royalty obligations, royalty offsets/discounts, audit provisions, ability to share royalty reports under confidentiality, and termination rights. Experience has shown that clarity and attention to these equity and license terms ease due diligence, simplify transactions and increase value. This will be a highly interactive
Louis Berneman, President, Texelerate
Matthew Reber, Vice President, Cowen Healthcare Royalty Partners
Jordan Yarett, Partner, Paul, Weiss, Rifkind, Wharton & Garrison LLP
Late Breaking Workshop 2: Is China Still Open for Business? Indigenous Innovation and Other Policies: A Discussion
There is a rising chorus of concerns being expressed in Europe and the U.S. regarding China's treatment of international companies. In late July 2010 the U.S. Chamber of Commerce released a report entitled "China's Drive for 'Indigenous Innovation' that stated "Simply put: Soviet planning cannot replicate Silicon Valley." Areas of concern include government procurement in the IT sector, standard setting in telecoms and compulsory licensing, utility model patents, the requirements of the amended Patent Law, the new Anti-Monopoly Law, and of course IP enforcement. The report states:
"As a result, the plan is considered by many international technology companies to be a blueprint for technology theft on a scale the world has never seen before."
How might your company's plans for China be affected? What are the policies and laws behind these concerns? What are other companies doing?
Elizabeth Chien-Hale, Senior Patent Counsel, China Coordinator, Apple, Inc.
Paul Jones, Jones & Co.
Wednesday, September 29, 2010
2:00 p.m. - 3:15 p.m.
3-E (LGL) Top 10 Court Decisions of 2010 Affecting Licensing
Intermediate
This workshop will review the Top 10 court decisions since the last LES Annual Meeting affecting Licensing. The workshop will not only identify the cases, but also will discuss the take-aways and implications of these cases on licensing.
Russell Levine, Parnter, Kirkland & Ellis LLP
5-A (HTS & CP) Trademark Licensing: How to Protect and Leverage Your Brand
Intermediate
Many innovative companies have learned to profit and thrive by leveraging the power of their brand. This workshop deals with the doe's and don't of Trademark licensing: how to get the most from your brand and how to protect and maintain its value. The panelists in this workshop will represent a range of alternative approaches from a variety of industries.
Moderator: Allen Vaughn, Manager Intellectual Property Strategy & Licensing, Lockheed Martin
Joel Parker, Manager, Licensing, Pratt & Whitney
Gail Roth, Director, CP Licensing, The Boeing Company
Robin Sitver, Executive Director. Business Development, Johnson & Johnson Consumer Porducts Company
5-B (International & HTS) Can Deals be Made in Cases of Accused Infringement Without Initiating Litigation?
Intermediate
What has happened to licensing? If you believe your technology is being used by others, can you say so? If you tell someone they are using your technology (and they quietly believe you), are they legitimately interested in negotiating a license? Or do they first test to see if you have the backbone to file a lawsuit? All of these question are valid the world around and particularly relevant in the US given past court decisions. This workshop will explore deal strategies for both the patentee and the accused -- not just from the front of the room, but by listening to anecdotal evidence put forth by the audience.
Charles Neuenschwander, Principal, International Patent Licensing Company
Dooyong Lee, Executive Vice President, Acacia Technologies Group
Tanya Moore, General Manager, Outbound Licensing, Corporate IP&L, Microsoft
Thomas Rein, Partner, Sidley & Austin Brown & Wood
Katharine Wolanyk, President, Soverain Software LLC
5-C (HTS & International) Deals from Disasters
Intermediate
I think this could be a Mini-Plenary or Workshop depending on the wishes of the organisers. "Deals from Disasters" Chairman and speaking for the UK - Dr Stephen Potter, The R&D Society; Asia - Guy Proulx, Transpacific IP; The Americas - Kurt Becker, Intellectual Ventures; Continental Europe - Daniel Papst, Papst Licensing GmbH. The LGL aspects of bankruptcies and corporate re-organisations in different geographies will be rapidly outlined and then illustrated by a number of deal-making war stories that will keep the audience on the edge of their seats. The inability of insolvency administrators to understand and value IP and the difficulties and opportunities that that offers is a major theme, while the purchase of a sealed box of patents with unknown encumbrances, negotiating with Her Majesty's Government for vesting orders and the buying of IP from a major US company under Chapter 11 will be among the tales covered....
Kurt Becker, General Counsel for Acquisition and Licensing, Intellectual Ventures
Daniel Papst, Chief Executive Officer, Papst Licensing GmbH and Co KG
Stephen Potter, Former Chairman, The R&D Society
Guy Proulx, Chief Executive Officer and Founder, Transpacific IP PTE Ltd.
5-D (LSS & LSS) What's Hot & What's Not in Cardiometabolic Licensing
Intermediate
Cardiometabolic Licensing trends, structure, and terms.
Brent Bankosky, Director, Global Licensing & Business Development, Takeda Pharmaceuticals
Amit Dhawan, Medical Director, Kantar Health
John Mohr, Pharma Executive, Consults LLC
5-E (LSS & Biomedical Devices) Game Theory Applications to BioPharma Deal Negotiations - Moved to LSS Mini-Plenary, Part 2
5-G (STRAT & LSS) No Really - This Alliance is Different! How Alliance Managers Help Ensure A Successful Partnership
Intermediate
Every alliance is unique. What's common is the increased value that can result when an alliance is managed by a dedicated alliance manager. As alliances become ever more central to company strategy, there comes a point in time when an organization considers a formalized alliance management function. This panel of alliance management professionals will highlight the ways in which Alliance Managers contribute to partnership success. It will share key insights about what to consider in establishing an alliance management function and provide examples of the range of roles and responsibilities Alliance Managers may fulfill.
Pannie Trifillis, Associate Director, Alliance Management, PTC Therapeutics, Inc.
Jan Twombly, President, The Rhythm of Business, Inc.
5-H Patent Brokerage for Portfolio Managers
Patent Brokerage presents an opportunity to enhance returns on a patent portfolio while maintaining a company's position in the marketplace. The panel brings a track record of successful brokered deals to the table, and will discuss various aspects of brokering patents. Topics addressed will include opportunities for companies arising from patent brokerage generally, overcoming internal obstacles, protections available to companies, pitfalls that can derail deals, typical due diligence, and other aspects of brokered patent transactions. Topics will also include types of deals typical in various technology areas/industries, benchmarks on valuation, participants in the market. Additionally, Q&A is expected to be woven into the presentation and a separate Q&A period at the end of the presentation is planned.
Glenn Von Tersch, Principal, TIPS Group
Brad Close, Principal, TIPS Group
Paul Greco, Vice President, ICAP Ocean Tomo LLC
5-J CEEM 2011 - Sector Strategic Planning and Design of Future Royalty Rate and Deal Terms Surveys
The workshop will be an interactive, roll-up-your-sleeves session for all LES members interested in the CEEM sector. The workshop is designed to help direct our strategic planning and growth. We will use the RR&DT as a take-off point for our discussions, have specific goals to be met, and specific take-aways will be identified as deliverables.
Dave Gibson, President, DJG Management Associates
Edna Vassilovski, Member, Stoel Rives LLP
Bob Payne, President, IP Licensing Advisors, LLC
David Leathers, Managing Director, Huron Consulting Group
Hal Craig, Principal, Trout Creek Consulting, LLC
Late Breaking Workshop 4: Is There Any Difference Between A Licensing and Litigation Strategy?
This workshop will explore various strategies and pitfalls in thinking about how to monetize a patent portfolio. It will discuss whether it is possible to have a licensing campaign without litigation, how and whether to contact potential targets in advance of litigation, and possible venues for litigation. Finally, it will discuss whether any reform is possible that could help facilitate a licensing strategy in advance of litigation.
Justin Nelson, Partner, Susman Godfrey
CLP Information Session
CLP-certified professionals and volunteer leaders will review the CLP program, eligibility requirements, and recertification requirements. The workshop will end with an open Q&A session. Take the next step in your career by earning the CLP.
Malcolm McGowan, Chair, CLP Recertification Committee
Dwight Olson, Chair, CLP Board of Governors
Wednesday, September 29, 2010
3:45 p.m. - 5:00 p.m.
6-A (STRAT & LGL & CP & IUGI) Managing Intellectual Assets in Business Collaborations
Intermediate
Firms are increasingly moving to a business model in which internal resources are complemented with external resources as part of thier innovation and intellectual property strategies. These business relationships require careful internal alignment and appropriate negotiations of a variety of agreements from non-disclosures to joint development agreements, with special attention focused on protection and management of intellectual property. Timing is critical, as moving too soon may expose the firm to contamination while waiting too long may result in the loss of the fruits of collaboration. This panel discussion will introduce topics and then move to a roundtable discussion of better business practices based on the real-world experiences of intellectual property owners and their advisers. In addition to the view of intellectual property owners, academia and LGL views are also represented on the panel. The term "better practices" means that there is no single "best practice".
Christopher Arena, Partner, Woodcock Washburn LLP
Stewart Mehlman, Director, Licensing, Alliances and Emerging Technology, Praxair, Inc.
Gene Slowinski, Director, Strategic Alliance Research , Rutgers University / Alliance Management Group, Inc.
6-B (HTS & International) The Challenges of Protecting and Licensing Technology in China
Intermediate
The objective of this session is to generate an interactive discussion among panelists and members of the audience on the protection and commercialization of Intellectual Property in China. What has been the recent experience of US and European companies? What has changed and what strategies today make the most sense in balancing risk with reward. Each of 4 panelists will start with a 10-15 minute presentation outlining their business practice in China, sharing stories/anecdotes etc. This will be followed by a Q&A (facilitated by the moderator) inviting audience members to ask questions or share their experiences and opinions. By the end of the Workshop, participants will gain new perspectives on how to protect and leverage intellectual property assets in China and learn where to go for further information.
Moderator: Elliot Swan, Director Technology Licensing, Raytheon Company
Elizabeth Chien-Hale, Senior Counsel, China Coordinator, Apple Inc.
Kim Chotkowski, Licencing Executive, ATLC Inc.
William Elkington, Sr. Director, Strategic Technology, Rockwell Collins
Charles Murray, Global Managing Director of the Intellectual Assets and Licensing Business, E. I. du Pont de Nemours & Company, Inc.
Jon Rortveit, Chief Executive Officer, Tynax, Inc.
6-C (HTS) Getting into the Game: Getting your IP strategy Right the First Time
Intermediate
For the established players, their IP strategy is second nature. However, what if you are just getting started in patent licensing, or patenting for that matter? Though there is a general understanding that patents are required to "protect" your technology you need more than this to figure out what is required and to justify the costs involved in implementing a corporate IP strategy. The presenters for this session are from a small high-tech company that has made the decision to become involved in licensing and a service provider that provides services to help implement the strategy. Topics to be covered include discussing the major parts of a corporate IP strategy; the business decision, risk assessment, patents, internal policies and infrastructure, and preparing a timeline for licensing. The information will be presented in the context of the real life experiences of the speakers.
David Fraser, Director, Patent Services, Global Intellectual Strategies
Robert MacKenzie, Vice President, Business Innovation, Techlink Entertainment
6-D Investing in U.S. Federal Laboratory Technologies and Capabilities
Hundreds of U.S. federal laboratories and research centers - representing almost all U.S. federal departments and agencies - conduct billions in R&D annually. To capitalize on this investment, the knowledge and technologies created in these facilities must be brought to the marketplace. Accomplishing this task requires collaboration with groups ranging from industry partners to state economic development entities to entrepreneurs to the financial/investor community, among others.
This workshop highlights federal tech transfer efforts, with an in-depth discussion of several unique examples of federal lab partnering (deal making) to affect tech transfer and commercialization. Various mechanisms for collaborating with federal agencies exist (from licensing to facility use to cooperative research agreements and many more). These will be highlighted - with an in-depth focus on one or more during the case study discussions. Anticipated highlighting DOD and DOE cases, among others.
Theresa Baus, Head, Technology Partnerships Enterprise Office, Naval Undersea Warfare Center - Newport Division
Cheryl Cejka, Director, Technology Commericalization, Pacific Northwest National Laboratory and Battelle FLC Executive Board member
Gary Jones, Washington DC Representative, Federal Lab Consortium for Tech Transfer
Ida Shum, Business Development Executive, Lawrence Livermore National Laboratory, FLC Executive Board member
6-E (CEEM & International) The Latest Case-Decisions Affecting Patent Licensing and Trademark Licensing
Intermediate
The latest case decisions in the U.S., Europe and Japan, which may affect patent licensing, will be presented by three speakers (from the U.S., Germany and Japan), from the perspective of the U.S., Europe and Japan, respectively. A speaker will make a presentation regarding the particularities of trademark licenses as opposed to patent licenses. A panel discussion and Q&A follow. Attendants will learn the most recent issues and tips for drafting and/or negotiating a license agreement for patent licensing including these three regions, and also will learn what should be considered in trademark licensing in view of the particularlities of trademark license as opposed to patent licenses.
Moderator: Yorikatsu Hohokabe, Senior Technical Advisor, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Niels Hölder, Attorney-at-Law, Hoffmann·Eitle
J. Derek Mason, Partner Chemical Practice Group, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Angela Wenninger, Attorney-at-Law, Hoffmann·Eitle
Junichi Yamazaki, Senior Partner, Miyake & Yamazaki; President, LES Japan
6-F (LSS) Can Industry Merge Its Way Out of Its R&D Productivity Problem?
In addition to restructuring R&D, several large pharmaceutical companies have turned to significant M&A to help ease them over their patent cliffs. From mega-mergers to bolt-on acquisitions to single-asset deals, M&A is increasingly important to the industry's larger players. Which M&A strategies will pay off in the long run? How can companies best structure deals to retain scientific and managerial talent? Will mergers ensure the long-term success of the Big Pharma model or will they create organizations too large to respond to the increasingly complex health care environment? This workshop will evaluate various M&A strategies and discuss the implications of the large and small acquisitions that continue to shape the industry at this pivotal moment.
Dan Curran, Millennium Pharmaceuticals
Pam Demain, Merck
Christopher Morrison, Editor-in-Chief, Biopharma and Consumer Products, Elsevier Business Intelligence
6-G (LSS) Do You Really Have To Sell the Whole Company?
Advanced
When there is a requirement for capital, the public markets look moribund, and grants are not forthcoming, a buyout may seem to be the logical choice. However, assuming the price or the potential buyer is not right, there are other alternatives. Project financing versus company financing is becoming a popular mechanism to secure funds. The panel will explore various scenarios using concrete examples of deals involving outright acquisitions of projects in a therapeutic area, spin-outs, and creative licensing arrangements.
Christine Fischette, Senior Advisor, Griffin Securities, Inc.
Adam Golden, Partner & Co-Chair, Corporate & Finance, Kaye Scholer LLP
Todd MacLaughlan, Sr. Vice President, Inventiv Health
Lauren Silverman, Managing Director, Novartis Option Fund
6-H International Roundtables
International Issues in Standardizing Licensing Agreements: Patents
Sponsored by the LESI Standard Licensing Agreements Committee
Standardization in patent licensing agreements is highly controversial in international circles. Some argue that standards will reduce transaction cost and time, and unlock the value of patent assets currently not in play, helping to build a more robust and efficient market for this asset class. Others contend that there is no 'standard patent license', because patents are unique assets that must be individually dealt with in each transaction, that each transaction is necessarily different and that standardization would be dangerously reductive. Yet standards are evolving around patent pools and university tech transfer, as well as other examples. This roundtable, facilitated by members of the committee struck by LESI to explore this topic, will provide a forum for the discussion of all perspectives on this important issue, and will encourage the development of practical solutions on an international level.
Moderator: Lynda Covello, Committee Chair
Facilitators:
Roberto Dini, CEO, Metroconsult
David Newman
John Ramsay
International Issues in Standardizing Licensing Agreements: Trade Secrets/Know-How
Sponsored by the LESI Standard Licensing Agreements Committee
Standardization in IP licensing agreements is highly controversial in international circles. Is it possible to develop such standard agreements on an international level for Trade Secrets and Know-How? These assets are different from other types of IP and are subject to a wider variation of legal protections across multiple jurisdictions. Still, they are critical to the effective licensing and utilization of many technologies, and to create a more efficient market for these assets would facilitate commercialization of a large pool of IP. This roundtable, facilitated by members of the committee struck by LESI to explore this topic, will provide a forum for the discussion of all perspectives on this important issue, and will encourage the development of practical solutions on an international level.
Moderator: Lynda Covello, Committee Chair
Facilitators:
Hector Chagoya, Partner and Director of IP Value Extraction, Becerril Coca & Becerril
Paul Jones
Kevin Dam
International Issues in Standardizing Licensing Agreements: Hybrid Agreements
Sponsored by the LESI Standard Licensing Agreements Committee
Standardization in IP licensing agreements is highly controversial in international circles. Is it possible to develop such standard agreements on an international level for agreements containing different classes of IP (Hybrid License Agreements)? Such agreements might contain any combination of IP rights relating to patents, trademarks, copyright, trade secrets or know-how. The sheer variety of legal protections for the different types of IP across multiple jurisdictions creates many obstacles to reaching agreement on standards. Increasingly, however, Hybrid License Agreements are required for the effective licensing and commercialization of many technologies, business methods and portfolios of IP. This roundtable, facilitated by members of the committee struck by LESI to explore this topic, will provide a forum for the discussion of all perspectives on this important issue, and will encourage the development of practical solutions on an international level.
Moderator: Lynda Covello, Committee Chair
Facilitators:
Fiona Nicolson, Solicitor and Senior IP Transactional Partner, Bristows
Stan Benda, Counsel, Sim McBurney
Late Breaking Workshop 5: Monetizing Royalty Streams in Life Sciences-Licensing Agreements
All Levels
This workshop will explore key issues and barriers in the Life Sciences industry as it relates to licensing agreements with a focus on monetizing royalty streams.
Topics for discussion:
- Identifying opportunities to monetize royalty streams
- Evaluating a monetizing deal
- Conducting due diligence related to monetizing royalty streams
- Seller and purchasers' perspectives in such deals
- Issues to identify in licensing agreements
- Critical IP issues to consider in such deals
- Structuring the debt financing and other financing issues
- Impact of the financing issues on the underlying license agreement
- Overcoming obstacles (in the due diligence or in negotiating and concluding the definitive agreement)
- Interplay between IP/regulatory in licensing agreements
- Anticipating outside influences and other factors which can impact on the deal
Cheryl Reicin, Partner, Torys LLP
Eileen McMahon, Partner, Torys LLP