Monday, October 15
Workshop Session 1
2:00 pm - 3:15 pm
Establishing a Brand Licensing Strategy
CP / Trademarks
This session will focus on the key areas that need to be identified and defined when developing a brand licensing strategy -Company objections: revenue generation, brand expansion, geographic expansion, adjacencies, new customers, reviving dormant brands -Inbound strategies vs outbound strategies -Assessing the right co-branding partners -Considerations of both licensees and licensors in brand selection
James Barickman, North Star Partners
David Berry, Spinmaster Toys
Nancy Fowler, The Licensing Shop
Gail Roth, The Boeing Company
Licensing Issues in Mobile Apps
HT / Legal
This workshop will show licensing executives how to navigate the market for mobile apps, including how the apps are reviewed and accepted by Apple and approved by Google, and how consumers purchase and download apps. It will discuss the contracting methods and payment systems. The workshop will also address the special issues of mobility, such as geolocation and collection of information from a user's smart phone. Congress and courts have been setting new rules in this space, and the presentation will describe the most up-to-date legal requirements for data collection and behavioral marketing to smart phone users.
Ted Claypoole, Womble Carlyle Sandridge & Rice, LLP
Understanding Licensing-Based Domestic Industries in Section 337 Investigations at the International Trade Commission (ITC)
HT / Legal
The ITC has become an important venue for high-stakes patent litigation due to its fast docket and powerful remedies. To win at the ITC, parties asserting statutory IP (patents, trademarks, and copyrights) must prove a 'domestic industry' related to those rights - a significant difference from litigation in federal district court. One option is to prove a domestic industry through investments in licensing, which can include investments in licensing asserted patents where neither the IP holder nor its licensees produce an article protected by the asserted patent. This workshop is intended to demystify the ITC's domestic industry requirement related to licensing.
Bernard Cassidy, Executive Vice President and General Counsel, Tessera Technologies, Inc.
Seth Kaplan, Capital Trade, Inc.
Andrew Pratt, Adduci Mastriani & Schaumberg
Practical Implication of Enactment of Reformed Patent Laws / Regulations in the US, Europe and Japan
International / Legal
Many of the important new or amended provisions of U.S. Patent Law need to be accommodated by practitioners for their own or their clients' better strategy for strengthening the values of their patent rights. Similarly, major important patent law reforms or rule changes have been implemented in Japan and in Europe. In this session, practical implications on such major patent law reforms in the U.S., Japan and Europe will be addressed, and discussion will be focused on major differences among these three regions regarding some of the most important provisions and/or rules and regulations. Panel discussions from the comparative views of these regions and Q&A will follow.
Thorsten Bausch, Hoffmann Eitle (Germany)
Yorikatsu Hohokabe, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Sumiko Kobayashi, Abe, Ikubo & Katayama (Japan)
Zachary Stern, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
So, You Think You Own It?
Intellectual property (IP) ownership is often poorly addressed in general business agreements, and even employment and license agreements may not be current with recent developments. This session will: identify key IP ownership issues which should be explicitly addressed; illustrate best practices for conveying or acquiring IP rights; explore jurisdictional concerns; and identify risks in ownership-related representations and warranties prevalent in IP-related agreements often ignored as "just boilerplate." Panelists will address the impact of recent US and Canadian court decisions that draw attention to the importance of specific, clear terminology when drafting IP ownership provisions or reviewing/amending existing licenses and other agreements.
Steven Henry, Ab Initio Software
Sarah Howe, Associate Director, York University
Christopher Hunter, Partner, Norton Rose
Maryanne Trevisan, Shareholder, Wolf, Greenfield & Sacks, P.C.
Patrick R. H. Waller, Wolf Greenfield & Sacks, P.C.
Zoran Zdraveski, Epizyme, Inc
Who Cares about IP Strategy?
IUGI / HT
Leading licensing executives from a selection of important sectors answer your questions about the role and impact of strategy in technology development, commercialization, technology transfer and IP value creation. Hear firsthand some actual experiences in the real world of intellectual assets + market research + hunch = game plan, and the rewarding (or not) outcomes. The similarities and differences of the IP strategy approaches of different sectors – IT, life science, university and government will be discussed, together with what the sectors might learn from each other.
Christopher McKinney, Georgia Health Sciences University
Gregory Nelson, Novak Druce + Quigg
Paul Stewart, Eli Lilly and Company
Growing the Value of Your Technology Prior to Licensing, Next-Stage Funding or Next-Round Financing
When resources are scarce, applying those resources to the right activities is critical. How to determine the right activities? Which ones will best grow value? This workshop will address issues arising in today's early-stage technology commercialization environment. Presenters will discuss strategies to grow the value of a medical technology portfolio prior to licensing, next-stage funding or next-round financing. This will include methodology to identify and prioritize risk mitigation and opportunity pursuits in order to enhance the chances of success.
Jackie Csonka-Peeren, DecisionModel Associates
Aaron Fenster, Centre for Imaging Technology Commercialization
Jennifer Fraser, University of Toronto
Option to License Deals: Finding a Winning Balance
LS / Legal
Capital shortages and a diminishing pharma pipeline are fueling option to license deals. Seen as effectively matching risk with reward, these deals allow emerging companies to collaborate early with a strategic partner while providing that partner with access to a novel technology at an early stage of valuation. Striking that delicate balance leading to a 'win-win' for both sides, however, can take persistence and negotiation. Led by a leading licensing attorney, a panel of seasoned business development executives will provide practical tips for structuring and negotiating option deals, including strategies for navigating exclusivity, protecting IP assets and mitigating termination risk.
George Adams, President and CEO, VentriPoint Inc.
Hemmie Chang, Foley Hoag LLP
Lynda Covello, V.P., Strategic Alliances, Amorfix Life Sciences Ltd
Adi M. Treasurywala, President, Arrow Can Partners
Patent Valuation: Valuing What Could Be Your Most Valuable Asset
Valuation / HT
In the last few years, patents have gone from sleepy assets to hot commodities. Traditional asset valuation methods are hardly appropriate for such a unique asset. This workshop will address multiple approaches to patent valuation: 1. The nature of a patent as exclusionary rights, 2. The value of a patent portfolio as the incremental value of a market monopoly, 3. Patent valuation in the context of brokerage and auction transactions, 4. Patent valuation as a function of recent damage decisions, 5. How the Cost, Market and Income approach is being used today, 6. How patents were valued in the Nortel and Kodak patent auctions.
Rich Ehrlickman, IPOfferings LLC
Michael Lasinski, 284 Partners, LLC
Alexander Poltorak, General Patent Corporation
Research Tools and Other Exceptions to Infringement: How Useful are They? - Cancelled
1-K - Hot Topic
1-K Russia Joins the WTO: Changes in the Russian IP & Tech Climate Coming
Russia joined the WTO on August 22, 2012. It is the last of the BRIC countries to do so. While many changes to its IP laws are already in place, Russia has decided to have a new IP court in place and working by February 1, 2013. Applications to be a judge in the new IP court were due August 10th. While the new innovation park at Skolkovo is still under construction, out of temporary offices, the first tenant of the Skolkovo Foundation has gone public, 500 startups have become members and a total of more than 2.9 billion rubles ($90 million USD) has been dispersed as grants.
The panel will discuss the development of innovation, available funding for foreign partners (Skolkovo has a marketing campaign to attract foreign tech companies), and tech transfer opportunities in Russia. It will also address the larger concerns of the rule of law, the related tax system, the role of the Anti-Monopoly Laws and the Federal Anti-Monopoly Service in ensuring a level playing field, as wells as the vital legal strategies in commercializing IP assets in the jurisdiction. It will also discuss the main issues associated with negotiating IP contracts in Russia, and the practical aspects the preparation of term sheets and letters of intent, as well as drafting the final contract. It will close with a discussion of certain practical recommendations for tech transfer deals in the context of commercial transactions in Russia
Paul Jones, Jones & Co., Toronto
Sergey Medvedev, Gorodissky & Partners, Moscow
Monday, October 15
Workshop Session 2
3:45 pm - 5:00 pm
Everything You Wanted to Know about the New Battery Landscape but Weren't Sure Whom to Ask
Dr. Les Goff, Noetic Technologies
James J. Greenberger, Executive Director, National Alliance for Advanced Technology Batteries
Connie M. Cleary, DPM, CLP, Interim Manager, Industry Partnership Development from the Technology Development and Commercialization Office, Argonne National Laboratory
Chris Noble, Licensing Officer, MIT
Cleantech Collaboration for Fun and Profit: How Universities, Federal Labs and the Private Sector Can Work Together and Love the Results
Clean technologies often derive from collaborative efforts between federal laboratories, academic institutions and the private sector. Many licensing professionals shy away from such deals due to fears of working with large bureaucratic organizations with different agendas. It doesn't have to be this way.
Our panel of experienced deal makers will lead a workshop taking the participants through real life examples of cleantech deals that worked and cleantech deals that are working. In addition to sharing the details of their own deals, the panelists will provide their insights into best practices that can help improve the probability of building and maintaining a successful deal.
Ron Epperson, Managing Director, Intellectual Energy LLC
Annemarie Meike, Lawrence Livermore National Laboratory
Christian Schuchert, Investment Manager, 3M New Ventures
Craig Wilkinson, Executive Vice President, Zinc Air
Innovation through Strategic Partnerships: How Consumer Product Brands are Licensing and Using Social Media for Competitive Advantage
CP / Trademarks
In today's changing marketplace, smart brand owners are recognizing that growth, innovation and competitive advantage can't come just from within, even if they can afford it. As a result, strategic partnerships for product development have become the trend. Whether those products are developed by licensees, co-packers, or marketing partners, they offer brands the ability to grow and engage consumers beyond their own core categories, manufacturing capabilities, and capital budgets. Stephen Reily will present strategic thinking on Innovation among Fortune 100 companies and case studies on new product launches where licensing and social media was used to achieve competitive advantages for a brand's core business.
Stephen Reily, IMC Licensing
The Year in Copyright Law
HT / Legal
This workshop will provide an update regarding the current state of protecting and distributing digital data. This workshop will continue the series that discusses the current and future state of Content Protection and Distribution. It describes licenses and unique terms for those licenses associated with protecting digital content. It will also address new technologies that protect digital content and discuss court cases and new laws (domestic and international) related to Content Protection as well as law enforcement activities.
Jim Burger, Partner, DowLohnes
Don Drinkwater, Bose Corporation
Now Wait a Minute…I Thought that Patent Was Mine!
HT / Legal
Focusing on our current business environment which encourages collaboration and joint research and development, a panel of patent attorneys will discuss: 1) provisions of the America Invents Act and court decisions such as Stanford v. Roche in application to employer's rights to employee's invention; 2) circumstances under which an employee may have a duty to assign his invention; 3) specific issues in connection with inventions originating from research funded by the Federal government; and 4) IP rights in inventions created under collaborative agreements.
Kate Berezutskaya, Morgan Lewis Bockius LLP
Carmela DeLuca, Bereskin & Parr LLP
Sean Jauss, Solicitor & Head of Legal Team, Mewburn Ellis LLP
Robert (Bob) Smyth, Morgan, Lewis & Bockius LLP
Interpreting Royalty Rate and Licensing Trends to Protect Your Position
International / Valuation
Licensing professionals across all industries can gain competitive insight and adaptive strategies from license agreements developed and executed during the past decade's market conditions. Supplementing the LES Royalty Rate Surveys, this workshop will present statistics garnered from investigating tens of thousands of market licensing agreements in the pharmaceuticals, software, consumer products, telecommunications, and chemicals industries with effective dates spanning 2001 to present. The presenters will discuss trends in international licensing, agreement payment structures, and exclusivity for each industry and will also compare and contrast these points across and between industries.
Christopher Desmond, Ceteris
David Jarczyk, ktMINE
Dwight Olson, EXEN Technology Holdings
"Fodor's" for Research Collaboration Explorations - Introduction to and How to Use the Newly Available Researcher Guidebook
Just as travelers find value in learning from more experienced explorers by using "Fodor's" travel guides, wouldn't it be nice if researchers in our organizations had a similar tool to help them navigate the peaks and valleys of collaborative research? This session introduces a new Researcher Guidebook which helps researchers understand both sides to better prepare for institutional-industrial collaboration, both answering their central questions and identifying the unique issues involved. Will you send your explorers off on their next collaborative excursion without a roadmap and hope for the best? Or will you equip them with tools that enable success?
John McEntire, Pacific Northwest National Laboratory
T. Allen Morris, Virginia Commonwealth University
Rebecca Silveston-Keith, Lexmark International, Inc.
Trade Secret Protection in China: How Not to Do an NDA
International / Legal
Many commercial transactions with PRC companies start with the signing of a NDA in order to share confidential business information. At this early stage the foreigners often use their standard form NDA. Such NDAs usually lack the PRC contractual formalities and do not provide the evidence necessary for enforcement. The enforcement rate for such NDAs is quite low. The workshop will discuss the basics of trade secret protection in the PRC, the litigation system and the rules and the type of evidence necessary for enforcement. Finally there will recommendations on how to prepare an NDA for the PRC.
Paul Jones, Jones & Co.
Rui Wang, King & Wood Mallesons
Downstream Value Killers in License Agreements
LS / IUGI
Certain license terms can de-value licensed assets. Naturally, deal makers focus on economics and other deal terms that matter. But too often both academic technology managers and corporate licensing executives overlook terms that can negatively affect value downstream. This panel is compiled of legal, finance, and business development leaders who will expose and explore deal terms that kill value.
Louis Berneman, HealthCare Royalty Partners
Chris Cox, Cadwalader, Wickersham & Taft LLP
Todd Davis, HealthCare Royalty Partners
Matthew Raymond, Rush University Medical Center
Mayo v. Prometheus - Its Implications to Personalized Medicine and the Life Sciences
LS / Legal
In this unanimous decision, the Supreme Court departed from its long-standing precedent that section 101 of the patent statute should be interpreted broadly in favor of patent eligibility. Instead, the Supreme Court appears to have conflated 35 U.S.C. § 102, which requires patent claims to be novel, and 35 U.S.C. § 103, requiring claims to be nonobvious into the patent eligibility analysis under § 101 and held that Prometheus' dosing process is not eligible for patent protection because the process is effectively an unpatentable law of nature. In this workshop, we will evaluate the effects of this decision may have on licensing personalized medicine and life sciences innovations.
Patrick G. Gattari , Partner, McDonnell Boehnen Hulbert & Berghoff LLP
Michael Henry, Athena Diagnostics
Andrew W. Torrance, Professor of Law, University of Kansas
2-K - Hot Topic
The Role that the i4i Supreme Court Decision played in Creating a Tipping Point in Patent Values
Tell the i4i vs. Microsoft litigation story complete with Amicus Brief strategies relating to the Supreme Court Hearing. Focus on the Supreme Court question to "change the standard used to invalidate patents from the long standing clear and convincing standard to a preponderance of evidence standard."
Loudon Owen, Chairman, i4i
Michael Cannata, Director, i4i
Paul Cannata, Managing Director, Patent Monetization Inc
Tuesday, October 16
Workshop Session 3
2:00 pm - 3:15 pm
Are We Close to the Finish Line on Biofuels At-Scale Acceptance? Where's the Opportunity for Sustainable Growth?
Edna Vassilovski, Patent Attorney, Stipkala LLC
Thomas D. Foust, Ph.D., Director, National Advanced Biofuels Consortium,
National Renewable Energy Laboratory
Matthew Rappaport, Managing Director, IP Checkups
W. Wade Robey, Ph.D., Senior Vice President and Chief Technology Officer, POET
Monetizing Assets through Brand Licensing
CP / Trademarks
This workshop includes an interactive panel discussion with cross industry experts addressing topics such as: The benefits of brand licensing; Growth potential; Brand/Property recognition; R&D/innovation; Emerging market expansion; Selecting brands as potential brand licensing targets; What is the value proposition for licensee and licensor?; Strategies that the licensor can use to protect the brand; Key Deal Terms; Management of a brand licensing program - internal or external?; and Setting expectations within your company.
Van Araujo, Viacom International Media Networks
Peter J. Canalichio, Licensing Brands, Inc
Juli Saitz, Managing Director, FTI
Robin Sitver, Johnson & Johnson Consumer Products Company
Leveraging Your Patents: Unlocking the Value of Your Intellectual Property Assets
As we transition into the knowledge economy, intellectual property assets play an increasing role as the basis for value. The panel will explore navigating the complexities of patents and how the role they play requires special expertise. For large and small portfolios, the knowledge and skill to narrow efforts to the most valuable IP is essential to the IP management process. Moreover, as advanced systems increasingly integrate technology from a host of industries, addressing the intangible rights of the original developers is not easy. Establishing the freedom to incorporate new ideas and technology is important along with understanding the risks.
Kevin Spivak, Greenblum & Bernstein, PLC
Bruce Bernstein, Greenblum & Bernstein, PLC
William C. Elkington, Senior Director, Intellectual Property Management, Rockwell Collins
Ian D. McClure, IPX International
How New Approaches are Successfully Reinventing the Business of University Research Commercialization
HT / IUGI
Discovery research at our universities is the backbone of innovation, which is crucial to economic and social well-being. However, public investments in science and technology research generally show poor commercial results. The problem is not the lack of promising discoveries. It is that the traditional innovation ecosystem does not support translation of these discoveries into beneficial products and services. This workshop will explore three new models of aggressive commercialization of basic research discoveries that address the needs of the innovation business, maximizing returns and creating value for licensors, licensees, and the public. Presenters will illustrate how their unique, hybrid organizations enlist broad industry and academic involvement and stimulate downstream technology development, while supporting local and national economic development goals.
Michael Martin, Tech Transfer Associates Inc
Dr. Michael May, Canadian Centre for Regenerative Medicine
John Molloy, PARTEQ Innovations, Queen's University
Patent Transactions in Transition: How Licensing and Sales are Defining a New Landscape for Assets and Performance
International / HT
Defining a patent transaction is not as simple as it was. No longer does monetization mean simply out-licensing or litigating for damages. This workshop will look as the evolving patent transaction and its landscape, how it has changed and where it is going, and how patent licensing professionals can participate. This session also will look at identifying assets, measuring performance, and mitigating risk. Four seasoned IP deal experts from Canadian and U.S. businesses and financial institutions discuss how they identify, facilitate and structure IP transactions that make sense to companies in a wide variety of industries.
Bruce Berman, Brody Berman Associates
Daniel Henry, WiLan
Myron J. Kassaraba, Partner, Strategic Advisory & Transactions, Pluritas
Sanjiv Samant, Managing Director and Head of the Canadian Technology, Media & Telecom Investment Banking practice, Canaccord Genuity
Advanced Negotiations: A Walk on the People Side
This workshop will demonstrate that given all the same facts, differing perceptions can drive dramatically different negotiation outcomes. Since individual and team psychology shape our perceptions, they drive how our choices are made, decisions formed and how we negotiate. Participants will learn how to recognize the psychology that they, their team and the other side bring to negotiations and how to choose and apply an innovative tool and method to create better results and terms, reduced conflict and more effective relationships. The workshop will begin with an introductory presentation followed by a highly interactive session with the speaker, panelists and the audience.
Robert Fisher, Fisher Leadership Strategy Execution
Sandeep Agarwal, Tessera
Cheryl Cejka, Pacific Northwest National Laboratory
Lenny Terry, University of Florida
Top 10 Court Decisions of 2012 Affecting Licensing
Licensing in 2012 brings new and unique challenges due to a variety of changes in law, policy, and procedures. This workshop will highlight recent changes in US law, and changes in US government antitrust policy, all of which will impact licensing in 2012 generally, and the drafting of clauses for license agreements specifically. It will also provide an overview of changes in connection with US patent law reform and in connection with pending cases in the US Courts.
Russell Levine, Kirkland & Ellis LLP
The Ultimate Buyer: Big Pharma's View of M&A
LS / CP
With a contracted outlook for IPOs, reluctance of Venture Capitalists to fund early development, limited Foundation dollars, scarce supply of private equity for private companies, and not enough High Net Worth individual investors to go around, who hasn't targeted Big Pharma's M&A Groups? Hear from the experts who THEY target, current views on deal constructs and case examples of the various ways to make both sides feel "happy."
Christine Fischette, Griffin Securities, Inc.
Andrew Forman, Ernst & Young
Tariq Kassum, Director, Corporate Development, Takeda Pharmaceuticals International
Kevin Lewis, Managing Director, RBC Capital
Opportunities from Discovery and Development Pipeline Gaps in Japanese Pharma Companies
LS / SA
Pharma companies worldwide are not able to fill their development pipelines from internal discovery because of low R&D productivity and finite budgets. In addition, many companies are moving away from primary care toward the developmental and commercial efficiencies of specialty markets. Many markets are also experiencing pricing constraints as healthcare budgets rise disproportionately with aging populations. Japan is no exception. This panel will discuss the dilemmas faced by domestic Japanese companies going forward, the development limitations foreign-affiliated companies face with their own limited infrastructures in Japan, and the resulting partnering opportunities afforded to emerging companies, Japanese and Western alike.
Thomas Burger, Medical Corporation International
James Foley, Aqua Partners LLC
Kyle Murphy, KMG Japan
Ichiro Nakatomi, NanoCarrier Co., Ltd.
Academic and Industry TTOs: Strategy and Structure Challenges in Relationships in Light of AIA and Recent Court Rulings
Due to recent enactment of the America Invents Act and recent cases involving IP rights and interests among academic/broker licensors and commercial industry licensees, TTO personnel need to take a hard look at their licensing practices and determine how such legislation and court rulings affect current and prospective TTO licensing practices and relationships with licensees. Additionally, what TTO structure and metrics indicate success for a TTO in light of such legislation and cases. The panelists will represent the academic, industry, legal and licensing broker segments from various industry sectors, including bio-medical and high technology.
Halina Dziewit, Patton Boggs, LLP
Alan Paau, Cornell University
Barbara Sawitsky, Director of Patents & Licensing, New York Blood Center and LF Kimball Research Institute
William Tucker, Executive Director of Research Administration and Technology Transfer, Office of Technology Transfer at the University of California, Office of the President (UCOP)
Robert Ziemian, Associate, Patton Boggs
Valuation for Financial Reporting and its Impact on Licensing Deals and Patent Litigation
Valuation for financial reporting requires that acquired intangible assets be valued for financial reporting purposes. This session will provide an overview of Fair Value Accounting Standards and intangible asset valuation. This session will also demonstrate how to find fair value disclosures in company's 8-k and 10-ks using the SEC's EDGAR database. This session will demonstrate how fair value for financial reporting disclosures can be researched to understand what licensing terms your licensee or licensor may want. This session will demonstrate how fair value for financial reporting can make or break your patent damages case whether you are a plaintiff or defendant.
Kevin Besikof, Lurie Besikof Lapidus & Company, LLP
Jiaqing "Jack" Lu, Applied Economics Consulting Group, Inc.
Tuesday, October 16
Workshop Session 4
3:45 pm - 5:00 pm
IP and Capital Strategies for Oil Companies in View of Current Urgencies
CEEM / International
Around the world, societies now expect oil companies to operate if the business activities have a wider and positive ripple effect to make their business truly clean and sustainable. Demand for petroleum may decrease in the developed countries over the next decades. However, the consumption growth in emerging economies will more than compensate for those declines. Regional economic development, the creation of new jobs, and strengthening local communities are becoming pressing needs of the time and have become imperatives for successful and sustainable hydrocarbon businesses.
Paul Germeraad, President, Intellectual Assets, Inc.
Rashid Khan, Aramco
Leila Vandenabeele, Total
Anthony Venturino, Novak, Druce + Quigg, LLP
360 Degrees of Licensing - Recent Case Studies
CP / Trademarks
Anderson Cooper relies on providing up-to-date facts, perspectives, and opinions for the success of the CNN's acclaimed news program “360”. Likewise, our panel of experienced licensing professionals uses a wide variety of '360 degree tools' to identify and develop licensing programs to support some of the world's most successful brands. Specifically, learn how Motorola Mobility, Church & Dwight, owners of the Arm and Hammer brand, and Jarden Consumer Products, makers of Sunbeam and Oster appliances, execute on both technology and brand opportunities to sustain the growth of their respective businesses through licensing. Case studies will provide insight into how collaborative partnering impact brand strategies, technology searches, shared manufacturing networks, distribution relationships, and other '360' considerations. Learn how these professionals have re-written the definition of the traditional licensing business model and updated the list of requisite best practices.
You'll be exposed to how Motorola's 'license bundle' paved the way for a new 'cross border' new business opportunity, how Jarden Consumer Solutions joined forces with a competitor in the consumer appliance category to create a 'win-win' licensing program, and how Church & Dwight approaches technology innovation leading to the further growth of the Arm & Hammer portfolio of products. Pros and cons and benefits and challenges of these licensing business models will be discussed.
Corrine Sukiennik, President, C-Synergies LLC
Carlos Coroalles, VP of Licensing, Jarden Consumer Solutions
Tammy Talerico-Payne, Director of Brand Licensing, Church & Dwight, Co.
Vera Tsekeris, Director, Trademark Licensing, Motorola Mobility
Comparison of Royalty Rates, Deal Terms, and Best Practices across the CEEM, High Tech, and Life Sciences Sectors
CEEM / HT / LS
This workshop will present, compare, contrast, and explain key findings from the LES royalty rate and deal terms surveys from the CEEM, High Tech, and Life Sciences sectors. Intellectual property developed for one industry or set of end-use applications often has use in other industries and other end-use applications. This workshop will give licensing professionals an understanding of how value is assigned and shared in transactions across different industries within the context of upfront and milestone payments, royalty rates, and deal terms. This workshop will demonstrate how market characteristics for the 'products' arising from the intellectual property affect deal terms.
Hal Craig III, Trout Creek Consulting, LLC
Bob Held, TeleCommunication Systems, Inc.
Jiaqing "Jack" Lu, Applied Economics Consulting Group, Inc.
Deni Zodda, Medignostica, LLC
Licensing Strategies in the Cloud Computing Era
The rise of cloud computing presents unique licensing issues - for example, who is the appropriate licensee or even infringer under a divided infringement analysis? The workshop will provide a background of the current legal landscape and identify real life concerns, and propose strategies, including identifying the appropriate party to license, to maximize the value of the IP taking potential liability and value into account. The workshop will also discuss how divided infringement may be used to minimize liability, if not defeat, claims of infringement, and unique wrinkles in typical licensing provisions, including indemnification and enforcement provisions.
Branko Pejic, Greenblum & Bernstein, PLC
Claus D. Melarti, Senior Director, Intellectual Property Counsel, Sony Corporation of America
Kevin Spivak, Greenblum & Bernstein, PLC
Open Access and Open Innovation Approaches to Drug Development
This session will delve into the nuts and bolts of how several biomedical research organizations (DNDi, SGC and the NIH) manage projects aimed at developing and commercializing drugs to treat neglected diseases. The use of non-traditional research consortia deal structures, the harnessing of e-infrastructure and IT tools to allow sharing of research results and the implementation of innovative intellectual property strategies and unconventional licensing approaches are being utilized. The goal is to provide attendees with an understanding of what is meant by the terms open source, open access and open innovation and to provide insight into how these concepts are used in drug development.
Aled Edwards, Structural Genomics Consortium (SGC)
Jean-Pierre Paccaud, Drugs for Neglected Diseases Initiative
Lili Portilla, National Center for Advancing Translational Sciences, US National Institutes of Health
John Shen, Program Manager/Project Team Leader, Therapeutics for Rare and Neglected Diseases program (TRND), National Center for Advancing Translational Sciences (NCATS), U.S. National Institutes of Health (NIH)
Patent Wars Go Global: Multinational Litigations and their Effect on the Changing IP Landscape
Legal / HT
The Apple v. Samsung patent litigation quickly spread to nine different jurisdictions around the world. It is not alone. The use of multi-national patent litigation is gaining in popularity as a litigation tactic. It is used to gain strategic advantage through fast injunctions and fast decisions in key markets outside the United States to leverage a faster and more favorable worldwide license agreements. Senior licensing experts will discuss strategies and tools such as: What factors are driving the increasing use of multi-national litigations?, What role does the ITC play?, Why litigate in some jurisdictions but not others?, How do evidence requirements change?, and What are the pitfalls awaiting the unwary litigation tourist?
Julia Elvidge, President, Chipworks
Elliot Papageorgiou, Partner, Rouse
Graham Gerst, Managing Partner, Global IP Law Group, LLC
Alex Wilson, Partner, Powell Gilbert LLP
The AIA's Post-Grant Proceedings as Effective Valuation and Negotiation Tools
Legal / LS
Key provisions of the 2011 U.S. America Invents Act, including widely expanded post-grant validity challenges, significantly impact patent valuation, and will affect virtually any post-AIA collaborative deal involving U.S. patents and applications. The AIA provides for contesting validity on any ground available in district court, in high stakes inter partes administrative proceedings, with an agency decision expected within one year. It will be critical for life science innovators as well as potential partners and competitors to consider the impact of the new post-grant procedures on the valuation and vulnerability of patents that are core assets at an early stage.
Kenneth Burchfiel, Sughrue Mion, PLLC
Renita Rathinam, Sughrue Mion, PLLC
Marc Sedam, University of New Hampshire
Repurposing Rx on Purpose - Unclogging the Pharma Pipeline
LS / IUGI
Life sciences business faces big problems. ROI in negative territory discourages investment in early stage technology and companies, even as pharma relies more on outside R&D. Repurposing can go beyond the Viagra 'accidents': Mr. Kahn will show how philanthropy can fund rapid deployment of new uses for 'old' drugs. Mr. Warden will describe how BV's COSS, a Big Data technology, can systematically track all drugs, diseases, human targets and adverse events to produce additional product indications for its pharma clients while discovering its own proprietary cures for cancers, CNS, and AI disorders. Non-profits and for-profits can produce repurposed cures quickly.
Edward Kahn, Partnership for Cures
John Warden, Biovista
Connecting Risk and Reward: Contingent Value Rights in Life Science Deals
LS / SA
Contingent value rights (CVRs) are emerging in deals throughout the life sciences sector. Although CVRs are not new, their recent popularity in the life sciences suggests that uncertainty prevails in asset valuations. This workshop will explore strategic and tactical issues of CVRs vs. more traditional acquisition instruments.
Diane Kalina, PDC Biotech GmbH
Imtiaz Mawji, BioEnsemble
Dan Vickery, BioEnsemble
10 Common Mistakes in IP Valuation / Damages Reports
Valuation / Legal
The main reason for producing an IP valuation report is to convey important information. This enables effective and efficient communication, which sets the stage for fruitful negotiations. If the information conveyed is flawed or inaccurate, however, a successful negotiation is more difficult to obtain. To counteract these problems, this workshop provides participants with information on the ten most common mistakes found in valuation and infringement damages reports. Real world examples are presented along with an assessment of a more appropriate or accurate method for dealing with the issue. Participants will also learn how to estimate the potential impact of these errors.
David Drews, IPmetrics LLC
Daryl Martin, IPmetrics LLC
Fernando Torres, IPmetrics LLC
4-K - Hot Topic
The SBIR/STTR Program: Funding Your Company Without Giving Up Equity and Obtaining Government Sole Source Opportunities
The session will include an overview of the SBIR/STTR Program including some of the recent changes that have resulted from the reauthorization bill will be presented by Jacob N. Erlich. Details of the program from the view of the Department of Defense, and in particular the Navy, and further relevant aspects of the reauthorization bill presented by John Williams Director of the Program for the Navy. In addition, at least one successful recipient of the program will discussed. This discussion will provide the attendees with helpful hints about receiving an award.
More specifically, The Small Business Innovation Research (SBIR) program is a set-aside program for domestic small business concerns to engage in Research/Research and Development (R/R&D) that has the potential for commercialization (commercialization meaning potential use by the government and leans heavily on private use as well. The STTR (Small Business Technology Transfer) program, a sister program with the SBIR program, is a partnership between a small business and a research institutions such as universities.To date, over $16 billion has been awarded by the SBIR program to various small businesses.
Jacob N. (Jesse) Erlich, Patent Attorney, Burns & Levinson LLP
John Williams, Director of the Program, U.S. Navy