Community Conversations

High Tech Sector Quarterly Seminar

Date & Time: Wed, Feb. 20th, 9:00 AM PST / 12:00 PM EST
Topic: The Qualcomm Technology Licensing Program and the Licensing of Standard-Essential Patents

Presenter: ERic Refischneider, SVP & GM QUALCOMM Incorporated

Presiding: Shawn Ambwani, HTS Secretary

Call Info: 877-785-4761  Participant Code: 87335413#

Special Note for CLE Credits: Click here to sign-in at the start of the call and sign-out at the conclusion of the call. CLE will be sent within a month of the program date.

TBD – WOMEN IN LICENSING COMMITTEE

Topic: Finding Work/Life Balance in Today's Real World

Presenters: TBD

Registration information will be available closer to the call date.

December 11, 2012 – Industry-University-Government Interface
11:00 AM - 12:00 PM ET

Topic:
Open Innovation and How Industry, Universities and National Labs Can Work Together

Panelists and Moderator:
Dr. Eugene Buff, Founder and Lead Consultant, Primary Care Innovation Consulting
John McEntire, Commercialization Manager, Battelle/Pacific Northwest National Laboratory

Open Innovation - introduction, definitions and lessons to learn.
Open Innovation has been a buzz word combination for quite some time now. Almost everybody in the industry is using these words and claims to be practicing what's behind them. But is this for real? Join us at this webinar to hear from the Open Innovation practitioner about actual state of affairs and what it means for collaborations between industry, research institutions and government entities. We will also discuss examples and brief case studies of Open Innovation projects both in industry and federal agencies.

Register online here.

November 27, 2012 – High Tech Sector
1:00 PM - 2:00 PM ET

Topic:
The Path to Creating, Managing and Extracting Value from IP in Nanotechnology

Panelists and Moderator:
Luca Escoffier, CEO, Usque Ad Sidera, LLC
Lance Criscuolo, President, Zyvex Technologies
Sarah Rouse Janosik, Corporate Intellectual Property Counsel, Onyx Pharmaceuticals
Efrat Kasznik, Founder & President, Foresight Valuation Group, LLC; Lecturer, Stanford Graduate School of Business
Kenneth A. Epstein, Principal, NewCap Partners, Inc.

Presentation: Available for Download Here

When bringing the results of Nanotechnology R&D to market, companies and universities run into challenges related to intellectual property rights and other legal and regulatory issues. An effective commercialization of Nanotechnology innovation requires basic knowledge of all the relevant issues and a well-defined strategy, while the absence of such knowledge and strategy can be detrimental to the commercial potential in this emerging field.

This session will explore the most critical challenges that a company or university faces when commercializing Nanotechnology IP in the US and around the world. Featuring an international, cross-disciplinary group of experts, the panel will discuss the unique challenges related to the management, commercialization and value creation associated with Nanotechnology IP, as the industry follows the path from early stage to maturity.  The focus will be on providing a practical guide to managers and scientists at universities and companies, providing them with industry specific basic knowledge of the prosecution, strategic use, valuation and licensing of Nanotechnology IP. We will also cover topics related to Nanotechnology investment, university-industry collaboration and environment health and safety. 

August 15, 2012 – IUGI

Time: 1:00 PM - 2:00PM EDT

Topic: Regulatory Language in Agreements

Presenters: Thierry Musy-Verdel, Genetech, Inc; Stefani Shek, Stanford University; Ida Shum, Lawrence Livermore National Laboratory

Presentation: Available for download here

Regulatory language is increasingly showing up in all types of agreements. This language comes from government agencies, companies and non-profits (including universities), and addresses a wide variety of topics from anti-kickback concerns to export control. How do you handle such language? When it isn’t even relevant to the agreement? When it conflicts with the regulatory language that you require? Does anyone have any successful ways to limit its inclusion in their agreements? When the language is included, how do you ensure compliance? What sort of regulatory language do you require in your agmts and why?

Register online here.

August 13, 2012 – Cross-Sector Clean Tech Committee

Time: 3:00 PM - 4:00PM EST

Topic: Alternative Fee Arrangements

Presenter: Jake Holdreith, Robins, Kaplan, Miller & Ciresi L.L.P

Presentation: Available for download here.

This session will include strategies to identify components of value that can support alternative fee arrangements along with structures for aligning compensation with the interests of all parties. Practical tips will include specific terms that may be significant for alternative fee arrangements, lessons learned the hard way, and pitfalls to avoid.

 Register online here.

May 22, 2012 – High Tech Sector

Time: 1:00PM

Register online here

Topic: Getting Collaborative Innovation to Market: IP & Business Considerations in Strategic Ventures

Presenters: Tom McThenia (GrayRobinson, P.A.) & Keith Lowe (Orlando Health Inc.)

Tom McThenia, Jr. is a leader in the Intellectual property, Technology and Internet Practice Groups.  He is a registered patent attorney and Certified Licensing Professional (CLP) who handles all areas of intellectual property, including patent and trademark prosecution and opinion work, copyright and trade secret matters.  Mr. McThenia also works on licensing and commercial transactions related to the structuring and negotiation of licensing, development and distribution of commercial transactions for intellectual property, technology, software, Internet and entertainment assets. For example, Tom recently assisted a client with the negotiation and structuring of the development and implementation of IT networks and broadcast technology for a new professional sports arena.

Mr. McThenia has divided his career between private law practice and roles as in-house counsel for two global organizations.   In private practice, he has represented a wide array of clients including multi-national corporations, non-profit organizations, universities, start-up and emerging growth companies, technology and Internet companies and individual entrepreneurs practicing in Florida, the Research Triangle Park, NC area and Virginia.  As in-house counsel, Tom served as patent and technology counsel for The Coca-Cola Company in Atlanta, as well as counsel for Campus Crusade for Christ, International at its international headquarters in Orlando.   In these roles, he has handled domestic and significant international matters, such as handling global portfolios and licensing of patent, trademark and copyrighted assets, implementation of a world-wide corporate ERP software system, construction of an European manufacturing plant and European headquarters and complex technology development projects.  

Tom speaks frequently and previously served as an adjunct professor of law at Campbell University School of Law in North Carolina.

Keith Lowe currently serves as the Chief Commercialization Officer for Orlando Health, Inc., one of the largest healthcare systems in the nation. In this capacity he oversees innovation and commercialization for the eight hospital system. He has also overseen alliance relationships with some of the largest and most respected companies in American including Disney, Nike, GE, Johnson & Johnson, Philips, AGFA and Stryker. As an attorney with over 25 years of experience, Keith has represented individual and business interests in a wide variety of both legal and business concerns.

Keith is a graduate of the Samford University, Cumberland School of Law where he received both his JD and MBA. In addition to his corporate experience, he has also served as an adjunct faculty member at several Florida colleges where he taught managerial finance, real property law and paralegal studies. Keith and his wife, Cindy, live in Winter Park, Florida and have two adult children.

Note New Date: May 8, 2012 – WOMEN IN LICENSING COMMITTEE

Time: 2:00 PM - 3:00 PM ET

Register online here

Topic: The Art and Science of Negotiating – How to get all you deserve
Negotiating can be intimidating for anyone. As women, we often do not ask for all the we deserve and then are left with having to accept what we get. Join us for helpful tips, advice, sharing of wisdom, and so good data-driven research regarding this skill. By the end of this webinar, you will be ready to negotiate for anything.

Presenter: Jennifer N. Hiatt, The Spelman & Johnson Group
Jennifer Hiatt earned her B.A. in English and her M.Ed. in Higher Education at Arizona State University. After a 15 year career in higher education at California State University, Chico, Arizona State University and New Mexico State University, Jennifer joined SJG in early 2008. Jennifer served as Secretary and then President of the Association of Inter-Mountain Housing Officers and was a faculty member of the National Housing Training Institute.  Her current responsibilities include search management, client and candidate relations, and new business development.

Jennifer recently relocated to Colorado and is enjoying exploring the mountains with her three dogs. She is looking for new volunteer opportunities with an animal rescue or shelter. In her free time, she enjoys hiking, reading, and, most recently, cutting wood for the winter.

February 28, 2012 – High Tech Sector

Time: 2:00 PM - 3:00 PM EST

Topic: Trademark Licensing
An overview of issues concerning trademark licensing and related registration issues, focused on products not originally sold in consumer markets, including those in aerospace and transportation, industrial products, software, and other goods.  How to protect your marks and get the most value from them, allowing for merchandising and improving company and product good will using licensing.  Learn about extending your brand by moving into new and different markets, while protecting priceless good will.

Presenter: Susan Goldsmith (SorinRoyerCooper, LLC)
Susan Okin Goldsmith is a Partner of SorinRoyerCooper. Her practice focuses on intellectual property, including global registration and enforcement strategy, domestic and foreign trademark clearance and registration, infringement matters, and intellectual property licensing. Susan handles a wide variety of matters involving computer hardware and software vendors and purchasers, software and other technology licensing, e-commerce and internet use and abuse, and issues involving international trade. Susan also has an extensive track record with respect to corporate and commercial business transactions, joint ventures and start-ups, including complex mergers and acquisitions and venture capital financing, handling substantial licensing and other intellectual property and technology issues.

Susan is a long-time member of the Licensing Executive Society (LES) of the US and Canada, where she serves on the leadership committee for the High Tech Sector as Liaison to LES-International. She serves as the vice-chair of the Software Licensing Committee and participates on the Aerospace and Transportation Committee,and Consumer Electronics Committee, as well as with the local NJ Chapter. She is a Certified Licensing Professional of the LES.

Susan will be featured in the World Trademark Review 1000 for 2012 - The Definitive Guide to Trademark Legal Services. Susan was recognized in the CSC Trademark Insider 2007 Annual Report, issued April 2008, with a Top Trademark Attorney Award and a national ranking of #19 in the nation for the year 2007, by number of trademark applications filed. In 2009, Susan again earned national recognition as a Top Trademark Attorney, with an individual national ranking of #20, for the calendar year 2008. Most recently she was selected to the 2012 New Jersey Super Lawyers list.

Susan is a 1986 graduate of the Rutgers School of Law – Newark and a graduate of the University of Pennsylvania, Wharton School of Business, where she majored in Marketing. Immediately prior to joining SorinRoyerCooper in June 2011, Susan was a partner at Duane Morris LLP. Earlier in her career she served as judicial clerk to the Honorable William H. Walls, then of the New Jersey Superior Court and now of the United States District Court of New Jersey

As a service to our participants from the legal profession, LES provides assistance in securing CLE credit for educational activities. LES is an approved online MCLE/CLE provider by the State Bars of California and Illinois.  Details on how to obtain the credit will be provided at the start of the webinar.