LES Houston chapter presents:
IP & Licensing Basics:
A One-Day Review
Houston Bar Association
University of Houston Intellectual Property
& Information Law Institute
This one-day course provides an overview of the basics of intellectual property (IP) and licensing. It builds a practical understanding of core IP and licensing concepts from both the business and legal perspectives. Each topic, taught by both legal and business experts working as a team, is divided into five sections with examples, exercises, and interactions between instructors and fellow students. Topics include an introduction to IP, the basics of IP commercialization and licensing, determining reasonable license fees and royalty rates, managing risks, and a licensing case study.
Who should attend the LES IP & Licensing Basics course
There is no prerequisite to attend this course. It is designed for those with no prior experience in licensing, including students, entrepreneurs, non-IP attorneys, finance professionals, business development professionals, and those considering a career in licensing.
Why You Should Attend
There is more emphasis now than ever before on commercialization, company formation, and job creation from the billions of dollars invested annually in research and development at America's universities, government laboratories, and small businesses.
Whether you are an entrepreneur in the making, a principal investigator or student at any level who wants a better grasp of the basics, or an aspiring technology transfer professional, this course will give you the tools you need to understand and participate effectively in the process of protecting IP and facilitating its commercialization.
The course is divided into five modules:
Module 1: Introduction to IP
Introduction to the different types of IP including patents, trademarks, copyright, trade dress, and trade secrets.
Module 2: Basics of IP Commercialization & Licensing
Introduction to licensing, including reasons for licensing, description of licensing agreements, infringement, competition law, and relationship-building.
Module 3: Determining Reasonable License Fees & Royalty
Licensing risks and rewards, different valuation methods (e.g., market, financial, and cost), their pros and cons and royalty structures.
Module 4: Managing Risks
Identifying and managing different types of risk, including confidentiality, infringement, liability, collection of royalties and other fees, and unlicensed competition.
Module 5: License-Negotiation Game
Students put into practice what they've learned by dividing into licensee and licensor teams and then discussing and negotiating terms of a licensing case study, based on both public and confidential information they are given. At the end of the negotiating session all teams report their results and how and why they reached them.
CLE: 6.5 hours of Texas MCLE credit approved
Breakfast: 8:00 am - 8:30 am
Course: 8:30 am - 5:30 pm (approx.)
Lunch: Box lunches are provided
Friday, Sept. 13, 2019
8:30 a.m. - 5:00 p.m.
University of Houston Law Center
4604 Calhoun Rd
Houston TX 77004
Through Monday Sept. 9:
HBA Member: $195
Non-profit institutional members: $120
Starting Tues. Sept. 10:
HBA Member: $245
Non-profit institutional members: $140
Litigator and IP Lawyer
Jonathon Hance, J.D., CLP,is a partner in Bracewell's Houston office, where he serves as both a litigator and an intellectual property lawyer. As an IP lawyer, Jonathon works to protect and monetize his clients’ innovations and protect his clients’ brands across a variety of sectors, including the energy, real estate, and technology industries. He also advises healthcare institutions regarding corporate governance issues and patient data privacy and protection under the Health Insurance Portability and Accountability Act (HIPAA). As a litigator, Jonathon is at home in the court room, where he represents both plaintiffs and defendants and works hard to enforce his clients’ intellectual property rights and data confidentiality rights, to protect his clients’ brands, and to resolve complex commercial disputes in the design and construction, real estate, energy, healthcare, and technology industries.
Jonathon has degrees from Southern Methodist University in Applied Mathematics, Computer Science, and Viola Performance and J.D. from Washington and Lee University School of Law. He is a Certified Licensing Professional (CLP), and he served as a judicial clerk to the Honorable Jennifer Walker Elrod of the United States Court of Appeals for the Fifth Circuit. Prior to the practice of law, Jonathon served as the director of information and technology for a mid-size restaurant company where he actively participated in key technology and business decisions relating to corporate back-end computing services, point-of-sale and point-of-transaction systems and web-interface design. He also served as a mathematical consultant for the Bank of America Private Bank where he developed financial portfolio projection and analysis software using the Monte Carlo method.
Associate (retired 2017)
ExxonMobil Upstream Research Co.
Louise Levien, Ph.D., CLP,retired in 2017 from a career that included a diverse series of assignments at Exxon and ExxonMobil in Upstream Research. During her career she has performed research in Petrophysics, Geologic Modeling, and Visualization, supervised diverse research programs and held several assignments in Planning and Analysis. After working with IP from the scientific side of ExxonMobil for many years, Louise joined the ExxonMobil Upstream Research Company's Commercial, Intellectual Property and Licensing group in 2007. She was responsible for IP processes, the intellectual property aspects of agreements, and licensing transactions impacting ExxonMobil's upstream business.
She holds a ScB degree in Geological Sciences from Brown University and MS and Ph.D. degrees in Geochemistry from Stony Brook University. She is a Certified Licensing Professional (CLP) and co-inventor on two patents.
Senior Managing Director
|Brent Bersin is a Senior Managing Director of FTI Consulting. He has 25 years of experience and focuses his practice on providing financial and economic consulting, damages quantification, valuation and expert witness services to clients in the fields of intellectual property and commercial disputes. Mr. Bersin has been designated and testified as an expert witness in federal court, state court, bankruptcy court, and arbitration matters. He earned his B.B.A. in Accounting at the University of Houston and is a licensed CPA in Texas. Mr. Bersin is also Certified in Financial Forensics by the American Institute of Certified Public Accountants and holds the Certified Licensing Professional credential.
Womble Bond Dickinson (US) LLP
Karthika Perumal, J.D., Ph.D., CLP, is a partner at Womble Bond Dickinson (US) LLP. Her practice involves all aspects of technology law with an emphasis on the protection, licensing, transfer, and acquisition of intellectual property. She advises clients in the energy and healthcare sectors across a wide range of technologies, such as chemicals, oil and gas processing, biotechnology, biomedical devices, and software. She leverages her background and experience to assist clients meet their business objectives at every stage of product development, from early stage funding and product development to licensing and joint ventures arrangements, and other exit transactions. Karthika handles a variety of transactions, including multi-party collaboration, sponsored research, manufacturing, supply, and software development and support agreements. Prior to joining Womble Bond, Karthika served as the associate director for technology development at The University of Texas Medical Branch (UTMB). During her tenure at UTMB, she developed commercialization strategies for several technologies, and participated in the structuring and financing of six startup companies for various pharmaceutical, medical device and medical informatics products. Karthika holds a J.D., magna cum laude, from the University of Houston and a Ph.D. in pharmacology from Baylor College of Medicine, and is a Certified Licensing Professional.
|Kevin Tamm, J.D.,is an associate in the Houston office of Bracewell LLP. He focuses on patent prosecution in the chemical and mechanical arts and also has experience with drafting inter partes review petitions, managing active post-grant cases, and assisting in IP-intensive transactions. Kevin has experience prosecuting U.S. and foreign patents for large corporate clients, universities and independent inventors and is admitted to practice before the USPTO. Kevin held a chemical associate position in an engineering consulting firm after earning his bachelor’s degree in chemical engineering from University of Pittsburgh Swanson School of Engineering. While in law school, Kevin was a legal extern for the Honorable Michael R. Barrett in the United States District Court for the Southern District of Ohio. Kevin lateralled to Houston in 2015 from Indianapolis.
Dell Charles "D.C." Toedt III
Attorney & Arbitrator
University of Houston Law Center
Dell Charles "D.C." Toedt III, J.D.,is an attorney and arbitrator and a faculty member at the University of Houston Law Center. He was formerly a partner and member of the management committee at Arnold, White & Durkee, one of the largest intellectual-property law firms in the U.S., and then vice president and general counsel of BindView Corporation, a publicly-traded network security software company that he helped the founders to start, serving there until the company's successful "exit" when it was acquired by Symantec Corporation. He was the author of, among other things, the first edition of The Law and Business of Computer Software, a one-volume treatise published by Thomson West, as well as the editor of the COMMON DRAFT annotated contract terms. D.C. received his J.D. degree from The University of Texas at Austin, where he was on the editorial board of the Texas Law Review, and where also received his undergraduate degree in mathematics, with high honors. In between college and law school, he served his ROTC-scholarship payback time as a Navy nuclear engineering officer.
For directions to the University of Houston Law Center, use Google Maps.
Online, credit-card registration is used for LES members and non-members. LES members should login to the registration page with their LES online account.
A $5.00 cancellation fee is applied to all refunds. Cancellations are non-refundable after Sept. 10. Substitutions will be accepted. Contact LES at (703) 234-4058 for assistance.
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