LESGN3 by Anita Zakrajsek

Vol. XLVIII No. 1

March 2013

LES NEWS GLOBAL

Highlights

A D V A N C I N G

Meetings

Societies’ News

T H E

B U S I N E S S

O F

New Members

I N T E L L E C T U A L

P R O P E R T Y

Reviews G L O B A L L Y

Showcase Of Activities From 2012 Around The World (ATW) With LES International By Gary N. Keller and John C. Paul

ach year on April 26th, chapters of the Licensing Executives Society around the world hold events under the umbrella of “LES Around The World (ATW).” These events stem from the creation of World IP Day by the World Intellectual Property Organization (WIPO) which chose April 26th, the day on which the WIPO Convention came into force in 1970. The goal of LES ATW is to increase general understanding of what IP really means and offers an opportunity each year to join with others around the globe, to highlight, discuss and demonstrate how intellectual property helps shape our world. Across the globe events are held that bring together intellectual property stakeholders, experts, and novices from within the LES organization and in partnership with other organizations and outsiders. While the overall objective and vision is common, the approach taken by these chapters

is varied ranging from special entertainment events and networking, business plan and innovation competitions, intellectual property seminars, conferences and educational events. The objective of this overview of LES ATW 2012 is to provide a summary of the kinds of activities that are being conducted, some of the outcomes reported, and to provide a resource and reference for future events. LES ATW is a unique event in its outreach to include members and non-members from affiliated organizations and those interested in intellectual property, these events are open to anyone. During 2010 & 2011, LES hosted more than sixty (60) Around the World (ATW) with LESI events, with over 2,000 participants in several countries and local areas throughout the U.S. and Canada. Tom Filarski, Past President of LES states, “Connecting and collaborating

World IP Day 2012 experts from LES Arab Countries: (right to left): Ali Jazairy (WIPO), Gary Keller (Xomix), Andreas Winkler (Boehmert), Heinz Goddar (Boehmert), Omer Hiziroglu (Inovent), Mohammad Shariff (U. Putra) and Raja Saliba (Sughrue).

LES Arab Countries World IP Day 2012, “Patents: from Idea to Commercialization” forum, Saudi Arabia (350 participants).

2012 ATW, continued on Page 3

LES Global News—Highlights

Inside LES Global News Highlights & Legal Updates –Pages 1-7 National Presidents Council –Page 8-10

Society News –Pages 11-20

Meetings & Delegates –Pages 22, 24-28

New Members & Leadership –Pages 21 and 23 Book & Movie Reviews

Quick Links: www.lesi.org www.lesi.org/les-nouvelles www.lesi.org/les-societies www.les-europe.org www.les-asiapacific.org

Call For Content We request contributions from all societies and individuals about important events, changes in the law in your country or region, conferences, annual meetings, board changes and the like from your society. You can submit articles or announcements to the editor or use the form on the website at the following address: www.lesi.org/les-societies/lesglobal-news/submission-form. Deadlines: January 15, April 15, July 15 and October 15 Editor: Larry Plonsker, 10580 Northgreen Dr. Wellington, FL 33449 • Email: editor@LESI.org

Changes And Challenges Of Turning 40 On The Road To Rio and Beyond By Kevin Nachtrab, President, LES International

n this, the 40th year of the founding of LES International, it is fitting that we will be convening our Annual Convention in Rio de Janeiro, Brazil on 7-10 April 2013 under the theme “Changes and Challenges: Commercializing Innovation in a Changing World.” The challenges posed in this age of austerity and increasingly-rapidly changing communications and business, means that the old axiom, “adapt or die,” has never been more relevant. To this end, 2013 sees LESI innovatively adapting itself and the way it does business to help carry LES forward into its next forty years and beyond: “Commercializing” its innovations, if you will. And, as the theme of our Annual Conference suggests, LESI believes that by actually “commercializing” these innovations we will be able to rise to the challenges that LESI and all other professional organizations are facing today in order to continue to bring the maximum value possible to LESI Members worldwide and the various LES Member Societies of which they are members in this Changing World. For one, LESI is streamlining its organization and administration in a manner that will enable us to better address the needs of our members both now and for years to come. We are moving to a virtual office: More matters will be handled electronically. Year 2013 also sees the first full year of Chris Katopis as our new Executive Director. Chris will be overseeing the LESI administration as LESI transitions to a virtual office and into its new year. We are adapting the means and developing vehicles for delivering educational and other content to members in ways that are more meaningful to them at lower costs. LESI is increasing its online content and moving to develop webinars and other electronic educational materials which can be accessed easily and economically by those members who, due to challenging economic times, find themselves unable to travel the often long distances required to attend Annual Meetings. To this end, the LESI Industrial Professional and Regional Committees are all experi-

Licensing Executives Society International

LES Global News—Highlights

menting with webinars of various formats, to examine which format is the most effective globally. LES Global News has already been moved into an entirely electronic format since last year, permitting members to access it on their “desktop” when and where they want. This approach will permit members to access those educational offerings of their choice without the necessity, and attendant costs, of travel. Further, we are adapting our approach to indeed deliver more for less and make LESI an even better value proposition for its members worldwide. An example is that the long range Planning Committee has started an aggressive Knowledge Capture and Management Program. Other examples include the continuing efforts to tag and otherwise make les Nouvelles articles more accessible and searchable. But, by no means, does this suggest that we will lose the skill or stop providing the opportunity to provide each member with quality professional education and “f2f” contact time and atmosphere, so essential for building those all-important professional and personal networks, which are the hallmark of LESI and the licensing profession. Indeed, for that, one need look no further than the LESI website for a listing of the still copious LES Meetings and Events that are being held around the world by both LESI and its Member Societies, which feature and facilitate networking in the relaxed business atmosphere to facilitate business contacts and dealmaking. And perhaps no meeting will exemplify this principle more than our upcoming Annual Conference in Rio. With keynote addresses by the Honorable Randall R. Rader, Chief Judge of the United States Court of Appeals for the Federal Circuit, and the Hon. Luiz Fux, Justice Minister of the Brazilian Supreme Federal Court, 32 workshops and special appearances by Microsoft IP leaders, the conference offers attendees an impressive line-up of individuals who are not just thought leaders but also implementers. The conference will boast a social program unlike anything that could be offered outside of Rio. The Conference will be held at Rio’s newest 5 Star hotel, the

Windsor Atlantica in Copacabana. The opening reception will also take place at the Windsor Atlantic, where attendees will be serenaded by the soft rhythms of Brazilian Bossa Nova and Chorinho of Maestro Delfin Moreira and his band with a panoramic view of Copacabana beach at dusk. The conference dinner will be held on the Clube Caiçaras, an island inside the Rodrigo de Freitas Lagoon with unparalleled views of the city by night. And being Rio, …well, you just know that we’ll have to samba some. For those who cannot make it to Rio, 23-25 June will see the LES Pan European Conference in the idyllic, peaceful surroundings of the Swiss Alps, at the very same conference center in Davos, Switzerland, that houses the World Economic Forum’s annual “Power Summit.” Based on the theme “The Spirit of Licensing,” the Pan European Conference will present a program that explores the “Blue” and “Green” economies. Keynote and opening speaker will be Gunter Pauli, reporter to the Club of Rome, with his book discussing the “Blue Economy“ with the “Green Car” being the subject of a second keynote address. Key panels will feature members of the WEF Global Action Council on IP discussing the global challenges for the IP system and licensing, including the blue and green aspects of a sustainable economy and how IP portfolios should be managed (“Is the time ripe for managing IP rights in a profit & loss organisation“)? These events and many more that will be held by the 32 LES Member Societies worldwide show that LES members remain committed to providing an environment that facilitates engagement with colleagues old and new and in getting business done. So there you have it: LESI using innovation for addressing the changes and challenges it faces as it turns 40 on the road to Rio, …to Davos and…beyond. Let me close by inviting all members to come to the Annual Conference in Rio de Janeiro, to Davos and to other LES events to meet and get to better know your colleagues and peers, to start knowing LES better and to help us celebrate our first forty years as well as to toast the start of our next forty years of licensing, networking, education and mentoring. ■

March 2013

LES Global News—Highlights LES ATW, continued from Page 1

with professional colleagues across industries and among allied groups is critical for fostering the innovation that is needed to fuel economic growth around the world. Our Around the World with LESI events will provide opportunities for professional connections that will help to bring new products and services into the marketplace, and ultimately, into the hands of consumers for the benefit of all.” In 2012, LES held over forty-six (46) events, an increase of over 50 percent from the annual average of the past two years. These events included networking receptions, conferences, educational programs, speaker and panel events, essay competitions study grants, business plan presentations, and IP games. These events engaged a wide spectrum of attendees including IP thought leaders, government officials, policy makers, business professionals, IP lawyers, licensing professionals, graduate students, and teenagers. Following is a summary of the activities by international LES Societies and the Chapters of LES (USA/Canada) to gain an insight into LES ATW events of 2012 and as a resource in planning for LES 2013.

LES Czech Republic—Mr. Milos Hraba speaking about technology transfer to Russia.

neration in the different branches of trade and industrial sectors and by an Austrian research promotion organization. LES Benelux held a free evening seminar on the European Commission’s latest initiative to boost research, innovation and competitiveness in Europe—Horizon 2020, which will replace Framework Program 7 (FP7), followed by a networking cocktail reception. LES Brazil hosted a reception with the Brazilian IP Association and the Brazilian IP Agents Association. LES Britain and Ireland held an “Introduction to Biologics” meeting followed by a reception. LES Chile attended the inauguration of the new Chile Patent and Trademark Office Headquarters. The event included the receipt of certificates by students who participated in a workshop to teach them intellectual property through the design and development of video games. The video link is, http://www.youtube. com/watch?v=sqKrbDQMEz0&feature =relmfu. LES Czech Republic held a oneday workshop, “News in International Patent Protection,” (USA, EPO, PCT, Russia/CIS) together with the Czech Industrial Property Office and Czech Union of Inventors and Rationalizers at the Industrial Property Office in Prague. The workshop focused on IPR development in various parts of the world (Europe, USA, Russia/CIS) and included speakers from the Industrial Property Office presenting on “EU-Russia Technology LES Czech Republic—Mr. Emil Jeneral from the Czech IPO discuss- Transfer Specifics in the es the European Patent Convention. LES Arab Countries held a “Patents: from Idea to Commercialization” Forum. This conference was sponsored by King Abdulaziz City for Science and Technology (KACST). The 3-day conference, with 350 participants, featured WIPO and LESI speakers on intellectual property, innovation and commercialization. LES Argentina held with Universidad Austral a half-day seminar to discuss “What IP do non-lawyers need?” including two panels of speakers on this topic. LES Australia New Zealand ran an essay competition and coordinated LES ATW with other events in early May as this coincides with LES ANZAC day. Rosemary Lenaghan was the winning author of the essay titled, “Commercialising Innovation to Save the World!” which has been submitted to les Nouvelles for publishing in the next edition. LES Austria held “World IP Day— Erfindervergütung,” an overview on employees’ remuneration for inventions, including an overview on the legal basis in Austria and Germany. The event included industry sector speakers followed by a panel discussion on employee inventor’s remu-

Licensing Executives Society International

LES Global News—Highlights

Field of Pharmaceutical Industry.” LES France held a conference around innovation with inventors whose inventions have become successful on the market, and business with international panelists from RPX and IPXI followed by a cocktail reception. LES Hungary held a half day conference in conjunction with the Hungarian Intellectual Property (HIPO), with four presentations including key talks and panels on “Competition Law and Intellectual Property,” “National Symbols in the Trademark Law,” and “Unusual and Special Solutions for the Proposed “Unified” European Patent System.” LES Israel held an event on “Famous Trademarks Licensing.” LES Italy concluded a 2012 Study Grant to the author of the best unpublished audiovisual production, focusing on the protection and economic enhancement of Intellectual Property rights. LES Japan held a workshop on government, university and industry transactions in downtown Tokyo. This included talks on university-industry relations, incubations of uni-

LES Chicago Chapter—Elevator pitch by a business school student.

versity technologies and experienced in industry, venture capital and academia, followed by a reception. LES Philippines hosted a half-day forum on leveraging technology, “Leveraging Cutting-Edge Technology to Control Legal Costs and Drive Client Value.” The forum included talks by industry executives on key technology issues including cloud computing, growing the ICT industry: network traffic trends and infrastructure investments, integration of tablet technology in the classroom, and leveraging technology for bench. LES Scandinavia held mini seminars. One in Tampere, Finland focused on visionary innovators—individuals whose ingenuity and artistry have broken molds, opened new horizons and made a lasting impact. The second held in Stavenger, Norway, centered on learning experience through interesting presentations and case studies, and an opportunity to discuss “hot” issues such as IP valuation, intellectual asset management, and investor relations. LES Singapore held a combined event, “Innofest,” with the National University of Singapore’s industry li-

aison office and included a licensing workshop run in conjunction with AUTM’s meeting in Singapore as well as supporting a WIPO workshop for an ASEAN delegation. LES Spain and Portugal held two conferences in the headquarters of the Spanish Patent and Trademarks Office, Madrid, on 26 April 2012. The themes were “Science as Business: the Need to Obtain IPR” and “IP Databases” followed by a reception at the Spanish Patent and Trademarks Office. LES (USA & Canada) had LES ATW events at 22 LES Chapters in North America including Arizona, Calgary, California, Colorado, Florida, Illinois, Massachusetts, Michigan, Montreal, New Jersey, New York, North Carolina, Oregon, Ottawa, Pennsylvania, Quebec, Seattle, Texas, Vancouver, Washington State, Washington D.C. and Wisconsin. Following is a summary of the LES ATW 2012 activities of the chapters. The Arizona Chapter held a talk, “Living With the IP licensing Deal: the Good, the Bad, the Very Bad,” on living with the IP licensing deal, LES ATW, continued on Page 6

LES Chicago Chapter—2012 ATW group photo.

March 2013

LES Global News—Highlights

LES ATW, continued from Page 5

sharing stories of lP licensing success realized by ASU’s industry partners and investors. The event was webcast and held at the offices of Snell & Wilmer. The Boston Chapter held a networking event including drinks, food and socializing at the Cambridge Brewing Company. The Charlotte Chapter held a networking lunch for IP and business professionals. The Chicago Chapter held a social networking event at the offices of Levenfeld-Pearlstein. The event featured three minute elevator pitches from local graduate student teams presenting their business plans submitted to the LES Foundation Graduate Student Business Plan competition. The Florida Chapter held an evening seminar, “Intellectual Property Management Strategies— Knowledge and Insight Working Well,” at the University of Miami Life Science and Technology Park. The Houston Chapter held an Around the World with LES Celebration where attendees learned about branding in the wine industry while enjoying wine and hors d’oeuvres at RDG and Bar Annie. The Inland Northwest Chapter held a panel discussion on “Careers that Change the World” at Gonzaga University School of Law followed by a networking reception at the offices of Lee & Hays. The Michigan Chapter held a luncheon speaker event on the topics of “Patents by Numbers” and “Value Creation in Technology Commercialization” at Brinks Hofer Gilson and Lione. The Montreal Chapter held the “IP & Licensing Basics: A One-Day Review Around the World” at Centre 6

CDP Capital followed by a reception for IP Celebration Cocktail at Hotel W. The New Jersey & Philadelphia Chapter held a Grand Networking Reception at the Basking Ridge Country Club featuring the newly created “LES Insights e-News Quiz Game,” an audience participation questionand-answer game in which the winners received terrific prizes and the chance to boast on how much they knew about the great news stories that LES delivers weekly. The New York City Chapter held an event on “Medical Devices—New Rules, New Opportunities” at Pryor Cashman, LLP. A distinguished panel of experts explored the macro trends and current conditions in the medical device industry from the perspective of start-ups and large, well-established manufacturers. The discussion focused on deal structures / business development activities, differing regulatory paths of international vs. U.S. approvals of devices, as well as new IP considerations resulting from recent legal developments. The Ottawa Chapter held an evening event that featured a panel discussion on “Striking a New Balance: Copyright Exceptions under Bill C-11” at Gowling Lafleur Henderson LLP. The panel provided views regarding copyright exceptions under Bill C-11, including: fair dealing exceptions; educational exceptions; and non-commercial and personal exceptions. The Québec City Chapter held a networking event that included licensing success stories at Norton Rose Canada S.E.N.C.R.L., s.r.l. The San Diego Chapter held an evening networking event with LES, SDIPLA and SDCBA Intellectual Property Law Section members at the San Diego Marriott La Jolla.

Licensing Executives Society International

The Seattle Chapter held an evening event focused on the America Invents Act reforms and the U.S. patent system, “Effects of Patent Reform on Licensing and Acquisitions,” at Bracewell & Giuliani LLP. The discussion explored how numerous changes to the U.S. patent system may impact valuation, licensing and acquisition of patents, and some techniques to consider when addressing various risks that these changes may bring, including from the licensor/licensee and buyer/seller perspectives. The Toronto Chapter held a presentation of “The Ron & Don Show”: discussing the “Top 10” IP cases from the past year at The Duke of Westminster. The Vancouver Chapter held a networking reception in the Wine Room at Steamworks Brewing Co. The Washington D.C. Chapter held a seminar, “Visionary Innovators and Intellectual Property,” at the United States Patent and Trademark Office. The morning speakers addressed issues including the importance of technological innovation and visionaries, as well as the social balance and value of intellectual property in society. The talks included the history of technology, intellectual property law and the American patent system, “Promoting Innovation from Sewing Machines to Smartphones,” and “Philosophy, The Patent Law, and Innovation.” The afternoon included talks by thought leaders and IP organizational leaders on key aspects of innovation. The Wisconsin Chapter held a talk, “Recent Damages Decisions— What is the Effect,” discussing recent court decisions from the past couple of years and the effect they have on patent damages. It was held at the University Club. ■

LES Global News—Highlights

Business And NGO Collaboration Key To The 2013 GTIF Geneva, Switzerland By Jim Malackowski and Samantha Kattalia

ore than 75 professionals from over 50 international organizations, including the World Intellectual Property Organization (WIPO), the World Trade Organization (WTO), and the Bill & Melinda Gates Foundation, gathered at WIPO’s Headquarters in Geneva, Switzerland from January 20-22 to participate during the Second Annual LESI Global Technology Impact Forum (GTIF). Under the theme “Business and NGO Collaboration for IP Driven Economic Development,” the conference featured seven panels with topics ranging from ‘Innovation Economics’ to ‘Markets for Humanitarian Tech Transfer,’ all of which converged to create powerful and constructive dialogue regarding the use of intellectual property for the betterment of mankind. Economists from the USPTO, WTO, and Ecole Polytechnique Federal De Lausanne provided statistics to support the role of intellectual property in sustaining longterm economic growth and recovery post financial crisis. During an early session on global IP policy development, WIPO Director General Francis Gurry emphasized the need for public/private partnerships in creating collaborative solutions to global challenges in innovation, public health, and socio-economic development. This theme of collaboration continued throughout the conference, validating GTIF’s role in bringing together key players from government agencies, corporations, non-profits, and NGOs to address ways in which resources can be collectively leveraged to create the most impact. On the second day, the conversation turned to humanitarian initiatives and access to needed technologies as follow-up to the inaugural Invent for Humanity™ Technology Transfer Exchange Fair held concurrent with GTIF 2012. This second half of the conference highlighted specific efforts made by corporations, social enterprises, and non-profits to improve living standards in some of the world’s poorest regions.

Two of the featured organizations, the USPTO and Solar Sister, were honored during the first-ever GTIF Awards Ceremony due to their exemplary commitment to fostering economic development through technology deployment. Edward Elliot received The LESI National IP and Technology Transfer Policy Award on behalf of the U.S Patent and Trademark Office for its Patents for Humanity Program, which encourages the use of patented technology to address humanitarian challenges through an expedited patent application to those individuals or organizations that do the most to address global challenges. The program has received over 80 applications since it was launched by USPTO Director David Kappos in February 2012. Solar Sister, a social enterprise working to eradicate energy poverty by providing women with the resources and support necessary to start their own solar product based micro-businesses, received the Outstanding Humanitarian Technology Transfer Initiative Award for its work in Uganda. Solar Sister was also a featured campaign during GTIF 2012. Building from the 2012 Forum, audience members also revised the LESI resolution on IP Business Principles, a list of 10 principles directing the best practices needed to address the future economy and the fair protection of innovation. The final list is scheduled to be published later this year. With two successful events complete, LESI GTIF continues to be the single most influential meeting of premier non-profit and non-government organizations dedicated to the business of IP globally. While discussion is the first step to initiate change, LESI aims to inspire real action in the delivery of life-altering appropriate technologies and economic opportunities to the developing world through the use of IP. Plans are already in the works for GTIF 2014, which is scheduled to occur next January. ■ March 2013

LES Global News—Presidents Council Introduction

National Presidents Council (NCP) By François Painchaud

t has now been one full calendar year since the National Presidents Council (NPC) was first created in Delmar, California. From this initial meeting, the National Presidents Council has met four times, each time with a full working session. Much valuable information from current as well as past presidents of many of our National and Regional LES Societies was collected, and all the information gathered from these four meetings is now available on the website of lesi.org at: http:// lesi.org/about-lesi/national-presidents-council/. There you will be able to find all NPC information and the Best Practices Guide along with the report of the various meetings held up to now. I invite everyone to go to the site and read the reports of those meetings. There is much to learn on the National Societies themselves and on views to make LESI a better Society. For example, you will learn of many “Best Practices” developed by National Societies that could easily be reproduced in your own National or Regional Society. One such Best Practice from LES Korea is featured on page 9 of this issue. You can also read more, for example in the report from the Toronto NPC meeting; you learn how the National Presidents view LESI: as a “franchise,” as a “corporation” or as a “product” and how it has to deal with “diversity.” The goal of the NPC is to help further the mission of the LESI which consists of: • Functioning as a non-profit professional society encouraging high professional standards among individuals engaged in the transfer and licensing of technology and industrial or intellectual property rights; • Assisting its members in improving their skills and techniques in licensing through self-education, the conduct of special studies and research, the sponsorship of educational meetings, the publication of statistics, reports, articles and other material, and the exchange of ideas related to domestic and foreign licensing; • Informing the public, international bodies, governmental bodies, and the business community concerning the economic significance of licensing and the high professional standards of those engaged in the licensing profession; • Making available to its members the latest, most accurate, information on licensing. ■ 8

Licensing Executives Society International

Meeting Summary

The Value Of LES International As Perceived By Member Societies By Mark Wilson

ES International provides a number of services to, and undertakes a number of roles for, regional member societies. A group of 25 presidents and board members gathered in Geneva for a full-day workshop ahead of the Global Technology Impact Forum, in order to review which of these activities are most valued by the member societies. The group developed proposals for new services that LESI might provide, and, given financial limitations, considered the merits of these new services when compared to provision of existing activities. Jim Malackowksi, Immediate PastPresident of LESI and Chris Katopis, Executive Director, started the event by providing some perspectives on the role of the National Presidents Council and the strategic challenges that face the organisation. The workshop required active and participative engagement from the delegates, and senior figures in LESI were busy throughout the day writing on flip charts, sticking notes on walls, and generating ideas in small groups against tight timelines. In order to force some selection of priorities, participants were asked to score different ideas for new services, and the group selected three key proposals. • Providing means of identifying organisations with specific technology needs

LES Global News—Presidents Council and offers, or individuals with specific expertise. –Although the LESI Directory provides a means of finding useful contacts, delegates felt that it would be beneficial if LESI could provide enhanced tools in this space. The group concluded that greater and more systematic use could be made of existing LESI tools and social media approaches, and considered the idea of generating a listing or publication of leading company licensing contacts. • Raising the profile of LESI and marketing the organisation to “the external world.” –Some country societies have enjoyed considerable success in raising the profile of LESI through the use of marketing and PR agencies, and the need for LESI “to engage with the world” was recognised. Delegates considered that sustained and professional effort is required to achieve meaningful results from such activities. • Enabling the sharing of best practice within the LESI community, so that insights and new approaches from one country society can be made available to other groups. –The group was very keen that services to members be improved by the sharing of ideas, insight and new initiatives across country societies. Many Presidents expressed enthusiasm for utilising the international nature of LESI in this fashion, and a number of simple and pragmatic actions were agreed during the course of the day. As a change of tone from the forwardlooking content of much of the day, the group spent time in the afternoon discussing current LESI budget matters with the LESI President, Kevin Nachtrab, and with senior Board members. As the final part of Meeting Summary, continued on Page 10

Best Practices

LES Korea

Best Practices— A Licensing Clinic History ounded in 1976 with 13 members, LES Korea has been providing professional norm for technology transfer, licensing skills and tactics, education and information related to licensing and commercialization of technology to grow as the top notch organization of techtransfer experts practically contributing to the commercialization and licensing of the technology developed by local institutes and universities. LES Korea hosted international seminars in 1995, 1997 and 1998, and the LESI Annual Conference in 2006.

The LES Korea Organization Of Officers President

General Assembly

Mr. Jeongjoong KIM (Mr. JJ KIM)

Board of Directors

Auditor

Mr. Seongkoo KANG

General Secretariat Mr. Seongkoo KANG

Network Committee

Business Committee

Education Committee

Publishing Committee

Vice President

Vice President Ms. Rana LEE

President (Interim)

Secretary for Network

Secretary for Business

Secretary for Education

Secretary for Publishing

Mr. Jordan Y. KIM

Mr. Sangjin CHA

Ms. Yuyeon PARK

Mr. Jijoon ROH Mr. Sewon KIM

Ms. Catherine Eunkyeong LEE Mr. Jason Y. PAHNG

Licensing Clinic 1. Purpose of the Licensing Clinic • To provide seminars on different topics on licensing strategy. • To address and help resolve concerns and issues by the participants. • To promote network among the participants. 2. Current Situation of Work • Constitution and Operation of Licensing Clinic Committee –Managing Directors: Catherine Eunkyeong Lee, Jason Y. Pahng –Regular Committee Meetings: Monthly Best Practices, continued on Page 10 March 2013

LES Global News—Presidents Council

Meeting Summary, continued from Page 9

Best Practices, continued from Page 9

the session, and in a return to the workshop format, participants were asked to conduct an exercise to make clear which LESI services they valued most. The Presidents were asked to rank a set of alternative service offers from LESI, and asked, “Which package of services would you most (and least) like to receive?” The results from this exercise, which was a simplified form of a marketing approach that is known as conjoint analysis, will be considered by LESI’s senior leadership. The session closed with some thoughts on approaches that large firms typically employ for strategy development and brief consideration of the “strategy road mapping” technique as a potential topic for a future Presidents’ workshop. Although the event allowed time for debate of the factors for and against different proposals, in line with LESI’s usual considered and thoughtful practice, the day was notable for its industrially-oriented workshop-style format and for the use of forced scoring and ranking approaches, which allowed the group to set clear priorities. The Presidents agreed to meet again and made clear the collective desire that the National Presidents Council should continue. Delegates found the sharing of practices among country Societies to be particularly helpful, and commented on the beneficial aspects of developing deeper personal contacts with current Presidents in other territories. ■

3. Licensing Clinic Activity • Time: Licensing Clinic to be held on the third Wednesday at 7:30 AM of every other month. • Venue: Conference Room of BAE KIM & LEE LLC • Participants: Open to both members and non-members interested in the licensing field. • Seminar Presenters: Editorial board will be formed to select the topics and seminar presenters. –A special seminar to be planned occasionally to invite foreign licensing experts to give a presentation. • Fee: KRW 20,000 per participant. 4. Licensing Clinic Operational Strategy • Form a pool of experienced professionals in the licensing field. • Presentation of important cases in the licensing field, analysis of licensing strategy, discussion of key issues. • Presentation of seminars and study sessions from topics chosen among the articles in les Nouvelles. ■

Licensing Executives Society International

2013 Event Schedule Date

Presenters

Topics

Mar. 20, 2013

Jason Y. PAHNG

To Determine Fair License Terms: No Need For Rules of Thumb Anymore

May 22, 2013

Catherine Eunkyeong LEE

Assigning Rights in Future Inventions: The U.S. Supreme Court’s Decision In Board Of Trustees Of The Leland Stanford Junior University v. Roche Molecular Systems, Inc.

July 10, 2013

Jeongjoong KIM12

The 25 % Rule Revisited and A New Investment-Based Method For Determining FRAND Licensing Royalties

Sept. 25, 2013

Sewon KIM

Component-Based Software, Patents & Open Source: A Guide Through The Bermuda Triangle Thibault Bouvier

Nov. 20, 2013

TBA

LES Global News—Society News

LES China and LES Japan

Patent Licence And Acquisition Negotiation— A Simulated Case Study

iding on the success of the 2010 Licence Negotiation Simulation, a sequel, “Patent Licence and Acquisition Negotiation—A Simulated Case Study,” was launched on December 11, 2012. The event was jointly organized by the Licensing Executives Society China Hong Kong Sub-Chapter and the Hong Kong Trade Development Council with support by LES Japan. Over 90 executives attended the case study and learned how to maximize the value of their organisations through a simulated case study—the negotiation of patent rights between two companies. The seminar also featured a presentation of the Japan Award by LES Japan President, Katsumi Harashima to Stephanie and Cece Pong, both associate degree students at Hong Kong Community College. The Pong sisters shared with the audience details about the business plan on “RFID equipped Umbrella Dryer”

that has brought them honor in the “First LES Asian Student Business Plan Competition” held in Tokyo in early September 2012. The case study and the award presentation were followed by a forum discussion chaired by LESC-HK President, Alice Ngan. The audience participated enthusiastically in the discussion with LESI President, Kevin Nachtrab, Assistant Secretary–General of the Hong Kong International Arbitration Centre, Dennis Cai and LES Japan executives, Toru Kobayashi, Hideyuki Ogata and Makoto Ogino. “The series of programs are meant to advance global intellectual property management and exploitation practice, as well as assist the development of international business network,” according to Kevin, who also expressed his hope for more broad-based participation in the LESI events by stakeholders from various regions. ■

The LES forum discussion was chaired by LESC-HK President, Alice Ngan. The audience participated enthusiastically in the discussion with LESI President, Kevin Nachtrab, Assistant Secretary–General of the Hong Kong International Arbitration Centre, Dennis Cai and LES Japan executives, Toru Kobayashi, Hideyuki Ogata and Makoto Ogino.

LES Japan President, Katsumi Harashima, presented Stephanie and Cece Pong, Asian Business Plan Competition finalist from Hong Kong Community College, with the LES Japan Award.

Panel participants and executives at the licence negotiation forum, from left: Toru Kobayashi-LES Japan, Katsumi Harashima-President of LES Japan, Kevin Nachtrab-President of LES International, Ralph Chow-Director, Product Promotions, Hong Kong Trade Development Council, Alice Ngan-President of LES China-Hong Kong, Hideyuki Ogata-LES Japan, Makoto Ogino-LES Japan, Dennis CaiAssistant Secretary–General, Hong Kong International Arbitration Centre, Joanne Hon-LES China-Hong Kong.

March 2013

LES Global News—Society News LES Turkey

Hidden Intellectual Assets In Turkish Pharmaceuticals Industry

he aim of this study is to reveal the potential of the Turkish Pharmaceuticals Industry in means of the innovation life sciences field. Turkey’s economy fosters in recent years resulting in significant growth in many industries including pharma, and it may be the correct time to evolve into a research and development country, but who will pave the way? According to Business Monitor International (BMI), since 2009, Turkey’s pharmaceutical industry has been beset by government-imposed price controls. In December 2010, a new decree was published in the official gazette, outlining further drug price reductions of 9.5 percent to be imposed in 2011. In doing so the government broke its December 2009 agreement not to make significant additional changes for a period of three years. Drugmakers operating in Turkey are now in a position where pharmaceuticals will have to be sold for 30-50 percent less than the lowest European prices. Drug development has many phases and it takes approximately 10-12 years for a new molecule to come into market while thousands of them die on the way to development. First, a molecule is discovered and it becomes a drug candidate, then pre-clinical studies are completed, and if everything goes well, First-InMan trials starts. After this stage, so called “clinical trials” begin. Clinical trials are categorized as Phase-1 (usually on the healthy volunteers to determine dosing,~20-30 subjects), Phase-II (on patient volunteers,~500 subjects), Phase-III (on a large number of patient volunteers~1.000-2.000 subjects). After Phase-III, a pharmaceutical company may apply for a New Drug Application (NDA), a vehicle through which drug sponsors formally propose that the FDA (Food and Drug Administration) approve a new pharmaceutical for sale and marketing in the U.S. PhaseIV and Post-Marketing studies are conducted to collect more information on treatment risks, benefits, and optimal use after a drug is marketed. 12

Licensing Executives Society International

By Sule Mene and Arda Karaduman

Turkey has built its legal infrastructure in the clinical trials field in 1993 and has been involved in more than 1,000 international phase studies until 2012, and improved its knowledge and capacity in the field. Turkey has high-qualified investigators as well as a huge clinical research staff society. Since 1993, clinical research working practices developed in accordance with ICH-GCP (International Conference on Harmonization- Good Clinical Practices). This shift will someday end in molecule discovery if well managed, and hidden intellectual assets of Turkey may be revealed. Key Country Facts: Population (millions) 75.7 GDP per capita, PPP (current international $) 13,885.0 GDP (U.S. $ billions) 614.6 Turkey is among the rapidly developing countries. It has the advantage of a young population who are aware of what is going on all around the world by using information technologies effectively; and it has a high potential with its cultural and economical structure that forces one to think outside the box in a creative way. In addition, the lack of platforms which would carry out the management and assessment of the current assets drives these assets to be hidden. One of the most prevalent intellectual asset field in Turkey is probably the life sciences. This is simply because there are more than 140 universities, 71 medical schools and over 100 science schools which may govern many intellectual assets. However, in the report prepared by INSEAD (The Global Innovation Index 2011) Accelerating Growth and Development (GII) which covers 125 countries, key rankings of Turkey listed below do not show the same expectation. Global Innovation Index: 34.1: Rank:65 University/Industry collaboration on R&D: Rank:75

LES Global News—Society News PCT published patents with at least one foreign inventor: Rank 72 Patent applications filed at the national office: Rank: 42 The gap between these data and what is expected could be reasoned due to hidden intellectual assets. The main question is why these intellectual assests remain hidden. Although there are many “skilled researcher” assets in Turkey, they probably do not match with people who know what to do next. This shows that there is a need for different conditions other than “skilled worker” for intellectual assets to come to life. When the sub-industries that form the life sciences are observed, Turkey has one of the biggest pharmaceutical industries and considering that (Turkish Pharma Industry) TPI is Europe’s 6th, world’s 14th, and CEE’s 2nd largest pharma market in 2011 having a size of around 11 billion USD, it has more than 2,000 high qualified people employed in this industrial area. Despite this massive workforce specialized in the pharma industry, the Turkish Pharma Industry is still weak in terms of developing pharmaceutical Technologies and/or R&D in the world. It is necessary to investigate the reason for this. It is mainly because “there’s no National Pharmaceutical Industry Strategy Development policy set-up yet.” On the other hand, the reality is that, countries will shape their future by technology or innovation. There has to be a correct strategy to utilize the hidden intellectual assets in the life sciences industry; specifically in pharma industry through academy/industry partnership programs, governmental grant-in-aid support to clinical trials, economists, and stimulus packages tax breaks, for instance. Governments have a critical role in setting the right environment and policies. Companies have to increase their innovation activities and universities need to create environments for innovation for researchers. On top of that, a country’s success in international R&D is well depended on such an IP-safe reputation. After patent legislation had been introduced in 1995, Turkey had been a party of WTO’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement in 1996 and then in 1999, patent protection law was available for drugs. However, this patent protection law was not providing temporary protection for drug candidates that were under R&D. For this reason, until 2005, the Ministry of Health accepted applications of generic versions of pat-

ented original drugs. After this date, in EU, laws that brought data protection for six years arose for the products that were licenced after 2004. As seen from this scheme, Turkey is introduced to “Intellectual Property Law” many years after the USA and settlement is still ongoing. Our proposal at this stage of development is to create awareness among the researchers, inventors, and academics who are supposed to be the IP owners but cannot manage due to lack of knowledge. This could be done by increasing the number of interfaces in the life sciences industry, such as associations, funds, and private seed funds, and convince them to provide continuous training. For sure, professional constancy is the job for associated private companies and experts, but there should be the first step to pave the way for the hidden assets to match with the professionals. The improvement in the Intellectual Property area and increased awareness that will bring trust will enable the emergence of hidden intellectual assets rapidly. ■ Authors Dr. Sule Mene, CEO, Mene Research, Co-Chair, Life Sciences Committee, LES Turkey, sule@meneresearh.com Arda Karaduman, Bus. Dev. Associate, Eczacibasi-Monrol, Vice-Chair, Life Sciences Committee , LESI, Karaduman.arda@gmail.com

Congratulations

Felipe On Your New Leadership Role In IP

ur very own Felipe Claro, National President of LES Chile, is now the Vice President of AIPPI, International Association for the Protection of Intellectual Property. Under Mr. Claro’s LES Chile leadership, our Society has exerted significant influence in the drafting of proposed legislation to amend the current law of trademarks and patents in Chile. Felipe is a Partner at Claro & Cia and is ranked as a Leading Lawyer by Chambers & Partners and frequently speaks at intellectual property events. Congratulations Felipe on your new leadership role in IP.

March 2013

LES Global News—Society News LES Malaysia

LES Malaysia Celebrates Its 20th Year Anniversary

n intimate and cosy dinner event was held at Cafe Barbera in Bangsar on 8 November 2012 to celebrate the Licensing Executives Society Malaysia’s 20th anniversary. The event held in celebration of this milestone was attended by approximately 40 guests. The venue was decorated with floral centerpieces that reflected the colors and emblem of the society. In her speech, Janet Toh, the President of LESM did not only praise the active work of the past presidents of LESM and informed everyone present of the events organised throughout the year, but also assured the guests present that LESM would not be resting on its laurels. Janet Toh, President of It would continue to LESM, presenting her speech. make itself more visible especially through the organisation of the LES Asia Pacific conference in 2015. In addition to the president of LESM, the guests were treated to a speech by the first president of LESM, Mr. Liew Shou Kong, who gave an account of how he was roped into being the first president of the society. Finally, the current president of LESM The guests were treated handed each of the to a speech by the first president of LESM, Mr. past presidents a me- Liew Shou Kong, who dallion in appreciation gave an account of how was roped into being of their past contribu- he the first president of the tions to the society. society. 14

Licensing Executives Society International

Throughout the dinner, guests were given the opportunity to catch up with each other while enjoying savory appetizers such as mushroom bruschetta, mushroom soup, pizzas and chicken wings. Guests were also given a few options for their main course before ending with desserts and coffee. The night ended with great entertainment from local celebrity Juwita Suwito and her band. Juwita and her band entertained the guests with a new single from her album as well as popular songs like “Stand by Me,” to remind the guests to stand by their president! Juwita even sang a song about spaghetti to the tune of “My Bonnie.” ■

President of LESM presenting appreciation gifts to the past presidents.

Performance by local celebrity Juwita Suwito.

Past presidents who attended the anniversary event.

LES Global News—Society News

LES Philippines

LES Philippines And LES Japan Conduct Joint Meeting L

ES Philippines was host to several delegates from LES Japan who visited the Philippines from 18-20 November 2012. Upon their arrival, the delegates from LES Japan, led by their President, Mr. Katsumi Harashima, and the officers of LES Philippines had dinner with the Director General of the Intellectual Property Office of the Philippines (IPO-PHL), Mr. Ricardo Blancaflor, at the Dusit Thani Hotel. From November 19-20, the delegates from LES Japan touched base with various Philippine government agencies such as, the IPO-PHL, Department of Justice (DOJ), Bureau of Customs (BOC), National Bureau of Investigation (NBI), and the Supreme Court (SC) to learn more about the Philippine intellectual property and licensing framework. The visit of the delegates from LES Japan culminated in the “LESP-LESJ Joint Meeting” attended by members of LES Philippines and the delegates from LES Japan, which was held on the night of the 20th of November 2012, at the Dusit Thani Hotel. Other Activities During the Last Quarter of 2012 Aside from the “LESP and LESJ Joint Meeting,” LES Philippines was further kept busy during the last quarter of 2012 with other activities.

Officers, directors and members of the LES Philippines and the delegates from LES Japan during the “LESP-LESJ Joint Meeting.”

In celebration of IPR Week, the LES Philippines held a roundtable discussion entitled “Quo vadis?— Are the Filipino Performing Artists Second-Class Citizens in their Own Country, Compared to their Foreign Counterparts?” The forum was graced by Ms. Mitch Valdez of the Performers Rights Society of the Philippines (PRSP), Mr. Noel Cabangun of Filipino Society of Composers, Authors and Publishers, Inc. (FILSCAP), Mr. John Lesaca of Asosasyon ng Musikong Pilipino Foundation, Inc. (AMP), and Mr. Howard “Long Tall” Medina of Steve O’ Neal Productions, all key stakeholders in the performance arts industry, who thoroughly discussed the issues surrounding the displacement of Filipino performers by the considerable influx of foreign acts in the past three years. Also, as part of its Memorandum of Agreement with PCHRD-DOST for the implementation of the project, “Intellectual Property and Technology Management Learning Series,” LES Philippines conducted three (3) capacity building seminars for the regional health research systems on IP and Technology management. The first was held on 14 November 2012 at the Grand Prince Hotel in Cebu City. The President

and President-elect of LES Philippines, Mr. Ferdinand M. Negre and Ms. Leslie Anne T. Cruz, respectively, were the speakers during the said seminar. The second seminar was held on November 23, 2012 at Casa Nena, St. Therese of Lisieux Hall, Holy Angel University, Angeles City. The third seminar was held on 28 November 2012 at the Mindanao Training and Resource Center, Waling-Waling Hall, DMSFI, Bajada, Davao City. Mr. Negre and LES Philippines members, Ms. Divine Pedron and Mr. Oliver Baclay, served as resource speakers at the last two seminars. Lastly, the LES Philippines capped off the year with its annual Christmas Party held on 6 December 2012 at the Sycip Law Office. The night of merriment began with opening remarks from the IPO-PHL Director General, Mr. Blancaflor. The attendees had a hearty dinner and enjoyed several games organized by the President-elect, Ms. Leslie Anne T. Cruz, and the Meetings Committee Chair, Ms. Polka Gan-Ronggavilla. LES Philippines members also tried their luck on the Pot of Gold, minor raffle prizes and the grand prizes, which were two original paintings donated by Mr. Ramon S. Esguerra (member of the LES Philippines Council of Advisers). The night ended with the traditional gift exchange. ■ March 2013

LES Global News—Society News LES Czech Republic

LES Japan

LES Czech Republic Conference

Correction Of Multiple Claims Can Be Individually Requested—

Current IP Legislation And Case-Law In Europe

he regular autumn LES Czech Republic Conference was held in the Clarion Hotel Prague on the 28th November, 2012. The conference topic, “Current IP Legislation and Case-Law in Europe,” was dedicated to the current situation and the recent changes in the IP legislation in selected European countries. We invited the speakers from EU countries, namely Czech Republic, Slovakia, Poland, Hungary, Germany, Denmark, but also from Russia. All speakers covered the last substantial changes in the IP legislation, touched on the situation in IP transactions, technology transfer, sublicensing and clarified the specifics of IP rights assignment in their countries. An interesting part of all presentations were the practical examples of particular caselaw decisions. Many reputable speakers and participants from abroad took part in the conference. There was a possibility for mutual familiarization and discussion of experience during the conference and pre-conference dinner, for which the speakers were invited to the Prague Tower restaurant. The conference brought a much needed overview of foreign practice for local patent attorneys and for company IP lawyers as well. Foreign speakers and participants could also take part in the sightseeing tour in Prague, one of the most beautiful European cities. The conference was highly appreciated by all participants and speakers from both professional and organizational points of view. LES Czech Republic intends to prepare more events focused on cooperation and experience exchange in the near future, especially together with LES chapters from neighboring countries. ■ 16

Licensing Executives Society International

2011 Patent Act Revision By Mitsuo Kariya*

orrection of patented claims is one of the most effective ways to protect a patent from validity challenges by potential licensees or accused infringers. Prior to a 2008 Supreme Court decision (July 10, 2008), the Japanese Patent Office maintained a principle of denying allowability of multiple corrected claims as a whole if at least one unallowable claim was included. This practice was partially modified by the court decision and totally changed by the patent act revision made in 2011, which became effective on April 1, 2012. Pre-2011 Patent Act Revision—Different Treatments Between Two Types of Correction Procedures There are two types of procedures for correcting patented claims. Patentees can request a Trial for Correction to voluntarily resolve validity questions or strengthen an assertion of validity against an invalidity argument by the defendant in an infringement litigation procedure. On the other hand, if a Trial for Nullification is requested, the patentee is not allowed to request a Trial for Correction, and instead is required to file a Petition for Correction. Based on precedents, e.g., a 1980 Supreme Court Decision (May 1, 1980), the 2008 Supreme Court Decision (July 10, 2008) and a 2009 IP High Court Decision (November 19, 2009), it has been understood that whereas allowability of correction of multiple patented claims should be indivisibly examined in a Trial for Correction, allowability of correction for narrowing multiple patented claims that are individually challenged in a Trial for Nullification should be examined for individual claims. Prior to the 2011 revision, it was still not clear whether all questions relating to the correction of multiple patented claims were resolved by the court decisions. Additionally,

LES Global News—Society News

there were criticisms of the inconsistent treatments between the two procedures, which commonly relate to correction of patented claims. Unified Treatment—2011 Patent Act Revision According to the revised patent act, correction of each of multiple patented claims can be individually requested in a Trial for Correction as well as in a Petition for Correction (Articles 126 and 134-2). However a group of an independent claim and its dependent claims is treated indivisibly, and if allowability of correction of at least one claim in the group is denied, allowability of correction of all claims in the group is denied. This treatment is intended to prevent a complicated situation where a reference to originally patented claims becomes necessary when correction of some claims is allowable and correction of others is unallowable. Supposing that a patent includes two patented claims, e.g., Claim 1 (configuration “A”) and Claim 2 which was dependent on Claim 1 (further comprising configuration “B”), and it is requested that corrections be made to amend them to Claim 1’ (configuration “a”) and Claim 2’, which is dependent on Claim 1’ (further comprising configuration “b”), if the correction of Claim 1 to Claim 1’ is allowed and the correction of Claim 2 to Claim 2’ is rejected, the claims subsequent to the proceeding for correction will result in Claim 1’ (configuration “a”) and Claim 2 dependent on the uncorrected Claim 1. Thus, a reference to Claim 1’ in the corrected patent publication and a reference to Claim 2 in the original patent publication become necessary. When a patentee requests corrections on multiple patented claims including dependent claims either in a Trial for Correction or in a Petition for Correction, it is permitted to rewrite the dependent claims to independent form so that the patentee can request individual examination of corrections of multiple patented claims. Correction of Patented Claims Became More User-Friendly According to this revision, it became clear that

patentees can protect their patents from validity challenges by avoiding the disadvantageous situation where multiple claims were indivisibly treated under the previous practice. When corrections of patented claims are allowed either in a Trial for Correction or in a Petition for Correction, the corrected claims become effective retroactive to the filing date. Potential licensees or accused infringers are liable for past damages as long as they infringed the corrected claims regardless of existence of patent marking or receipt of a cease-and-desist notice. It is recommended that dependent claims be rewritten to independent form when a request for a Trial for Correction or a Petition for Correction is filed, in order to avoid rejection as a whole if the patentee is not confident on allowability of all the requested corrections for a group of claims including dependent claims. It is allowable to include multiple independent claims for one category. The official fee for a Trial for Correction, the official fee for a Petition for Correction and the annual fees are determined simply by the number of claims. There are other revised provisions relating to Correction. Prior to the 2011 patent act revision, patentees had an opportunity to correct claims even after issuance of a trial decision to nullify the patent, by requesting a Trial for Correction within 90 days from filing of a suit to rescind the trial decision. This opportunity is no longer available, as a result of the 2011 patent act revision; however, instead, the Board of Appeal issues advance notice of a decision and a final opportunity to correct claims will be given to the patentee (Article 164-2). It should be noted that there are transitional measures relating to the 2011 patent act revision, which for the sake of simplicity are not discussed here. ■ Author *Mitsuo Kariya, Licensing Director and Executive Counselor at GE Japan Corporation, Patent Attorney March 2013

LES Global News—Society News

LES Japan

Discussions On Patent Pools From Mobile Computing (Including IP Issues Of Smart Phones) At LES Asia Pacific Regional Conference By Tetsuyuki Watanabe*

n September 3 and 4, LES Asia Pacific Regional Conference was held in Tokyo and I participated in the Plenary Session titled “Mobile Computing (including IP Issues of Smart Phones)” with Mr. Jeong-Joong Kim of LG Innotek Co., Ltd. in Korea and Ms. Tatiana Moore of Microsoft Corporation in the U.S. This article focuses on a patent pool, which is one of key points of my presentation. I added some background history and issues relevant to the patent pool in this article. In my presentation, I referred to a difference between consumer electronics industries and mobile phone industries with regard to the patent pool. In digital network products, it is necessary to use multiple standard technologies. When discussions were held in 1993 to create a standard for MPEG2 video codec technologies, participants made a proposal to create a patent pool for MPEG2 standard. The concept of the patent pool was proposed to allow manufacturers a comfort zone and enjoy patent rights on a level playing field to avoid a necessity of obtaining individual licenses from numerous patent holders, 18

which leads to high cumulative royalties together with extensive efforts in negotiating separately with each patent holder. Based on this proposal, IP Working Group was established and discussions were held. As a result of the discussions, a company called MPEG LA acting as a licensing agent for the patent pool was established in 1996. MPEG LA started its licensing activities in 1997 after receiving a Business Review Letter from the U.S. Department of Justice. Since then, many patent pools have been established, which include commonly used standards such as codecs, standards for packaging media and standards for TV. Consumer electronics products, such as BD/DVD, PC, TV, DSC, and video cameras, cannot be produced without using such standard technologies. While discussions for many patent pools have been made by companies in the field of consumer electronics, some entities outside the consumer electronics field have participated in some of the patent pools. Their licensing policies are different from those of companies in consumer electronics industries, and many dis-

Licensing Executives Society International

cussions were held before such patent pools could be established. Further, carriers have been participating in patent pools that were recently established to cooperate on standards to be used for mobile phones, and they have their own licensing policies, which are also different from those of companies in electronics industries. As can be seen from the chart, there is only one patent pool that exclusively covers the standard for the mobile area and numbers of licensors are small. Further, the establishment of such pools was delayed mainly by the presence of differences in licensing policies among companies in consumer electronics industries and companies in communications industries, especially in the U.S. and Europe. While there have been some obstacles to creating patent pools among various industries, it is true that the patent pools have contributed to the development of digital network industries and the patent pool is a special characteristic of the licensing policy of digital network industry as a so-called “open licensing policy.”

LES Global News—Society News

While patent pools contribute to the development of markets in digital network products, new issues have arisen as a result of the establishment of patent pools. 1. In view of the current severe competition in the worldwide digital network market, many Japanese consumer electronics companies have shown huge deficits in recent financial quar-

terly reports, and it has become necessary to review whether it is appropriate to continue an “open licensing policy” to survive in the market. 2. While the patent pools have set cheap royalties and contributed to avoid increases in accumulated royalties, a sharp price illusion of products overcomes an advantage of merits of the pool license. Fur-

ther, since it is expected that many important patents included in patent pools that started in the mid and late 1990s will expire within 5 years, it is necessary to discuss a new licensing scheme. ■ Author *Tetsuyuki Watanabe, Senior Councilor, General Manager, Licensing Group, Intellectual Property Center, Panasonic Corporation, Vice President of LES Japan

Representative List Of Patent Pools As Of August 2012

Video Codec

Audio Codec

Package Media

Mobile

Standard

Products

License Agent

Main Licensors

MPEG2

DVD/BD, Game, TV, PC

MPEG LA

Panasonic, Philips, Sony, Mitsubishi, GE, Samsung, Thomson, Total 27

MPEG-4 Visual

DVD/BD, Video Camera, DSC PC, Mobile Phone

MPEG LA

Panasonic, Philips, Sony, NTT,GE, MS, Samsung, LGE Total 28

MPEG-4 AVC/H.264

DVD/BD, Video Camera, DSC PC, Mobile Phone

MPEG LA

Panasonic, Philips, Sony, Toshiba, Apple, MS, Samsung, LGE Total 29

VC-1

BD, PC, Mobile Phone

MPEG LA

Panasonic, Philips, Sony, MS Total 18

AAC

Audio Player, Mobile Phone, PC

Via Licensing

Panasonic, Philips, Sony, Dolby, FHG, NTT, NEC Total 13

DVD

Toshiba (TDLS)

Panasonic, Toshiba, Hitachi, Mitsubishi, Sharp, WB, JVC, Samsung

Blu-ray Disc™

Blu-ray

One-Blue

Panasonic, Philips, Sony, Hitachi, Samsung, HP Total 15

W-CDMA

Mobile Phone

Sipro

Panasonic, NTT, FT, KPN Total 11

DVB-T

TV, STB

S.I.SV.EL.

Panasonic, Philips, Sony, FT, KPN

ATSC

TV, STB

MPEG LA

Panasonic, Philips, Zenith, LGE Total 8

ARIB (Japan)

TV, Mobile Phone, STB

Uldage

Panasonic, NHK, Sony, Toshiba, Thomson, FT Total 14

CATV (Japan）

STB

Uldage

Same as above

March 2013

LES Global News—Society News LES Korea

Activities Keep Members Engaged 1. Operating Committee Continues Meetings As originally planned, the LES Korea Operating Committee has held bi-monthly meetings on the 2nd and 4th Tuesday of the month. Usual members attending the meetings are the President, two Vice Presidents, three Secretariats (General, Education and Networking) and the Director of Planning.

notable activities in IP management. One of the prizes was entitled the “LES Korea President Award.”

1. 4. New Membership Card Completed LES Korea members will have a newly designed membership card by the end of this year. This membership card was designed to promote the identity of LES Korea members and intensify a sense of solidarity among members. 4. 2. Co-Sponsoring 2012 Techno-Fair Together with KAUTM KAUTM (Korea Association of University Technology Transfer Managers) and LES Korea jointly held the 2012 Techno-Fair from October 31 to November 2, 2012 at COEX Exhibition Hall D in Seoul, Korea. There were 57 universities and technology transfer centers participating in the fair. About 8,000 new technologies were displayed for trade and commercialization. 2.

3. Sponsoring 2012 Grand Prize of IP Management in IT Industries LES Korea took part in KEA’s (Korea Electronic Associations) annual award project. KEA is the association of companies in information technology related industries. In the award ceremony held on November 1 at the Grand Intercontinental Hotel, three companies and two persons were awarded prizes for their 20

Licensing Executives Society International

5. LES Korea and KIPA Collaborate in Student Business Plan Competition After a lengthy discussion, LES Korea and KIPA (Korea Invention Promotion Association) reached an agreement to select a team for the LES Student Business Plan Competition out of the finalists of KIPA’s University Student Invention Competition. For this purpose, LES Korea agreed to provide its expertise in examining and mentoring participants’ inventions and business plans through the eight month long process. The prize winners will be announced every December. The team selected for LES AsiaPacific Student Business Competition will be financially supported by KIPA and mentored by LES Korea. 6. LES 200 Organizing Committee Launched To meet the growing demand for the LES 200 course in Korea’s licensing related communities, LES Korea set up a LES 200 Organizing Committee chaired by Ms. Rana Lee (VP of Education). This was decided in the Ad-hoc Operating Committee on November 20. It will be held February 21 and 22, 2013 in Seoul, Korea under the title “Commercializing Technology through the Power of IP Licensing.” ■

LES Global News—Leadership

Robert Goldscheider—Insights

Into The Man

By Eric Goldscheider

he passing of Bob Goldscheider (1929-2012) will not diminish the memory of those who knew him. However, we are fortunate in having available videos taken by his son Eric not long before he passed away. For those who are interested in Bob’s contribution to LES and Licensing, Eric has provided links to these videos outlining Bob’s career, which you will find below. Robert Goldscheider on the origins of the 25% Rule: www.youtube.com/watch?v=vNSUcX6G5dw& feature=player_embedded. Robert Goldscheider (1929-2012) is widely credited with first articulating the “25 percent rule” as a principle to guide the resolution of licensing disagreements. The Rule suggests that the licensee pay a royalty rate equivalent to 25 percent of its expected profits for the product that incorporates the IP at issue. Here, in a February 2011 recording, he talks about the origins of how he developed that rule based on his experiences as a young lawyer working in Geneva, Switzerland. He was there from 1957 to 1962, at a time when many international companies were establishing a presence in Switzerland for tax purposes.

Robert Goldscheider talks mid career years: www.youtube.com/watch?v=gZcrmC7wSH8&feature =player_embedded.

Robert Goldscheider talks about the evolution of his career in the period between when he returned from living in Switzerland in 1962 and when his professional activities started switching over to expert witnessing in 1974. Robert Goldscheider talks about the twilight of his career: http://www.youtube.com/watch?list=UUnPWO1lmPnPoOdz1j14nXQ&feature=playerdetailpag e&v=uDhC7k8HGiY This is the third in a series of three videos in which Robert Goldscheider talks about his career. The first covers his time in Geneva, Switzerland and the origins of the 25 percent rule, with which he is associated. The second covers his years at a firm in New York and his transition to working for himself. In this one, he talks about some of his ups and downs as an expert witness in his latter years. The link to the entire playlist http://www.youtube. com/watch?v=vNSUcX6G5dw&list=PLk2QEmvat UC-b63REc7z2Wgv_4U5nGf3c. ■

In Memoriam:

Jarmila Traplova—LES Czech Republic

ES Czech Republic expresses its deep sorrow at the sudden death of Jarmila Traplova. On 7th December 2012, at age 58, Jarmila passed away after a serious illness. Jarmila was a very active member of LES Czech Republic. She was elected a president of LES Czech Republic twice, namely from November 2003 until November 2005 and from November 2008 till November 2009. She was hard working and made significant contributions to the activities of LES Czech Republic. Jarmila was a successful lawyer and respected trademark attorney. During her career, she built up one of the best patent and trademark offices in the Czech Republic. Jarmila was active in several professional organizations. She was also a president of the Czech group of the International League of Competition Law. ■ March 2013

LES Global News—Meetings Ipanema Beach from Arpoador Rocks.

ES Brazil invites you to join us this Spring in Rio de Janeiro for the 2013 Annual Meeting of LES International, April 7-10, 2013. This event will be a unique chance to learn about business opportunities, network with local leaders, meet with peers from the Brazilian licensing community, to hear about doing business in Brazil from the people who know and love this country. Plus, get the guided tour and experience firsthand the city that will host both the 2014 World Cup and 2016 Olympic Games. Whether you are looking to further your knowledge about licensing prac-

tices, get a different perspective, or simply grow your network, we have something for you. The meeting venue is the Atlântica Windsor. It is a modern five-star hotel, including the latest in terms of technology, safety and comfort, with a fantastic panoramic sight of Copacabana and Leme beaches.

For registration and reservations, contact: Mrs. Claudia Antonaccio Regency Congressos & Eventos Phone: + 55 21 25536628 E-mail: claudiaantonaccio@regencyeventos.com.br For more information, visit: http:// lesbrasil.org.br/WEBSITE/rio2013/

Spirit of Licensing

LES pan european conference 23–25 june

DAVOS 2013 ing Spirit of Licens

www.les-davos2013.org

Licensing Executives Society International

It is with great pleasure and enthusiasm that LES Switzerland is going to host the LES Pan European Conference 2013 in Davos from 23 to 25 June 2013. We have the honour to invite LES members and all interested in licensing, technology transfer and industrial property to come together, to exchange views and to experience the “Spirit of Licensing” – a special approach to licensing. The program will consist of a lively mixture of lectures and workshops with international content and local flavour within a sparkling mountain atmosphere.

LES Global News—New Members

Jaeken, Annemie Vereenigde

LES Benelux Allen, John NautaDutilh

Kop, John Advanced Tower Systems

Bod, Joris Crucell

Schuurman, Ruud Leiden University R&I Services

Ojala, Tiina Sanna Maria Picodeom Ltd Oy

Weismann, Audrey The Law Factor

Ormio, Julia Foster Wheeler Energia Oy Group

Mikus, Oldrich Stamicarbon B.V.

LES Scandinavia

Delputte, Inge Innogenetics

Ooijen, Joost van De Brauw Blackstone Westbroek

Bach, Jan Bjerrum Jusmedico Advokatanpartsselsk

Gunst, Wilfried CNH Belgium N.V.

Roelands, Raf Apitope

Fustinoni, Pirke Outotec Oyj

Hennin, Caroline CropDesign N.V.

Saelens, Claire CropDesign N.V.

Moulin, Axel Leogriff AS

De Meutter, Jan CropDesign N.V.

Steinkjer, Lars Erik Wikborg, Rein & Co.

Vaquer, Jeremie Nokia Corporation

MAY 14–16 SEATTLE, WA

West Coast: Hub of Innovation KEYNOTE SPEAKER

Ray Hatoyama, Vice Chairman, Sanrio Corporation Hear from the leader in global licensing responsible for taking the company’s Hello Kitty brand worldwide.

Expertise from the World’s Most Innovative Companies • The Gates Foundation, a group focusing on global health through medical and biotech research, discussing its sponsorship and investment in pure research • National labs PNNL, LBNL, and LLNL, all with a focus on clean energy and critical materials, sharing their strategic areas of investment, IP challenges and opportunities

Save $200 through

3/31

Join Us for an Unforgettable Networking Reception at Chihuly Garden and Glass! Chihuly Garden and Glass is one of the most distinctive Seattle experiences. Visually stunning, this unique setting includes an eight gallery Exhibition Hall. Experience an artist’s world as you dine and network with your LES peers and delight in Seattle’s newest exhibition.

• Microsoft presenting lessons learned from patent acquisitions • Software companies such as Adobe and others discussing what’s top of mind for them from an IP perspective • 343i speaking about its licensing around the Halo franchise • Rockwell Collins discussing lessons learned from successful JV formation with Chinese partners

March 2013

LES Global News—LESI Delegates

Officers President President-Elect Past-President Vice-President ® Vice-President Vice-President Vice-President Secretary Treasurer Counsel Counsel

Kevin Nachtrab Yvonne Chua Jim Malackowski Patricia Bunye Hector Chagoya Cortes Christian Osterreich Ken McKay John Walker James Sobieraj François Painchaud Junichi Yamazaki

les Nouvelles Editorial Review Board Chair: Rodney DeBoos, Melbourne, Australia Lex van Wijk, Amersfoort, Netherlands Heinz Goddar, Munich, Germany Norm Jacobs, Boca Raton, Florida, U.S.A. Sun-Ryung Kim, Seoul, Korea Masato Kobayashi, Tokyo, Japan Kenneth D. McKay, Toronto, Canada Thomas Bereuter, Vienna, Austria Larry Plonsker, Editor 10580 Northgreen Dr., Wellington, FL 33449 Tel: +1-561-432-8814 E-mail: editor@lesi.org Carla J. Blackman, Design Interface Inc. Design & Production

les Nouvelles

Volume XLVIII Number 1 (ISSN 0270-174X)

les Nouvelles is published quarterly by the Licensing Executives Society International (LESI). LESI is an association of 32 National and Regional Societies, each composed of individual members who are engaged in the profession of licensing and other aspects of transferring or profiting from intellectual property. Subscription to the journal is included in the membership dues paid by all members. Subscription for the print publication is available to nonmembers for US$200/year. Please contact the Editor for further details. The articles published in les Nouvelles reflect the views of the authors and not of the Society as an association or its officers. Material printed in the journal is covered by copyright. No parts of this publication may be reproduced, displayed or transmitted in any form, without prior permission from the Editor or Board of LESI. A peer review and evaluation system is used to maintain the scholarly nature of the material published in this journal. All articles submitted for publication are reviewed and evaluated by members of the Editorial Review Board (ERB). The ERB members are chosen for their expertise in the fields of licensing and intellectual property. All evaluations are reviewed in a double-blind fashion to remove any bias in the results. The final decision on publication rests with the editor. A guideline for authors can be found on our Web site at the following address: www.lesi.org/lesnouvelles/advertise. asp#submission Copyright ©2013 Licensing Executives Society International.

DEADLINES FOR les Nouvelles: Copy for publication in les Nouvelles should be received by the Editor-in-Chief as far as possible in advance of the final deadlines, January 1, April 1, July 1 and October 1. Articles for the white pages are reviewed by the LES Editorial Review Board, and they are published as soon as possible after acceptance. All materials are to be submitted electronically in either MS Word or Text Only format.

Licensing Executives Society International

Delegates Andean Community Germany Luis Guinard Ingo Bruckner Esteban Riofrio Heinz Goddar Arab Countries Peter Hess Mohammed Al-Ansari Gunter Isenbruck Nabil Salame Jochen Schäfer Argentina Guido von Scheffer Gustavo Giay Hungary Michael Lantos Australia & New Zealand Katalin Szamosi Albert Ferraloro India Mark Horsburgh Philip Heuzenroeder Tim Jones Israel Austria Dalit Sagiv Neil Wilkof Italy Benelux Giovanni Grippiotti Achim Krebs Jean Christophe Troussel Luigi Saglietti Lex van Wijk Mario Traverso Brazil Japan Cândida Ribeiro Caffé Katsumi Harashima Juliana Viegas Ichiro Nakatomi Britain & Ireland Makoto Ogino Hayley French Junko Sugimura Fiona Nicolson Yorikatsu Hohokabe Jennifer Pierce Korea Mark Wilson Wendy (Hyosun) Choi Chile Jeong-Joong (JJ) Kim Felipe Claro Malaysia Fernando Garcia China Anita Leung Mexico Christopher Shaowei Feng Yibin Abraham Alegria Chinese Taipei Paul Hsu Philippines Richard Thurston Leslie Anne Cruz Czech Republic Ferdinand Negre Vojtech Chloupek Poland Denisa Svecova Marek Lazewski France Alicja Rogozinska Alfred Chaouat Russia Andre-Pascal Chauvin Margarita Divina Emmanuel Gougé Natalia Karpova Arnaud Michel

Scandinavia Morten Balle Jonas Gulliksson Leif Nielson Singapore Yu Sarn Chiew Audrey Yap South Africa Zelda Snyman Pieter Venter Spain & Portugal Jose Migual Lissen Antonio Tavira Switzerland Regula Altmann Raymond Reuteler Martin Schneider Turkey Omer Hiziroglu Murat Idal USA & Canada Ned Barlas Allen Baum Pam Cox Ted Cross Mike Dansky Tom Filarski Ron Grudziecki Bob Gruetzmacher Shawn Jacka M Rashid Khan Gary Keller Michael Lasinski Russell Levine Keith Lutsch Simmone Misra Tanya Moore Dwight Olson John Paul Janet Pioli Paul Roberts Art Rose Tony Venturino Jeff Whittle

Society Officers Chapter

Andean Community Arab Countries Argentina Australia & New Zealand Austria Benelux Brazil Britain & Ireland Chile China-Hong Kong China Chinese Taipei Czech Republic France Germany Hungary India Israel Italy Japan Korea Malaysia Mexico Philippines Poland Russia Scandinavia Singapore South Africa Spain & Portugal Switzerland Turkey USA & Canada

President

Estaban RIOFRIO Talal ABU-GHAZALEH Gustavo P. GIAY Mark HORSBURGH Alexander CIZEK Jean-Christophe TROUSSEL Rodolfo MARTINEZ Y PELL Mark WILSON Felipe CLARO Alice NGAN Yu PING Paul HSU Milos HARABA Emmanuel GOUGÉ Frank L. ZACHARIAS Michael LANTOS Raj HIRWANI Hananel KVATINSKY Roberto DINI Katsumi HARASHIMA Jeongjoong KIM Janet TOH Hector CHAGOYA Ferdinand NEGRE Alicja ROGOZINSKA Sergey DOROFEEV Kaisa FAHLLUND Audrey YAP Zelda SNYMAN Jose Luis de MIGUEL Martin SCHNEIDER Omer HIZIROGLU Tanya MOORE

Secretary

Carolina VENEGAS GAVIRIA Nabil SALAMÉ Veronica CANESE Philip HUEZENROEDER Sabine FEHRINGER Achim KREBS José DIAS John ROE Juan Cristóbal GUMUCIO Rebecca LO Yibin FENG David SU Denisa SVECOVA Marc BETHENOD Peter K. HESS Katalin DERZSI Sunil KRISHNA Dalit SAGIV Gian Antonio PANCOT Sadaji SUGIYAMA Sangjin CHA CHEAH Chiew Lan Carlos TRUJILLO May CANIBA-LLORA Per ERICSSON Elissa LIM Darren MARGO Don Jose Miguel LISSÉN Ralph SCHLOSSER Murat IDAL Paul ROBERTS

LES Global News—LESI Delegates

Licensing And Intellectual Property Organizations Meetings For more information on LESI Meetings, go to www.lesi.org

2013

March 14–16 LES ANZ Annual Conference, Resourcing the Future, Stamford Plaza Brisbane, QLD Australia April 5–7 LESI Management & Delegates’ Meeting (IMDM) Rio de Janeiro, Brazil April 8–12 LESI Annual Conference Windsor Atlantica Hotel Rio de Janeiro, Brazil April 26 Around The World With LES Celebrate IP Day with local Society activities May 13–16 LES (USA & Canada) Spring Meeting W Hotel Seattle, Washington

2014

May 16–18 LESI Management & Delegates’ Meeting (IMDM) Moscow, Russia May 18–21 LESI Annual Conference Moscow, Russia October 5-8 LES (USA & Canada) Annual Meeting San Francisco, California USA

2015

April 9–11 LESI Management & Delegates’ Meeting (IMDM) Brussels, Belgium April 12–15 LESI Annual Conference Brussels, Belgium

Communications Education Endowment External Relations Investment

IP Maintenance Legal Long-Range Planning Meetings Membership Nominations

High Tech Life Sciences

P. Hug D. Ryan K. Payne J. Portier F. Noetinger A. Mifune L. Evans O. Axster N. Jacobs J. Brown S. Layton Jr. R. DeBoos P. Mandros

Rashid Kahn Achim Krebs Christopher Shaowei Andreas Winkler John Paul Pamela Cox

Professional

International Past-Presidents 1987 1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999

Peter Hess Heinz Goddar Thierry Sueur Ned Barlas Jeff Whittle Rob McInnes Dwight Olson Art Rose Patrick O’Reilley Sun Kim Yorikatsu Hohokabe Jonas Gulliksson Wisam Hirzalla Ron Grudziecki François Painchaud Junichi Yamazaki Russell Levine Fiona Nicholson Alan Lewis Arnaud Michel Jim Malackowski

LESI Industry, Professional & Regional Committees Industry

Consumer Products

September 22–25 LES (USA & Canada) Annual Meeting Philadelphia, Pennsylvania USA

J. Gay M. Finnegan B. Hedberg M. Okano D. Smith J. Gaudin J. Stonier S. Heijn W. Poms H. Hodding F. Pombo M. Ariga L. Mackey

Chairs & Co-Chairs Audit Awards

Chemicals, Energy, Environmental & Materials

June 23–25 LES International Pan-European Conference Davos, Switzerland

1974 1975 1976 1977 1978 1979 1980 1981 1982 1983 1984 1985 1986

LESI Management Committees

2000 H. Goddar 2001 E. Shalloway 2002 T. Sueur 2003 M. Jager 2004 J. Gulliksson 2005 W. Manfroy 2006 P. Chrocziel 2007 R. Grudziecki 2008 C. Fukuda 2009 A. Liberman 2010 P. O’Reilley 2011 A. Lewis 2012 J. Malackowski

Copyright Licensing Dispute Resolution Industry/University Government Transactions Patent & Tech Licensing Trademarks Valuation

Regional

Americas Africa and Middle East Asia Pacific European

Michael Lechter Tom Filarski Claire Driscoll Pauline Khor Martin Schneider Dwight Olson Marcela Trigo de Souza Mohammed Al-Ansari Kevin Dam Audrey Yap Junko Sugimura Bruno Vandermeulen

Ad Hoc Committees Business Forums Global Technology Impact Forum Young Members Congress IP Strategy

Bill Elkington Hector Chagoya Martin Schneider Tilman Mueller-Stoy Subramaniam Vutha

March 2013

A one week seminar which addresses all aspects of trademark practice before the United States Patent and Trademark Office (“USPTO”) and the courts, including the preparation of trademark applications, practice before the Trademark Trial and Appeal Board, licensing, inter partes matters including opposition and cancellation proceedings, and the enforcement of trademark rights in the federal and state courts.

Summer Patent Seminar June 5 - 28, 2013

This three and a half week seminar covers all major areas of U.S. patent law, beginning with an overview of the U.S. patent system and moving on to more complex subjects such as patent prosecution, infringement litigation, and interference practice. Includes practical problems and discussion of recent cases where applicable.

Visit www.bskb.com for further seminar details. All seminars are held at BSKB’s offices in Metropolitan Washington DC. 8110 Gatehouse Road, Suite 100 East • Falls Church, VA 22042 USA p: +1-703-205-8000 • f: +1-703-205-8050 • e: seminars@bskb.com © 2013 Birch, Stewart, Kolasch & Birch, LLP. All Rights Reserved.

▲

April 8 - 12, 2013

▲

U.S. Trademark Practice Seminar

Advanced Patent & Licensing Seminar

September 23 - October 4, 2013

A two week seminar focusing on advanced topics in U.S. patent law which includes workshops and problem solving in order to illustrate the more advanced concepts with regard to prosecution, claim interpretation, and validity and infringement issues. Participants learn how to modify and determine the scope of a granted U.S. patent, as well as how to address significant licensing issues.

We developed a notably reliable and easy procedure to undertake your IP recordals with the utmost diligence. Discover more: www.dennemeyer.com/legal-services/

DENNEMEYER & ASSOCIATES

International Licensing and Technology Transfer: Practice and the Law Online

Only International Licensing and Technology Transfer: Practice and the Law delivers:

Edited by Adam Liberman, Peter Chrocziel, Russell Levine

International Licensing and Technology Transfer: Practice and the Law provides an authoritative, single-source commentary on licensing in an international context. The publication is written by practitioners for practitioners, and provides many useful insights into both the law and practice involved in international licensing. Please visit www.kluwerlawonline.com for more information. This title is also available in print, for more information go to www.kluwerlaw.com May 2010, ISBN: 9888002208

A Master Agreement to be used as a patent license template by parties entering into a licensor/licensee relationship Clause-by-clause commentary, both generic and on a country-by-country basis Insights into how clauses will likely be interpreted under the systems of the worldâ&#x20AC;&#x2122;s key jurisdictions An overview of the legislation, rules and policies regarding and affecting licensing on a country-bycountry basis Step-by-step explanations of the stages involved in preparing to enter into and negotiating a license agreement, including an in-depth discussion of both licensor and licensee due diligence Methods for determining or reliably estimating the value of the intellectual property being licensed Coverage of the tax considerations associated with the structuring of an international license Insights into antitrust issues that licensing professionals need to take into account when drafting and negotiating an international license agreement

For more info on prices for this online service, please contact our Sales department at sales@kluwerlaw.com or +31 (0)1-800-638-8437

www.e-mergeglobal.com

Offensive or Defensive Strategy? We are the patent research company

 Patent Search Services  Alert/Tracking Services  White Space Analysis  Claim Charting/Infringement Analysis  Portfolio Analysis

 Patent Licensing Support Services

 Portfolio Management

 Patent Due Diligence

 Landscaping Studies

 Patent Drafting

Reach us USA: 1-888-247-1618 India: +91-44-2252 2223 contact@e-mergeglobal.com