LES Global News June 2016 Preview

Vol. LI No. 2

June 2016

LES NEWS GLOBAL

Highlights

Meetings

Societies’ News

A D V A N C I N G

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

LESI Celebrates Members In Beijing

L

ESI wrapped up a successful meeting in Beijing with almost 500 attendees. LES China hosted the event with leadership provided by Meeting Chair Yong Li; Vice Chairs Jiangning Li and Christopher Shaowei; Secretary Yibin Feng; Program Chair Ningling Wang, along with Aimin Huo and Hui Zhao. A special event took place at the State Intellectual Property Office of the P.R.C. (SIPO), where licensing professionals learned more about the Chinese IP system.

It was also great to hear from Xia Luo, Judge of the Supreme Court of China, who emphasized China’s new openness and transparency in the courts. She said, “China cannot develop in isolation from the rest of the world. China will, as it always does, endeavor to build together with other countries, a harmonious world of enduring peace and common prosperity.” For new Board Members see Page 16. ■

Attending the meeting were Yvonne Chua, Past-President (left), Patricia A.O. Bunye, current President, with Ningling Wang, Meeting Program Chair.

LESI Past-President Jim Sobieraj (left) with SIPO Executive Mr. Wai Ku.

Society and Exceptional Service Awards

From left: Abraham G. Alegria Martinez, From left: Jim Sobieraj Jim Sobieraj and Hector Chagoya, and Pamela Cox for accepting for LES Mexico.

Exceptional Service.

From left: Jim Sobieraj and Antonio Tavira, accepting for LES Spain and Portugal.

P R O P E R T Y

Reviews G L O B A L L Y

Setting Our Sights On The 4 Cs

By Patricia A.O. Bunye, President, LES International

I

am honored to be serving you as only the third female and the first Filipino and Southeast Asian President of LESI. My LESI journey began in 1994 when, as a first year associate, I was asked by my then boss for help in reviving LES Philippines. LES Philippines was established in 1983, but fell into inactivity in the early 1990s. When my boss became President of LES Philippines, I was elected Secretary, and remained so until I became President-Elect in 2004.

During my term as President from 2006-2009, we had the privilege of hosting the LESI Annual Meeting in Manila. Incidentally, while the normal term for the LES Philippines President is two years, I was asked to stay on for an additional year, possibly because no one else wanted the additional stress of chairing the organizing committee.

Meanwhile, in LESI, my involvement in the international committees began when I was invited by Art Nutter, who I had met for the first time at the Annual Meeting in Osaka in 2002, to join him as a Vice-Chair in the Communications Committee.

President, continued on Page 2

LES Global News—Highlights President, continued from Page 1

Inside LES Global News Highlights –Pages 1-7 Society News, Committee Reports –Pages 9-14

Meetings & Delegates, Advertisers –Pages 8, 15-21

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

Copyright ©2016 Licensing Executives Society International

Thus began my introduction to the work of the wheels and cogs of LESI. Years later, I became active in the Asia Pacific Committee, which I would later chair. It is a committee that is very close to my heart because, over the years, we have seen it grow into a cohesive and united regional grouping where the work is greatly facilitated by strong personal relationships. Attending the LES International Management & Delegates’ Meetings (IMDM) and annual conferences is always something to look forward to because of the dear friends I have made within LESI. My experiences as a national society president and committee leader prepared me for work on the LESI Board where I had the privilege of working alongside stalwarts in the licensing community, all possessing a deep professional and personal commitment to LESI. Having worn different hats within LESI, I have decided to devote my term to 4Cs:

Consolidation, Competition, Continuity, Connections.

The first C is Consolidation: I will have a term of 11 months which would be

best spent not reinventing the wheel or trying to introduce earthshaking changes.

Rather, it is a time to build on our many strengths and the fantastic work that our past international presidents have left for us to carry on.

For this reason, one of the features of our 2016 Winter Planning Meeting in Lisbon was a special panel discussion featuring five LESI Past-Presidents: four present in person, namely Heinz Goddar (2000-2001), Pat O’Reilley (2010-2011), Jim Malackowski (2012-2013) and Arnaud Michel (2014-2015), and one by a pre-recorded video, Yvonne Chua (2013-2014).

The session was very valuable as it was an opportunity to learn from the collective wisdom and experience of these LESI leaders.

It was also a reminder that many challenges of the past still hound us today, possibly because of the perceived lack of institutional consistency or continuity between administrations.

Past-President Jim Malackowski commented that, as he listened to the summary of the results of the latest Long Range Planning Committee Survey at the Winter Planning Meeting in Lisbon, it was as if he was listening to the results of the survey from his term. Indeed, issues such as engagement of the national societies and declining membership are perennial concerns.

We do not lack good ideas or plans, but need to do better in turning them into concrete action. Plans should be translated into achievable, measurable and time-bound action items.

With your help, I hope to have a fruitful term that is marked by concrete action, even if we sometimes have to take small steps to reach our goals.

The second C is Competition.

It is a time for serious stock taking in view of the fierce competition we face from other intellectual property organizations which may be seen as having more attractive programs or other offerings that compete for the time and attention of our members. It President, continued on Page 3

2

Licensing Executives Society International

Jim Sobieraj passes the gavel to incoming President Patricia A. O. Bunye.

LES Global News—Highlights President, continued from Page 2 is therefore necessary to differentiate LESI from all of them and highlight the value that we can deliver, but others cannot, or which we can deliver better. We need to be clear and in-sync about what the LESI brand stands for.

President Jim Sobieraj has focused his term on the LESI value proposition and its four main deliverables: Meetings/Publications/Communications/Education. Earlier, you heard about the strides that have been made on these fronts.

The results of the Long Range Planning survey, as well as the discussions in Lisbon, confirm how critical these four deliverables are in retaining existing members and attracting new members.

Therefore, I am committed to carrying this initiative over into my term and seeking new and fresh ways to further improve our deliverables.

The third C is Continuity. Continuity not only means forging on with the good work and programs started by my predecessors, but also ensuring that LESI not only survives but thrives even under the most challenging circumstances.

The incoming Board will turn the results of the Long Range Planning Committee’s survey into a true strategic plan that will guide us through the next five to ten years. With the Board’s strategic direction, and the commitment we hope to obtain from our successors, we would like to plot a clear direction for LESI that is not dependent on personalities or preferences, but which is dictated by the growth and development that we would like to achieve for our organization.

We will likewise give the national societies and the international committees the tools they need to adopt and implement these strategic plans.

For the national societies, we will provide the means for greater interaction among the national presidents to enable the sharing of information and best practices, particularly to grow their membership and give value to their members. Although we now have fewer face-to-face international meetings, we will increase the contact between the national presidents and the board, as well as among the national presidents themselves, by means of regular teleconferences and virtual meetings. At the next Winter Planning Meeting in Bangkok, we will provide a training workshop for national presidents on leading a national society and aligning it with LESI’s strategic vision.

For the international committees, we will provide similar training for the committee leadership, particularly in making full use of the Committees Manual. After all, the committees are the workhorses of LESI and we need their dedicated, energetic and proactive efforts. As a first activity, we held a briefing on the action required from the committees in the first 30 days for this term and tools available to them to attain this.

Consistent with our goal of consolidation, we will perform an inventory of all existing resources and materials for both the national societies and international committees and make them readily available on the LESI website. Recognizing that we all have other professional obligations, we must provide easy access to all such assistance to make it as easy as possible for all of us to fulfill our LESI responsibilities.

With an eye on succession and future leadership, we must also be more conscious of documenting our decisions and processes so that we are not always starting anew.

Likewise, recognizing that our future leadership will be drawn from our Young Members, our committees will be requested to ensure that the Young Members Commitee (YMC) is amply represented. The Board will likewise determine how the YMC may play a role in crafting the aforementioned strategic plan.

Finally, the 4th C is Connections: We are not only differentiated from other IP organizations by our value proposition. I have always believed that the core strength of LESI is its diverse and highly capable membership.

When I was new to LESI, a senior member told me that the best gift that LESI had given him was that in almost every place in the world, there is an LESI member he can pick up the phone to call anytime for assistance, whether on professional or personal matters. I cannot agree with this more: many of my most valuable professional and personal relationships were a direct result of my involvement in LESI. Indeed, the membership of LESI reads like the who’s who of the leading experts on intellectual property licensing throughout the world, and we have their unique gifts and skills at our disposal.

A spirit of generosity, spirit of sharing and spirit of volunteerism pervade LESI. Ours is a purely volunteer organization, and everyone who actively participates in LESI activities gives the gift of time. Many years ago, another experienced member once told me not to be bashful about asking for help or about simply asking questions of other members because they were all too willing to share what they knew or to open doors. The only thing expected of each of us in return is to pay the favor forward.

More than the educational content or other benefits that we derive from LESI, I believe that it is the personal interaction that makes the work we put into LESI worthwhile. LESI is what it is because its members genuinely care about each other. It is the human connection that draws us to the meetings and conferences as personal interaction will always be more meaningful than an online introduction via social media. I would therefore like to devote some effort into giving LESI a more personal and human face by launching a simple campaign called “This is my LESI.” Individual members will be asked to contribute either a written submission or a video testimonial about why they joined LESI, what they have derived from membership and what has kept them in the organization.

Young members, in particular, will be asked to speak on how the YMC has worked for them. The contributions will be featured in the website, in LES Global News and used for general marketing purposes. While LESI’s members are the national societies and not the individuals, it is the stories of the individuals that inevitably draw, engage and connect us.

Indeed, it is this engagement and connection that have enabled us to work actively and tirelessly for LESI. I thank you all for your support, encouragement and good wishes. It will be an exciting year!

Patricia may be reached at patriciabunye@LESI.org. ■ June 2016

3

LES Global News—Highlights

The Scoop From Europe:

Copyright Licensing And Collective Management Organizations In The EU

By Patricia Cappuyns and Jochen Baes

M

uch has been said and written about collective rights management organizations (“CMOs”)1 in Europe.

While some view CMOs as the champions of creative minds, protecting their rights to enable them to focus on their work, others see them as unreliable money-grabbers who try to maximise profits at the creator’s expense.

A few years ago, the creators of a Belgian television program put in a request for a copyright license with SABAM, the Belgian CMO for authors, composers and publishers, using made-up music bands named after supermarket products like Kimberley Clark, Mister Cocktail & The Partymixers and Suzi Wan. Although, naturally, SABAM is only allowed to collect royalties for real artists that are actually affiliated to them, the organization happily sent out invoices on behalf of these unaffilliated, non-existing artists. Scandal ensued.

Context of the new European Collective Rights Management Directive This anecdote illustrates one of the reasons why the European Commission proposed new Directive 2014/26/EU on collective management of copyright and related rights and multi-territorial licensing.2 This Directive was scheduled for implementation by EU Member States by 10th April 2016, which gives us good reason to take a closer look.

For the Commission, it was clear that for some CMOs, there were serious concerns regarding their transparency, governance and the handling of revenues collected on behalf of right holders.

A second concern of the Commission related to the modernization of CMO operations to keep up with the fastevolving digital economy in which national borders no longer play the role they did in the analogue era. The digitalization of the creative economy creates new problems, opportunities and players due to the emergence of streaming services, the issue of cross-border rights management and the increasing tendency of entertainment companies to handle rights ‘in-house.’

1. A CMO is generally formed or appointed by copyright holders to manage the rights in their copyrighted works. They are appointed by copyright owners to administer the licensing of rights, collection of royalties and enforcement of rights on their behalf.

2. Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market (“the Directive”).

4

Licensing Executives Society International

The Commission felt that CMOs needed to provide a more efficient service to right holders and users in terms of better collection and redistribution of revenue, accurate invoicing and a higher incidence of multi-territorial licenses for an aggregated repertoire.

As usual, the European regulator is called upon to reconcile opposing interests. On the one hand, they have to respect right owners and give them the chance to fragment their works by allowing them to give rights to different organizations. Another concern is to safeguard the freedom of users by affording them the opportunity to obtain a large repertoire from a single contact point. The challenge for the EU authorities is to provide a balanced solution that takes the interests of all stakeholders into account.

The Objectives of the Directive The objectives of the Directive are based on the abovementioned considerations. First, the Directive aims to improve the way CMOs are managed by establishing some common governance, transparency and financial management standards. Second, it sets common standards for the multi-territorial licensing by of rights in musical works for online services. Third, it aims to create conditions that help expand the legal offering of online music. We discuss each in turn below.

1. Improvement of Governance and Transparency First, let’s consider the improvement of CMO governance. The Directive requires a system in which right holders may authorize any CMO to act on their behalf. Right holders should be free to choose a CMO to manage their rights regardless of where the CMO is located and of their own residence. Moreover, CMOs must allow right holders to directly grant licenses for non-commercial use themselves, give consent for specific rights and give the right to choose to withdraw certain rights.

In addition, CMOs are required to meet certain standards of governance and transparency that are intended to alleviate concern about their monopoly status. CMOs are required to provide certain information to right holders, to other CMOs with whom they might have a reciprocal agreement, and to the public. CMOs will be required to publish an annual transparency report3 and to provide specific inforEurope, continued on Page 5

3. Article 22 of the Directive.

LES Global News—Highlights Europe, continued from Page 4

mation on deductions made for ‘social, cultural and educational services.’4 Moreover, it is for the general meeting of the members of the organization to decide on policies regarding the distribution and investment of the collected revenue and the rules on deductions from the collected revenue.5 Furthermore, the organization should establish a system of supervision to monitor the activities of the management in the interest of the right holders. This may be performed within the board by non-executive board members or through a separate supervisory board.6 2. Improvement of Financial Management Standards Second, let’s look at the improvement of the financial management of CMOs. CMOs deal with money that legally belongs to the right holders. In that respect they need to establish sound financial management practices. The revenues meant for the right-holders have to be kept separate from their own assets and cannot be used for their own account. For this reason, CMOs have to ensure sufficient transparency and they are required to regularly and diligently pay up royalties to the right holders, no later than nine months from the end of the financial year in which the amounts were collected.7 Furthermore, as mentioned before, CMOs must provide detailed information on the collected revenue and the deductions. Also, users and right holders must have access to information on the repertoire a particular CMO represents to prevent situations like the one on the Belgian television program from ever happening again.

Finally, Article 13(6) of the Directive gives Member States a discretion to “limit or determine the permitted uses of non-distributable amounts” in the sense that such amounts are used in a separate and independent way in order to fund social, cultural and educational activities for the benefit of right holders.

3. Multi-territorial Licensing of Online Rights in Musical Works Next to good governance, transparency and supervision, the EU aims at stimulating a single and competitive market for online music. In 2005 the European Commission published a recommendation to the effect that users should have the possibility to obtain multi-territorial licenses instead of being required to negotiate in each European Member State separately.

Online service providers often want to cover a multitude of territories and a large catalogue of music, which makes online licensing very demanding. Many CMOs were not ready since they didn’t have the capacity to process data

4. Article 22(3) of the Directive.

5. Article 8(5) of the Directive.

6. Article 9 of the Directive.

7. Article 13 of the Directive.

from service providers on music downloads and streaming (think about Spotify and iTunes), or to match this data with their own repertoire. As the anecdote in the beginning of this contribution illustrates, such difficulties can result in incorrect invoicing. For this reason, proper databases must be set up to enable CMOs to keep track of their repertoire.8 Furthermore, the directive sets out a comprehensive list of certain qualitative criteria that a CMO must fulfill in order to demonstrate that it has the capacity to process multiterritorial licenses. The CMO will have to be able to accurately identify to the service providers the music repertoire it is authorized to license to make sure that invoices are correct and that the right holders are paid on time.9 Any CMO that complies with the standards will be able to grant multi-territorial licenses. Not all CMOs will have the resources to invest in the ICT equipment required to meet these criteria. Such organizations will have the possibility to aggregate their repertoire with the repertoire of another CMO that does comply with the criteria. The organization which receives such a request cannot refuse if it is already representing, or has offered to represent the repertoire of one or more other CMOs for the same purpose.10 In order for Member States to evaluate these criteria, the Directive does not require them to set up an a priori authorization. The Directive does require them to have competent authorities to monitor compliance by CMOs in their territor y. The authorities must have the power to impose effective, proportionate and dissuasive sanctions. 11 Another tool in the Directive is that, following a transitional period, right holders may withdraw online rights for multi-territorial licensing and grant such licenses for their own online rights if their CMO does not grant multi-territorial licenses and fails to enter into an aggregation agreement mentioned above.12 Conclusion The Directive, which can be characterized as a ‘minimum harmonization’ instrument since EU Member States may impose stricter requirements if they wish, received a warm welcome by many CMOs in the European Union. The minimum rules of the Directive highlight the key role of CMOs in negotiating deals with licensees and securing fair remuneration to the creators. It aims at setting European standards of transparency and governance, which are essential to ensure that relationships with right holders and users are rooted in mutual confidence. The future will show whether the Directive succeeds in meeting head-on the challenges of the digital era. ■ 8. Recital 41 and 42 of the Directive.

9. Article 24 of the Directive.

10. Article 30 of the Directive.

11. Article 36 of the Directive.

12. Article 31 of the Directive.

June 2016

5

LES Global News—Highlights

Certified Licensing Professionals (CLP) Welcomes 2016 Board of Governors

By Cynthia Allen

C

ertified Licensing Professionals, Inc. (CLP) announced the newly-elected 2016 Board of Governors, the leadership body for the CLP certification program. Timothy Howe (Chair), Lesley Millar-Nicholson (President-Elect), Luis Mejia (Treasurer) and Pamela Cox (Secretary) have been elected to serve as officers. They will each serve a one-year term effective January 1, 2016.

“Tim’s experience and leadership capabilities make him uniquely qualified to lead the organization, particularly at a time of continued growth throughout the licensing and tech transfer industries,” said Robin Rasor, Immediate Past Chair of the CLP Board of Governors. “As a Board, we look forward to collaborating with Tim and assisting him in his organizational goals for CLP and for the wider certification initiatives of our employers, their businesses and the professionals who represent them.”

Timothy R. Howe, Ph.D., J.D. retired from Sanofi Pasteur in 2014 to establish Howe Ventures LLC, a biotech consulting boutique, where he counsels small to mid-size clients on IP portfolio development, management and valuation, choice of entity, asset monetization and exit strategies. While at Sanofi, Tim held a number of positions, first as a patent attorney in the IP department, then in a dual capacity reporting to Legal Affairs and Corporate Development, followed by an assignment within the Strategic Projects Office in their corporate headquarters in Lyon, France. Mr. Howe earned a B.S. and a Ph.D. in microbiology from the Pennsylvania State University and the Oregon Health Sciences University, respectively. He graduated cum laude, Order of the Coif from the University of San Diego School of Law. Tim is admitted to practice law in Pennsylvania, California and Massachusetts and before the US Patent and Trademark Office, the Southern District of California, the CAFC and the U.S. ITC. He is a member of LES and AUTM, and is active in the online education committee of the AIPLA. He is the immediate past chair of the Corporate Counsel Committee of the International Law Section of the ABA and was recently inducted as a Fellow of the American Bar Foundation.

Lesley Millar-Nicholson is Director of the Office of Technology Management (OTM) at the University of Illinois at Urbana-Champaign. As Director, Ms. Millar leads the team responsible for managing the University’s intellectual property arising from the more than $600 million in research conducted on campus. She is also a member of the Board of Managers of Illinois Ventures LLC and is a member of both LES and AUTM. A native of Scotland, Ms. Millar has a B.Ed. an M.Ed and an MBA. Luis Mejia, CLP is Associate Director in the Office of Technology Licensing at Stanford University. In his 26 years at Stan6

Licensing Executives Society International

ford, he has managed the University’s two biggest patents, three major patent litigations (including two cases argued before the U.S. Supreme Court), negotiated more than 250 licenses, and evaluated more than 700 inventions, including the PageRank Algorithm which was the instrumental IP that led to the creation of Google. Mr. Mejia received his engineering degree in Mechanical Engineering from Arizona State University and is past co-chair of CLP’s Exam Development Committee.

Pamela L. Cox is a Partner and Chair of the IP Transactions practice at Marshall, Gerstein & Borun LLP. For more than 20 years, Ms. Cox has concentrated on intellectual property transactions, protection and transfer. As a patent attorney who has managed intellectual property portfolios in-house, Ms. Cox understands her clients’ intellectual property and agreement needs, and remains passionately engaged until achieving their strategic objectives. She is active in leadership positions with LES, Licensing Executive Society International (LESI) and AUTM. Ms. Cox is an adjunct professor at Northwestern University Law School in their Master of Science in Law program.

CLP also welcomes Pamela Demain to the Board of Governors. Ms. Demain is Executive Director, Corporate Licensing at Merck. A senior pharmaceutical leader with more than 30 years of worldwide experience, Ms. Demain handles the negotiation of complex transactions at all stages of development and commercialization; leads relationship development; lends strategic planning expertise; and provides global marketing/brand leadership.

The new officers are joined by Governors including: • Milton Grannatt, SymBio Pharmaceuticals.

• Bruce Harrer, Pacific Northwest National Laboratory.

• Malcolm Kaus, formerly ExxonMobil.

• Tanya Moore, formerly Microsoft.

• Sue Patow, Virginia Commonwealth University.

• Robin Rasor, University of Michigan (Immediate Past Chair).

• Art Rose, Legal Counsel, Knobbe, Martens, Olson & Bear. ■ About CLP: The Certified Licensing Professional (CLP) program is a nonprofit professional designation intended to distinguish those who have demonstrated experience, proficiency, knowledge and exposure to licensing and commercialization of intellectual property through involvement in patenting, marketing, valuation, IP law, negotiation, and intellectual asset management. The CLP program is designed to provide an inclusive environment for licensing professionals from varied backgrounds, thereby leveraging the multidisciplinary nature of the licensing field based on certain knowledge standards. There are more than 800 CLPs worldwide. For more information, visit www.licensingcertification.org.

LES Global News—Highlights

WarpSpec Grand Prize Winner of LES Foundation’s 2015-2016 International Business Plan Competition

I

n Houston, Texas the Licensing Executives Society (LES) Foundation today announced the winners of its 2015-2016 International Business Plan Competition, a program that focuses uniquely on the intellectual property (IP) aspects of business strategy.

For more than a month, LES members mentored six finalist teams from Canada, Columbia, the United States, and Uganda, on intellectual property strategy aspects of their plans in preparation for the final phase of the Competition, which was hosted at Berkeley Research Group offices, Houston, Texas. The six competitors presented business plans and videos in live virtual sessions, and responded to questions from a panel of ten on-site and at-large global experts, representing more than 200 collective years of business and IP strategy experience.

WarpSpec Diagnostics was named the Grand Prize Winner.

WarpSpec began as a North Carolina State University Jenkins MBA graduate team project with an innovative approach to detecting foodborne pathogens. They are developing an in-line system that scans meat products in real time for pathogens like Salmonella. They convincingly argued that their technology could save billions of dollars in lost product shelf life while promoting food safety. The judges cited WarpSpec for an exceptional business plan strongly supported by its IP strategy.

The Foundation’s Global Prize was awarded to Uganda-based Fruiti-Cycle, a project that began at Makerere University, Kampala, Uganda. Fruiti-Cycle is a bio-gas powered tricycle, with a 300kg carrying-capacity refrigerated courier. The project uses environmentally friendly technology to conveniently, economically, and safely transport cooled fresh fruits and vegetables to market for thousands of small farmers.

Essential Biotechnology, LLC, Medical College of Wisconsin Department of Pharmacology, earned both the Best Student Team Prize and the LES Members’ Choice Award. Essential Biotechnology has a new approach to cancer therapy based on the discovery of a molecule that serves as a nexus in regulating tumor cell survival.

The expert panel of judges included Craig Cupid, BakerHostetler; Pamela Demain, executive director, Business Development & Licensing and head, Relationship Management, Merck; Patrick Govang, technology licensing officer, Center for Technology Licensing, Cornell University; Raymond Millien, associate general counsel intellectual property, GE Oil & Gas; Mark Andrew Smith, founder, TechCrossings, LLC, a business consultancy; Gary Keller, Xomix; Hector Torres, Pragmatic Mexico; Shannon McCool, RxBio; Philip Kerr, Kerr & Nadeau Canada; and Mary Juetten, TrakLight. LES Foundation Vice President, Director of 2016 Competition Annemarie Meike, Lawrence Livermore National Laboratory, has managed the competition’s direction and development beginning in 2012. The finalist competition was held in conjunction with the Licensing Executives Society Spring Meeting, Houston, Texas.

WarpSpec will receive $10,000 toward its project; Global Prize Winner Fruiti-Cycle will receive $5,000; and Essential Biotechnology will receive a $1,000 prize for Best Student Team and $1,000 for the Members’ Choice Award. All six finalists received at least $1,000. The competition, directed and developed

by Dr. Annemarie Meike, is now in its 12th year. It is designed to partner professionals and student start-up companies, which have received less than $200,000 of investment funding, with senior leaders in the licensing and intellectual property (IP) community as a way to provide mentorship and education about business basics and best practices in IP and licensing transactions. Approved plans submitted to the competition must include a core intellectual property component and strategies describing how the intellectual property will be used to achieve overall business plan objectives. Throughout the competition, participating teams work closely with seasoned professionals to discover concepts that take many years of experience to learn.

The 2016-2017 competition will be announced in early fall.

To learn more about the LES Foundation and the International Business Plan Competition, visit www.lesfoundation.org. ■ June 2016

7

LES Global News—Meetings

2nd Pan-American LESI YMC Event

“Into the Fourth Industrial Revolution: Licensing Strategies across the Americas” Hear from Experts – Learn & Network – Dinner & DJ Event

Ottawa, Canada – June 10th, 2016 Registration is Free!

More at www.lesi.org CLP course offered on Thursday, June 9, 2016 (registration & fee information TBA) CPD/CLE accreditation (pending)

8

Licensing Executives Society International

LES Global News—Advertisers

s

Consulting DIAMS iQ Trademark

Translations IP Due Diligence

Domain Names

DI

IP Docketing Translations Domain Names

Designs

ar

ng

lti

su

ks

n Co

em

DIAMS iQ

IP Legal advice Prior art searches

ns

d Tra

Copyright

Brands

Brands

Filings

Software Solutions

A

atio Patelid nts n

EP - Va

Brands

Flat fee prosecution

Software Solutions Trademarks

Filings

Seminars

Translations

Flat fee prosecution

EP - Validation

DIAMS iQ

IP Due Diligence Filings

Strategies Domain Names

DIAMS iQ Patent Valuation

Flat fee prosecution

Patents

Descriptions

Patents

PCT - Nationalizations

Patent Annuities Designs Seminars

IP Due Diligence

Prior art searches DIAMS iQ

Flat fee prosecution

PCT - Nationalizations

Patent Mapping

EP - Validation

Portfolio Analysis

Patents Descriptions

s ing Q Fil MS i

IP Contracts

tio sla

n Tra

Q

Si

AM

DI

gs

in Fil

IP D

Co

ue Dpyright

Pate ilig nts enc e

Copyright

IP

Software Solutions

Trademarks Patents

Flat fee prosecution DIAMS iQ IP Legal advice Domain Names

Brands

gs

in Fil

ns

EP - Validation

at io

ks

Designs

Renewals

Patent Annuities

liz

ar

Consulting IP Contracts

Strategies

advice

na

em

IP Contracts Software Solutions

Descriptions

IP Legal EP - Validation DIAMS iQ TrademarksSoftware Solutio ns

Na tio

d Tra

IP Contracts

Consulting

gs

ns

C

PCT - Nationalizations

ns sig

p

- V ht EP opyrig

Prior art searches Trademark Renewals Copyright IP Legal advice DIAMS iQ EP - Validation Patent Patent Annuities Docketing Mapping

Stra teg ies F ilin

ftwCo D Fil ar escripings e tio So ns lu tio

ain la ns Dom Tra s n sig De

Leg

ht rig py Co gs in Fil

IP Contracts

De

s on n ati gns tio ansl esi D

cu

Tr t e os es igh pr rch pyr n ee a s Co tio t f t se iling ida Fla r ar ies F - Val io teg EP Pr Stra

So

IP D

Brands

Descriptions

ds t an gh Br yri

IP

Filings

Patent Annuities

Prio

Docketing

T-

Filings

t righ

y Cop

PC

Strategi

es

m Na

Brands

ht Copyriges

Diams iQ

Attorneys

Annuity

Patents

a An

Seminars Filings

Designs

s Descriptionservices

RenewalManagement Copyright Patents Software Solutions Filings

is lys ice s dvription s al aDesc tion

lio

tfo

m

Filin ain Na gs mes

Patent Mapping Portfolio Analysis Flat fee prosecution Monetization Copyright Translations s e i teg Trademarks Prior art searches a r t s ng S n ion ipt eti atio PCT - Nationalizations Copyright scr Descriptions De ock alid r Po

Copyright

Do

s che ear Domain Names

ts r ar

Tra de ma rk

DIAMS iQ Strategies

Patent Mapping

IP Legal advice

IP Contracts Descriptions

Software Solutions

Trademarks

Domain Names

Designs

e Du

ne w IP al Ma Do na ck gem etin e g nt

tio

Solu

Designs Brands Contracts Copyright

Descriptions

Copyright Patent Mapping

Trademarks

EP - Validation

IP

s

e enc

Dilig

Re

PCT - Nationalizations

Filings

s

liza tio

ns C Tra ont r de ma acts rks IP

Prior art searches Patent Mapping

Designs

Filings ins ma Do

Patents

Portfolio Analysis

Flat fee prosecution

na

on

p Ma

St ra te gi es

a ewa rk ls

Ren

e IP Contracts DIAMS iQ Trademarks war s Seminars Soft n Recordal Services

nt te Pa

Seminars PCT - Nationalizations

Pate PC D Ma nt T pp Na escripti ing tio on

Descript

pti

g pin

Co

Brands

nce

Stra te scri gies

De

s IP Contract ht pyrig

Software Solutions

Dilige

ions

Doma

Brands

right Copy

gs Filin Tradem

IP Due

EP

t men

nage

a wal M

Rene

s in Name

Trademarks Brands

Attorneys

s nd Bra IP Contracts

ing Translations app ution ht nt M rig Patent Mapping IP Legal advice ec Pate e pros t Copy fe gemen Domain Names t Descriptions la F Mana tion Patent Annuities Flat fee prosecution wal lida Rene - Va

June 2016

9

LES Global News—Meetings

Publications Survey Dear LES Member, Thank you for partaking in this important survey prepared by the Publications Committee. The Publications Committee is one of LESI Management Committees created at the 2015 LESI Annual Meeting in Brussels in order to maximize the value of LES publications to its members and the readership.

The Committee is conducting this survey to gather valuable opinions and input from LES members relating to les Nouvelles and the LESI Global News and plans to use the survey results to make improvements to LES publications.

The survey results will be presented at the 2017 LESI Winter Planning Meeting in Thailand and published in the Global News.

Sun R. Kim Chair, Publications Committee To participate in the survey go to: http://survey.constantcontact.com/ survey/a07ecqkvnxzioneiar2/start.

10

LES International Board Out With The Old & In With The New

Outgoing LESI Board Members from left: Junichi Yamazaki, Michael Lechter, Audrey Yap, Arnaud Michel, Jim Sobieraj, Patricia Bunye, François Painchaud, Eduardo de Souza, Fiona Nicolson, Omer Hiziroglu and John Paul.

Licensing Executives Society International

New LESI Board Members from left: Eduardo de Souza, Ichiro Nakatomi, Omer Hiziroglu, Jim Sobieraj, Patricia Bunye, Audrey Yap, Russell Levine, John Paul, Fiona Nicolson, and Emmanuel Gouge.

LES Global News—Advertisers

JUNE 2016

les Nouvelles JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL Volume LI No. 2

June 2016

LES NOUVELLES

Advancing the Business of Intellectual Property Globally Defining Fairness: Promoting Standards Development By Balancing The Interests Of Patent Owners And Implementers MATTEO SABATTINI — Page 46

JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL

COP 21: Historic Climate Change Agreement And Its Impact On Access And Transfer Of Green Technologies FABRICE MATTEI — Page 62

Splitting The Atom: Economic Methodologies For Profit Sharing In Reasonable Royalty Analysis DEFOREST MCDUFF — Page 70

Recent Developments In Patenting And Licensing In Latin America: Brazil, Chile And Peru CÂNDIDA RIBEIRO CAFFÉ, MARIANA ABENZA, FELIPE CLARO AND RENZO SCAVIA — Page 74

Licencing Of Patent Applications—Pre-Grant Royalty Earning MADELEIN KLEYN — Page 80

Measuring Marketing: Using Content Analysis To Evaluate Relative Value In Valuation And Reasonable Royalty Analysis DEFOREST MCDUFF AND DARYL FAIRWEATHER — Page 88

3D Printing And Public Policy JOHN F. HORNICK — Page 94

Problems That Might Arise In Connection With The Transfer Of Intellectual Property Rights - From A Hungarian Perspective MICHAEL LANTOS — Page 101

Is It All In Our Nature?

E. KATE BEREZUTSKAYA — Page 107

A Question Of Evolution WILLIAM BIRD — Page 109

$62.50/Issue

June 2016

11

LES Global News— LESI Delegates Officers President President-Elect Past-President Vice-President ® Vice-President ® Vice-President Vice-President Secretary Treasurer Legal Counsel

Patricia A. O. Bunye Peter Hess Jim Sobieraj Omer Hiziroglu Ichiro Nakatomi John Paul Audrey Yap Fiona Nicolson Eduardo de Souza Russell Levine

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 R. Kim, Seoul, Korea Masato Kobayashi, Tokyo, Japan Kenneth D. McKay, Toronto, Canada Thomas Bereuter, Vienna, Austria Frank Tietze, Cambridge, UK Eduardo C.A. de Mello e Souza, Rio de Janeiro, Brazil Chris J. Katopis, Executive Administrator Larry Plonsker, Editor 10580 Northgreen Dr., Wellington, FL 33449 Tel: +1-561-432-8814 E-mail: editor@lesi.org Carla J. Blackman & Anita Morselli-Zakrajsek Design Interface Inc. - Design & production

les Nouvelles Volume LI Number 2 (ISSN 0270-174X)

les Nouvelles is published quarterly by the Licensing Executives Society International (LESI). LESI is an association of 33 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$250/year. Please contact the Editor for further details or go to www.lesi.org/les-nouvelles/aboutles-nouvelles/non-member-subscription 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 ©2016 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.

12

Licensing Executives Society International

Delegates Andean Community Germany Enrique Berckholtz Christian W. Appelt Renzo Leonello Scavia Ingo Bruckner Arab Countries Heinz Goddar Nabil Salame Jochen Schäefer Renad Noubani Guido von Scheffer Argentina Mathias Zintler Gustavo Giay Hungary Fernando Noetinger Michael Lantos Australia & New Zealand Katalin Szamosi Albert Ferralore India Philip Heuzenroeder Rahul Verdak Jan Tennent Vishwanathan Sheshan Austria Israel Karin Hofmann Tessa Malamud Andreas Pföstl Liad Whatstein Benelux Italy Laura MacDonald Giovanni Grippiotti Achim Krebs Mattia Dalla Costa Lex van Wijk Mario Traverso Brazil Japan Cândida Ribeiro Caffé Katsumi Harashima Marcela Trigo Yorikatsu Hohokabe Britain & Ireland Ichiro Nakatomi Simon Chalkley Makoto Ogino Hayley French Colin Hunsley Junko Sugimura Jennifer Pierce Korea Chile Kwang Jun Kim Fernando Garcia Darby (YuYeon) Park Gonzalo Sánchez Malaysia China Pauline Khor Yibin Feng Brian Law Yoo Foo Anita Leung Mexico Ningling Wang Abraham Alegria Chinese Taipei Jose Luis Solleiro John R. Alison Philippines Hong-Dar Lin Leslie Anne Cruz Czech Republic Trinidad Villareal Vojtech Chloupek Poland Milos Hraba Marek Lazewski France Alicja Rogozinska Alfred Chaouat Russia Emmanuel Gougé Margarita Divina Patrick Pierre Natalia Karpova Frédéric Portal

Scandinavia Morten Balle Martin Draebye Gantzhorn Kaisa Fahllund Singapore Yu Sarn Chiew Sheena Jacob South Africa Johan Du Preez Pieter Venter Spain & Portugal José Miguel Lissén Antonio Tavira Switzerland Markus Ineichen Raymond Reuteler Martin Schneider Turkey Murat Idal Arda Karaduman USA & Canada Ned Barlas Allen Baum Pam Cox Ted Cross Pam Demain Tom Filarski Bob Gruetzmacher Ron Grudziecki Gary Keller Russell Levine Keith Lutsch Stasia Ogden Dwight Olson Brian O‘Shaughnessy Janet Pioli Paul Roberts Art Rose Henry Ward 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 Thailand Turkey USA & Canada

President

Renzo SCAVIA Talal ABU-GHAZALEH Gustavo P. GIAY Philip HUEZENROEDER Alexander CIZEK Laura MACDONALD Cândida Ribeiro CAFFÉ Hayley FRENCH Rodrigo PUCHI Anita LEUNG Yong LI John R. ALISON Vojtěch CHLOUPEK Luc SAVAGE Ursula KÖNIGER Michael LANTOS Raj HIRWANI Hananel KVATINSKY Roberto DINI Ichiro NAKATOMI Kwang Jun KIM Chiew Lan CHEAH Jose Luis SOLLEIRO Maria Trinidad P. VILLAREAL Jakub MROZOWSKI Sergey DOROFEEV Martin D. GANTZHORN Suresh SACHI Peter VENTER Susana Bayon PLAZA Raymond REUTELER Wilaiporn CHETANACHAN Samir DELIOMANLI Jeffrey S. WHITTLE

Secretary

Enrique BERCKHOLTZ Nabil SALAMÉ Ignacio Maria BERETERBIDE Jan TENNANT Guillemette VITAL-DURAND Paula Mena BARRETO Simon CHALKLEY Hermes TORRES Rosita LI Yibin FENG Horng-Dar LIN Alena KODRASOVA Anne Charlotte LE BIHAN Klaus HAFT Katalin DERZSI Sunil KRISHNA Dalit SAGIV Corrado BORSANO Kiyotaka WATANABE Hyoseon CHOI Tamara Lee CIAI Carlos TRUJILLO Reefia MITRA-VENTANILLA Monica KACZMARSKA Velery MEDVEDEV Olli PEKONEN George HWANG Darren MARGO José Miguel LISSÉN Stefan KOHLER Darani VACHANAVUTTIVONG Evren BUKULMEZ Arthur ROSE

LES Global News— LESI Delegates

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

2016

May 13–15 LESI Delegates Meeting China World Hotel Beijing, China May 15–18 LESI Annual Meeting China World Hotel Beijing, China June 10 LESI YMC– 2nd Pan-American Event Ottawa, Canada September 4-6 LES Scandinavia Annual Conference Scandic Park Hotel Helsinki, Finland

LESI Management Committees Chairs & Co-Chairs Audit Awards Communications Education

2017

LESI 2017 Annual Meeting Paris, France

October 22–25 LES (USA & Canada) 2017 Annual Meeting Chicago, Illinois U.S.A.

2018

LESI 2018 Annual Meeting San Diego, California U.S.A.

October 14-17 LES (USA & Canada) 2018 Annual Meeting Boston, Massachusetts U.S.A.

Endowment External Relations Investment IP Maintenance Legal Long-Range Planning Meetings Membership Nominations Publications

Peter Hess Heinz Goddar Ron Grudziecki Shawn Jacka Allen Baum Martin Schneider Art Rose Philipp Dreier Pat O’Reilley Giovanni Grippiotti Michael Lechter Junichi Yamazaki Russell Levine Sergey Dorofeev Audrey Yap Felix Grether Arnaud Michel Sun R. Kim

LESI Industry, Professional & Regional Committees Industry

September 7-9 LES Pan-European Conference Hilton Hotel Bosporus Istanbul, Turkey

Chemicals (CEEM) Consumer Products High Tech

October 23–26 LES (USA & Canada) 2016 Annual Meeting Vancouver, Canada

IUGT Life Sciences

Rashid Kahn Achim Krebs Cecilia Lou Christian Manthey Keith Lutsch Stefan Schohe Christopher Shaowei Karin Hofmann Pamela Cox

Professional International Past-Presidents 1974 1975 1976 1977 1978 1979 1980 1981 1982 1983 1984 1985 1986 1987

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 P. Hug

1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001

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 H. Goddar 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 2013 K. Nachtrab 2014 Y. Chua 2015 A. Michel

Copyright Licensing Dispute Resolution Patent & Tech Licensing Trademarks, Designs and Merchandizing Valuation

Abraham Alegria John Alison Patrick Terroir Johan Du Preez Stefan Völker David Drews David Jarczyk

Regional Americas Africa and Middle East Asia-Pacific European

Martha Lopez Orue Dwight Olson Mohammed Al-Ansari Kevin Dam Pauline Khor Ningling Wang Bruno Vandermeulen Jose Miguel Lissen

Ad Hoc Committees Global Technology Impact Forum Young Members Congress

Mark Wilson Jean-Hyacinthe de Mitry

June 2016

13

LES Global News—Advertisers

LESI Member Benefit:

LESI Member Discount :::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::20% OFF

20% Off Bloomberg BNA Treatises, Including These BRAND NEW Publications NEW!

Patents After the AIA: Evolving Law and Practice

By Alan J. Kasper, Brad D. Pedersen, Ann M. Mueting, Gregory D. Allen, and Brian R. Stanton American Intellectual Property Law Association (AIPLA) This comprehensive new treatise provides a self-contained, single volume desk-reference and guide to tactical and strategic patenting decisions for patent professionals after the most comprehensive revision to U.S. patent law since 1952, the America Invents Act (AIA). The AIA fundamentally altered U.S. patent law by transitioning from a “First-to-Invent” to a “First-Inventor-to-File” patent system. The pragmatic style of Patents After the AIA: Evolving Law and Practice provides insights and advice for patent application preparation and filing, post-issuance review and challenges to patentability, and ongoing international patent law harmonization. It also provides historical and legislative discussions and practical foundational discourses.

Patents After the AIA: Evolving Law and Practice includes the following unique content: • More than 350 “Practice Tips” to highlight key points and serve as warnings and guideposts to the patent professional • More than 100 original graphical timeline scenarios provide a myriad of different fact patterns analyzed under the AIA and compared to pre-AIA outcomes • In-depth analysis and policy discussions explain complex changes to the law • A glossary of more than 400 terms and phrases with concise definitions and descriptions, to enhance the precision and consistency of patent law discussions regarding the AIA 2016/1,916 pp. Hardcover with Electronic Appendices/ISBN 978-1-61746-498-0 Order #2498/List Price: $385.00/Special LESI Member Discount Price: $308.00 Visit www.bna.com/bnabooks/aia for more detailed information.

NEW EDITION!

Schwartz’s Patent Law and Practice, Eighth Edition

By Robert J. Goldman

Patent Law and Practice was first published by the Federal Judicial Center in 1988 as a one-volume introduction to patent law for federal judges. Since that time, judges and their law clerks have come to rely on this reference for up-to-date information on patent law as it has evolved in response to the courts, Congress, and changes in practice at the Patent and Trademark Office (PTO).

The all-new Eighth Edition summarizes and analyzes the most recent developments in the law, including the sweeping changes resulting from the Supreme Court and Federal Circuit decisions that have: • Redefined the concepts of patent-eligible subject matter, paving the way for new validity challenges to patents covering software, and business methods, as well as those for diagnostic methods and other biotechnology inventions (the Mayo/Myriad/Alice trilogy and the Federal Circuit and District Court decisions that have implemented the new Supreme Court analysis) • Redefined the standards for resolving challenges to claim indefiniteness and appeals of District Court claim construction decisions (Nautilus v. Biosig Instruments and Teva v. Sandoz) • Redefined the concept of the “exceptional case” for which a successful litigant may recover attorney fees (the Octane Fitness and Highmark decisions) The Eighth Edition also analyzes the interplay between District Court litigation, which is the focus of this book, and the new procedures for post-grant challenges implemented by the PTO since enactment of the Leahy-Smith America Invents Act in 2011.

2015/432 pp. Softcover/ISBN 978-1-61746-755-4 Order #2755/List Price: $185.00/Special LESI Member Discount Price: $148.00 Visit www.bna.com/bnabooks/plp for more detailed information.

To order these and other treatises available from Bloomberg BNA at your special 20% LESI member discount, visit www.bna.com/bnabooks/lesi.

14

Licensing Executives Society International

LES Global News—Advertisers

RISK TAKERS

INTELLECTUAL PROPERTY

Insuring disruption so you stay in business

45615TMK IP Les Nouvelles AW.indd 1

www.tokiomarinekiln.com

June 2016 15/04/2016 10:35 15