Vol. LIII No. 4
Decemberr 2018
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
LES South Africa
LES South Africa Event Highlights
T
he long-awaited Intellectual Property Policy of the Republic of South Africa Phase I was published and confirmed the important change to the patent system by introducing examination and opposition proceedings. The mechanism for implementation is under review and Phase II will address issues identified in the inbuilt agenda and deliberate upon the most efficient means of implementing the policy proposals. LES South Africa celebrated World IP
Day in Cape Town and Johannesburg venues in April and May respectively. This year the theme was “Powering Change: Women in Innovation and Creativity” and was well attended by our members and guests. The LESI International Conference in San Diego in April/May received a talk from one of our members, Dr. Kerry Faul, Head of National Intellectual Property Management Office (NIPMO), on technology transfer and management thereof in view of the South African IP Rights Act. The AGM was held in August during which the new Board and LES South Africa Executive Committee were elected. On the LES education front, it has Afternoon Talk! On 11 October 2018, LES South Africa arranged an afternoon talk and networking event. The speaker, Michael Fichardt, cofounder and CEO of OneBio, an African biotech incubator and alumnus of Singularity University, presented a talk on the exponential advances in technology and how it impacts the world around us. From tissue culture meatballs to the inevitability of self-driving vehicles and drone delivery of blood transfusion products in Nigeria. As an indication of the acceleration in the innovation space, Ray Kurzweil’s law of accelerating returns were quoted, which proposes that we won’t experience 100 years of progress in the 21st century but rather 20,000 years’ of progress at today’s rate. The interactive discussion with the audience was concluded with the thought that humankind would need to ensure that our tenets of humanity and our individual and collective values are not lost along the way.
been quite a busy year with afternoon talks on relevant topics and a newly developed IP Valuation Advanced Course in June. In October, we hosted an interesting talk by Michael Fichardt (see insert below). Our members publish articles in les Nouvelles on current topics regularly and Dr. Kleyn’s article on BEPS and IP was featured in the June edition.
New Approaches The newly elected board of LES South Africa has made its committee portfolio allocations for 2019. The aim for the new year is to more actively engage our members, enhance visibility and growth of membership through marketing initiatives. We hope to host the LESI President during our AGM in August in 2019. Two new committees will be mobilized in 2019: •The YMC managed by Chyreene Truluck and Robynne Zevenster who are planning some exciting events for our young members; and •Life Sciences head up by Dr. Joanne van Harmelen. The opportunity was identified in view of the strong presence amongst LES South Africa members in the life sciences. It is anticipated that the planned mentoring, training and networking sessions focusing on IP transactions, interests and challenges within the life sciences, and leveraging the very active LESI Life Sciences Committee resources will also attract new membership to the society. Our Board and allocated committees are pictured on Page 11. From South Africa, we wish our LES family a blessed festive season and a 2019 filled with LES events. ■
LES Global News—Highlights
LES International Calendar Meetings & Events 2018 Nov 11-14 Nov 12-13 Nov 26-28 Nov 30 Dec 04 Dec 04 Dec 04 Dec 05 Dec 05 Dec 06 Dec 06 Dec 11 Dec 12 Dec 17
LES Asia-Pacific Annual Conference LES Benelux Licensing Course LES Britain & Ireland Evening Dinner Meeting LESI YMC 1st Asia Pacific Conference LES France Annual Meeting & Conference LES ANZ "Innovation is Just Good Business—VIC" LES (U.S.A. and Canada) "Venture Capital Deals of 2018 and 2019—Looking Back and Ahead" LES (U.S.A. and Canada) "Artificial Intelligence and Machine Learning: Negotiating Product, Service, and Marketing Agreements" LES (U.S.A. and Canada) "Holiday Cocktail—Annual Wine Tasting" LES Russia "Licensing as an Effective Tool for Business Development" LES (U.S.A. and Canada) "Salt Lake City Chapter Relaunch: A Cutting Edge Social Event" LES Britain & Ireland "IP Law Update 2018" LES (U.S.A. and Canada) "IP Year in Review" LES (U.S.A. and Canada) "IP Valuation for Emerging Enterprises: the why and the how"
New Delhi
2019 Jan 25-27 Feb 1 Mar 28 Mar 28 May 15-17 May 24-26 May 26-28 Nov 28 Nov 29
LESI Winter Planning Meeting LES Germany General Assembly 2019 LES Germany and VPP Spring Conference 2019 LES Germany Young Members Spring Workshop 2019 LES ANZ Annual Conference 2019 LES International Management and Delegates’ Meeting (IMDM) - Japan LES International Annual Conference - Japan LES Germany Young Members Fall Workshop 2019 LES Germany Fall Conference 2019
Miami
2020 May 17
2020 LES International Annual Conference
Berlin
LES Events Around the Globe www.lesi.org/events/events-around-the-globe
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Licensing Executives Society International
The Hague London Hong Kong Paris Melbourne Philadelphia Webinar Montréal Moscow Salt Lake City Manchester Palo Alto Webinar
Düsseldorf Frankfurt Frankfurt Brisbane Yokohama Yokohama Nuremburg Nuremburg
LES Global News—Highlights
President’s Message By François Painchaud, President, LES International
Dear Friends, Meeting many of you through my travels will undeniably be the most rewarding experience as LESI President. The LES Turkey IP Camp was a great success and I would like to congratulate the whole team for the organisation and the excellent speakers. We discussed many strategic elements of the IP transactions arena, the “Business of IP.” We also touched upon the management of key strategic elements occurring in the growth of a business. The different presentations on the similarities and differences between Turkish legislation and others around the world were also stimulating for an organisation whose aim is to build business and law bridges. The LES (U.S.A. and Canada) Annual Meeting was held in Boston this past October. LES can take pride in putting together, year over year, a world class conference, dealing with topics of business associated with our very diverse sectors such as life sciences, chemistry, high tech (which is also broad by itself)) and university transactions. I also travelled to Washington, to meet with the leadership of the AIPLA at the occasion of their Annual Meeting. We discussed and reaffirmed our goals of collaborating together and developing tools such as international contract templates and other elements for our common benefit. From this collaboration, LES members globally will be able to have access to a series of internationally focussed licensing agreements. Other support will be adopted for global transactions. Thank you to all LES members from around the world who are hard at work in the development of such tools. Our yearning is to deliver better services to all LES members. That will begin with a more comprehensive LES Global News. Please take some time to read this issue of Global News carefully to find valuable information on all events occurring around the world. In the near future, we will bring even more local information. We are also planning a pilot project to align the International Database on a variety of websites to put the information at the fingertips of all individual members. The test will be made in collaboration with LES (U.S.A. and Canada). We look to expand it to other Societies with specific websites shortly thereafter. As I am writing these notes, I have travel plans to various countries in Europe and Asia including Thailand, India and China before Christmas. I look forward to summarising these travels in the next edition of LES Global News. Let me know how LESI can “up its game” on services that matter to you. You can write directly to me at president@lesi.org. Sincerely, François Painchaud A few members of the LES International Board at the LES (U.S.A. and Canada) Annual Meeting in Boston. From left: Pamela Cox, VicePresident; François Painchaud, President; Fiona Nicolson, President-Elect; and Rob McInnes, Secretary.
Inside LES Global News Highlights –Pages 1-4 Society News, Committee Reports –Pages 5-7
Meetings & Delegates, Advertisers –Pages 8-15
Memoriam –Pages 4
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/lessocieties/les-global-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 ©2018 Licensing Executives Society International
LESI President François Painchaud at the LES Turkey IP Camp.
December 2018
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LES Global News—Meetings
Annual Conference: Sunday, May 26 – Tuesday, May 28, 2019 International Management & Delegates Meeting (IMDM): Friday, May 24 – Sunday, May 26, 2019
LESI 2019 Annual Conference Yokohama, Japan May 26-28, 2019
www.lesi.yokohama
Create An IP Culture – Open For Business Welcome to the LESI Annual Conference François Painchaud, President, LES International & Lawyer/Partner, ROBIC LLP
Workshop Highlights
• Licensing and Litigation in the New European Landscape • FRAND Mock Appeal—Shedding Some Light on FRAND • Life Sciences: Acquisition of companies versus licensing in, with examples and discussion • Mock Mediation of IP License Dispute
Mr. Makoto Ogino President, LES Japan & Professor Tokyo University of Science MOT
• Resolving SEPs Disputes: Comparing Litigations in Court and the Use of ADR • Blockchain and Cryptocurrency: New Tools for the Digital Economy • Report on Key Findings of LESI’s Comparative Study on Global Patent Enforcement & Trends • European Committee presents: Do’s and Don’ts in the Protection of Trade Secrets and Transfer of Know-how on Cross Border Transactions: A Practical Overview
Meeting Venue
• Environment, Energy, Materials, Chemicals (EECM) presents: What is Your Open Innovation Strategy to Address the Greatest Challenges? • Copyright Licensing: The Use of Real World Assets on Video Games • Global Patent Strategy of Asian Companies • Brand Strategy of Asian Companies—OEM or Private Branding • Artificial Intelligence—What is it, how do you own it and license it? • How Big Data, IoT and AI impact Consumer Products • Artificial Intelligence: A Global and Strategic Update on the IP Behind the Disruption
Deadline for Early Bird Registration: January 17, 2019 Closing Date of Online Registration: May 13, 2019 After May 14, On-site Registration will be available at the venue. www.lesi.yokohama/registration/
LESI 2019 Annual Conference Organizing Committee Email: conference@lesi.yokohama
December 2018
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LES Global News—Advertisers
DECEMBER 2018
les Nouvelles JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL
LES NOUVELLES
Advancing the Business of Intellectual Property Globally Special Issue: International Patent Enforcement
JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL $62.50/Issue
Volumn LIII No. 4
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www.lesi.org
December 2018
LES Global News—Advertisers
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LESles Global News—Advertisers News —Highlights
LESI Member Benefit:
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Intellectual Property, Software, and Information Licensing: Law and Practice, Second Edition By Xuan-Thao N. Nguyen, Robert W. Gomulkiewicz, and Danielle M. Conway Successfully identify, acquire, and transfer rights to protected IP through licensing. Unlike other licensing treatises, which focus on either drafting practice or theory, this treatise draws from the authors’ wealth of professional expertise to develop a balanced treatment that is both practical and theoretical in its approach. New in the Second Edition: comprehensive coverage of licensing as a critical transaction model in the information economy; all Supreme Court and important judicial decisions on licensing of intellectual property and software; highly relevant administrative decisions on government’s intellectual property procurements and licensing; current law on the intersection of bankruptcy and licensing of intellectual property; helpful information for drafting and analyzing license agreements; and more. In addition, new sample contracts added in the Second Edition include: Copyright Assignment and Transfer Agreement; Simple Assignment of Copyright Agreement; Patent Assignment and License Back Agreement; Patent Rights Master Agreement and Research License Agreement; Patent Cross-License Agreement; Source Code License; and Trademark and Copyright License Agreement (Asset Purchase Transaction or Spin-Off Transaction). Contracts are in print and downloadable from an online appendix. Visit www.bna.com/bnabooks/ipsi for more detailed information. 2018/Approx. 2,000 pp. Hardcover with Online Appendix/ISBN 978-1-68267-488-8/Order #3488/$495.00 LESI Member Discount Price: $396.00
For more information about Bloomberg Law books, call 800.960.1220 • www.bna.com/bnabooks/LESI
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les News—Meetings
LESANZ Annual Conference • 15-17 May, 2019 • Meeting Venue: Howard Smith Wharves • Brisbane, Australia
December 2018
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LES Global News— LESI Delegates
Officers
®
President President-Elect Past-President Vice-President Vice-President
François Painchaud Fiona Nicolson Peter Hess Tatiana Campello Pamela Cox
Vice-President Vice-President Secretary Treasurer Legal Counsel
Society Officers
Delegates Andean Community Japan Enrique Berckholtz Katsumi Harashima Renzo Leonello Scavia Yorikatsu Hohokabe Arab Countries Ichiro Nakatomi Makoto Ogino Nabil Salame Junko Sugimura Renad Noubani Korea Argentina Kwang Jun Kim Gustavo Giay Darby (YuYeon) Park Fernando Noetinger Australia & New Zealand Malaysia Albert Ferraloro Pauline Khor Duncan Ferguson Brian Law Yoo Foo Mark Pullen Mexico Austria Abraham Alegria Karin Hofmann Jose Luis Solleiro Andreas Pföstl Philippines Benelux Leslie Anne Cruz William (Bill) Bird Trinidad Villareal Laura MacDonald Poland Achim Krebs Marek Lazewski Brazil Alicja Rogozinska Cândida Ribeiro Caffé Russia Marcela Trigo Margarita Divina Britain & Ireland Natalia Karpova Simon Chalkley Scandinavia Hayley French Colin Hunsley Morten Balle Jennifer Pierce Martin Draebye Gantzhorn Kaisa Fahllund Chile Fernando Garcia Singapore Gonzalo Sánchez Yu Sarn Chiew China Sheena Jacob Yibin Feng South Africa Anita Leung Johan Du Preez Ningling Wang Pieter Venter Chinese Taipei Spain & Portugal John R. Alison José Miguel Lissén Hong-Dar Lin Antonio Tavira Czech Republic & Slovakia Switzerland Vojtech Chloupek Markus Ineichen Milos Hraba Raymond Reuteler France Martin Schneider André-Pascal Chauvin Turkey Anne-Charlotte Le Bihan Patrick Pierre Murat Idal Laurance Le Texier Arda Karaduman Germany U.S.A. and Canada Christian W. Appelt Ned Barlas Ingo Bruckner Allen Baum Heinz Goddar Pam Cox Jochen Schäefer Ted Cross Guido von Scheffer Pam Demain Mathias Zintler Tom Filarski Hungary Bob Gruetzmacher Michael Lantos Ron Grudziecki Katalin Szamosi Gary Keller India Russell Levine Santosh Mohanty Keith Lutsch Richa Pandey Stasia Ogden Dwight Olson Israel Brian O‘Shaughnessy Tessa Malamud Liad Whatstein Janet Pioli Paul Roberts Italy Art Rose Ercole Bonini Henry Ward Sergio Lasca Jeff Whittle Mario Traverso
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Licensing Executives Society International
Christopher Shaowei Jean-Christophe Troussel Rob McInnes John Paul KJ Kim and Russell Levine
Chapter Andean Community Arab Countries Argentina Australia & New Zealand Austria Benelux Brazil Britain & Ireland Chile China-Hong Kong China Chinese Taipei Czech Republic & Slovakia 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 Albert FERRALORO Alexander CIZEK William E. BIRD Marcela TRIGO Simon CHALKLEY Fernando GARCÍA Charmaine KOO Zhongqi ZHOU Vincent SHIH Petra de BRANTES(Korejzová) Anne-Charlotte LE BIHAN Christian W. APPELT István MOLNÁR Raj HIRWANI Hananel KVATINSKY Mattia DALLA COSTA Makoto OGINO Kwang Jun KIM Michelle Loi Choi YOKE Hector E. CHAGOYA Anthony B. PERALTA Alicja ROGOZINSKA Vitaliy KASTALSKIY Sonja LONDON George HWANG Madelein KLEIN Susana Bayon PLAZA Raymond REUTELER Alan ADCOCK Murat IDAL Bob HELD
Secretary Enrique BERCKHOLTZ Nabil SALAMÉ Ignacio Maria BERETERBIDE Michael COSSETTO Thomas ADOCKER Jurriaan JANSEN Cedric SIKANDAR Colin HUNSLEY Francesca RODRIGUEZ Michael LIN Aimin HUO Emily LEE Denisa ŠVECOVÁ Patrick PIERRE Stephanie PAUTKE Zsófia KEREPESI Richa PANDEY Dalit SAGIV Dario PASCHETTA Masaki HATANO Dookyu KIM Dennis Tan Boon LENG Manuel MARQUEZ Celyne Klaire L. ESDEN Jakub MROZOWSKI Sergey DOROFEEV Olli PEKONEN Lionel TAN Darren MARGO José Miguel LISSÉN Stefan KOHLER Darani VACHANAVUTTIVONG Evren BUKULMEZ Kevin SPIVAK
les Nouvelles Volume LIII Number 4 (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 non-members for US$250/year. Please contact the Editor for further details or go to www.lesi.org/les-nouvelles/about-les-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 ©2018 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.
LES Global News— LESI Delegates LESI Management Committees
Licensing And Intellectual Property Organizations Meetings
Audit
Ted Cross
For more information on LESI Meetings, go to www.lesi.org
Awards
Kevin Nachtrab
Communications
Omer Hiziroglu
Education
Mattia Dalla Costa Natalie Raffoul Martin Schneider
External Relations
Audrey Yap
2019
January 25-27 LES (U.S.A. and Canada) Winter Planning Meeting InterContinental Miami Miami, FL U.S.A. May 26-28 LES (U.S.A. and Canada) 2019 LES International Annual Conference Yokohama, Japan October 20–23 LES (U.S.A. and Canada) 2019 Annual Meeting Marriott Desert Ridge Resort & Spa Phoenix, AZ U.S.A.
International Past-Presidents 1974 1975 1976 1977 1978 1979 1980 1981 1982 1983 1984 1985 1986 1987 1988
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 D. Ryan
1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003
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 T. Sueur M. Jager
2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018
les Nouvelles Editorial Review Board Chair: Rodney DeBoos, Melbourne, Australia Lex van Wijk, Amersfoort, Netherlands Heinz Goddar, Munich, Germany David Drews, San Diego, California U.S.A. Sun R. Kim, Seoul, Korea Masato Kobayashi, Tokyo, Japan Kenneth D. McKay, Toronto, Canada Thomas Bereuter, Vienna, Austria Fernando Noetinger, Buenos Aires, Argentina Frank Tietze, Cambridge, United Kingdom 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
J. Gulliksson W. Manfroy P. Chrocziel R. Grudziecki C. Fukuda A. Liberman P. O’Reilley A. Lewis J. Malackowski K. Nachtrab Y. Chua A. Michel J. Sobieraj P. Bunye P. Hess
Chairs & Co-Chairs
Investment
Jim Sobieraj
IP Maintenance
Rinaldo Plebani Michael Lechter
Legal
Russell Levine Kwang Jun Kim
Long-Range Planning
Emmanuel Gougé Sherry Rollo David Swain
Meetings
Hayley French Laura MacDonald
Membership
Heinz Goddar Yorikatsu Hohokabe
Nominations
Patricia A.O. Bunye
Publications
Hector Chagoya Rodolfo Martinez
LESI Industry, Professional & Regional Committees Industry Consumer Products
Junko Sugimura
EEMC
Rush Khan Tanja Sovic
High Tech
Keith Lutsch Alfred Yip Sonja London
IUGT
Claire Driscoll
Life Sciences
Gary Keller Hayley French
Professional
Copyright Licensing
Ken McKay Abraham Alegria
Dispute Resolution
Tilman Müller-Stoy
Patent & Tech Licensing
Patrick Terroir
Trademarks, Designs and Merchandising IP Valuation
Stefan Völker Rodolfo Martinez Andrè Gorius
Regional Americas
Veronica Canese
Asia-Pacific
Yu Sarn Chiew Ningling Wang
European
Jose Miguel Lissen Emmanuel Gougé
Ad Hoc Committees Global Technology Impact Forum Young Members Congress
Mark Wilson Natalie Raffoul
December 2018
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LES Global News—Advertisers
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Search Matters 2019 6-8 May 2019 Munich, Germany epo.org/search-matters
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