LES Global News December 2015 Preview by LES International

Vol. L No. 4

December 2015

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

Don’t Wait:

The Purposes Of

By Bill Elkington and Robert F. Held

G L O B A L L Y

LES Standards Program

Register Now! ake the journey to a place that you won’t soon forget: Beijing, China. LESI welcomes you to the 2016 Annual Conference, May 15-18, at the five-star China Grand Hotel. Meeting registration is now open online at www. lesi2016.org/registration.php. Your registration fee includes admission to all sessions, workshops and exhibitions; coffee breaks and lunches; one accompanying person; cultural night dinner for the registrant and their guest; and a farewell night dinner for the registrant and their guest. Hotel reservations can be made directly with the China World Hotel at China World Trade Center: www.shangri-la.com/beijing/chinaworld/.

P R O P E R T Y

Reviews

he purposes of the LES Standards Program are to: • Raise the standards of business conduct in IP-oriented transactions. • Improve the practice of IP management and by doing so mitigate its risks. • Reduce the cost and time required to do IP-oriented transactions and IP management. • Protect and preserve the value of IP for innovative individuals and enterprises. –Thereby encouraging investment in innovation and enhancing the economic well-being of society. The Motivation for LES Standards Today, in North America and across the world, innovation is the principle source of differentiated and defensible advantage for operating companies. Innovation is the basis of advantaged products and services, and it drives sales and profits. It is the source of jobs. It is the engine of the economy. Yet the intricacies of the innovation economy are not well-understood by our political, financial, and business leaders. For example, while intellectual property (or intangible) value makes up approximately 70 percent of the equity value of our publicly traded companies, the Generally Accepted Accounting Principles (GAAP)—the standards by which the U.S. Securities and Exchange Commission manages reporting by publicly traded companies—treat the accounting for intangible value almost as an incidental issue. In addition, in business schools around the world, intellectual property management is not treated seriously as a business subject. In fact, to the extent it is dealt with at all, IP is taught as a legal subject, not as the largest component of value in the modern corporation. IP valuation, the business processes employed in IP management, and IP strategy are barely touched upon. No wonder IP and its value are nearly invisible to most of our business, financial, and political leaders. They have little, if any, instruction in it, there is little accounting for it. Very often, no one has business responFor President sibility for its protection and management, Jim Sobieraj’s outside of the attorneys. message, see The LES Standards Program is therefore

Page 2.

LES Standards, continued on Page 3

LES Global News—Highlights

More Progress On The LESI Value Proposition

Inside LES Global News Highlights –Pages 1-8 Society News, Committee Reports –Pages 9-16

Meetings & Delegates, Advertisers –Pages 8, 18, 22-25

New Members, Memoriam —Page 17

Book Review —Page 19-21

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

By James Sobieraj, President, LES International

he LESI Board continues to focus its efforts on the most important LESI deliverables that provide the LESI value proposition. Publications are one of LESI’s most important deliverables because it includes les Nouvelles and LES Global News, which touch every one of the 9000-plus LES members around the world. The chair of the Publications Committee, Sun Kim, has drafted the following mission statement, which has been approved by the LESI Board of Directors: The mission of the Publications Committee is to (i) manage, review, and improve the quality of LESI publications to provide value to the membership as a whole; (ii) oversee general editorial policy, engage in strategic planning and development of the LESI current and future publications, and recommend and work with partner entities and external organizations when appropriate to generate value to members or sections of members; and, (iii) periodically identify and initiate opportunities for publishing work derived from the LESI Committee and Member society activities so that maximum value is extracted and delivered to as large a section of the membership as is appropriate. The goals of the Publications Committee for 2015-2016 are to review the publications of LESI from the point of view of delivering value to the membership by: • Identifying and making recommendations to the Board related to the needs and adequacy of the publications of LESI, including the need for the initiation of new efforts and for curtailment of ongoing efforts no longer serving their purpose • Monitoring the compliance with contracts for electronic distribution of les Nouvelles • Reviewing plans for all LESI publications, including financial implications and modes of publication such as by electronic means • Maintaining and developing the publication and dissemination of les Nouvelles working closely with the Editorial Review Board of les Nouvelles • Developing and implementing a program for identifying “hot topics” and initiating and organizing periodic publications involving LESI Committees and Member Societies and their members • Recommending publications to be produced, their form and their periodicity • Investigating and making recommendations on how to reduce printing and mailing costs • Studying different ways of advertising and marketing publications • Advising the Board on how to improve the standard of publications • Studying and building the archives of LES publications online and offline • Working to clarify the role of the Publications Committee in the organization and to serve as a conduit of information between LES leadership and LES members and LES Societies.

Society Visits Since my last column, I have had the privilege to attend the Young Members Congress held in Chicago and the LES Pan Asia Conference in Kuala Lumpur. In addition to great content and networking, what made these meetings stand out was the large number of young, enthusiastic LES members from all around world actively participating in these meetings. Also, kudos to LES (USA & Canada) for hosting a very successful annual meeting in New York. Approximately 1000 persons attended the meeting. My best wishes to all LES members for the rest of 2015.■

Licensing Executives Society International

LES Global News—Highlights

LES Standards, continued from Page 1 conceived to develop and teach best practices in many aspects of IP management and, where appropriate, offer enterprises the opportunity to differentiate themselves based on their use of these best practices. LES Standards will be to IP management what ISO 9001 is to quality management. LES Standards is conceived to offer a toolkit with which enterprises can improve the way they do IP transactions, the way they protect their innovation, the way they use IP in their business strategies, and the way they manage third party IP. Areas of Standards Development The first three standards committees being established are the following, with the following standards areas being actively considered: Patent Licensing Entity Standards • Ethical conduct in patent licensing • License templates • Patent assignment agreement templates • Stand-still agreement templates • Composition of claim charts IP Brokerage Standards • Ethical conduct in IP brokerage • IP brokerage agency agreement templates • Due diligence steps in IP brokerage • Service minimums in IP brokerage IP Protection in the Supply Chain Standards • IT security • Physical security • Employee training • IP management maturity assessments • Audit • Reporting The standards areas listed for each committee above are suggestions for consideration of the committees. It will be up to the committees to decide what areas they would like to work on (and in what order it would be best to work on them) to achieve the purposes of the LES Standards Program. It is important to keep in mind that all journeys begin with relatively small steps, and this will likely be the case with LES Standards development work. The earlier standards may be easier to develop consensus on than standards developed several years from now. Will there be additional standards committees that we will want to establish over time? Yes, certainly. One broad area that comes to mind is IP valuation. There will be others. The Cost of LES Standards Participation There will be an annual membership fee of $500 charged to each enterprise that participates in an LES Standards committee. For that flat fee, each enterprise may provide as many participants as it likes and may participate in as many committees as it likes. However, there will only be one representative from an enterprise empowered to vote on each committee’s work. The value proposition for companies considering an LES Standards Enterprise Membership is the following: • LES Standards Enterprise Members will have a chance to help set LES’s standards strategies and to shape the draft standards themselves, thus ensuring that they have a voice at the table in the early stages. • By being involved early on, LES Standards Enterprise Members will have early insight into, and a head start on, implementation and compliance.

• LES Standards Enterprise Members will be able to purchase copies of the published standards and will be able to register for LES standards training at deeper dis- counts than others. We are charging an LES Standards annual enterprise membership fee because we have to hire additional staff to support the work, to purchase software that we do not have, and to incur additional related costs. It is important to know that other standards development organizations (SDOs) have similar fee levels. Please keep in mind that these fees enable an enterprise’s named participants to participate in the LES Standards committees. Individuals wanting membership access to other LES resources (such as the royalty rate surveys, the compensation survey, the searchable LES library of meeting content going back many years, a searchable database of archived LES Nouvelles articles, the LES membership directory, and LES webinars) will need to take out an individual LES membership. Conclusion Until now, the IP management community—the community of experts in IP management—has not organized itself to speak with one voice in answer to urgent queries from around the world as to what should be done in the licensing of patents, what should be done in the selling of patents, what should be done from a business process perspective to protect other-party IP. It has not organized itself to develop and implement scenario-based standards of IP valuation, standards of enterprise conduct in IP transactions, IP agreement template standards, and so forth. This is a short-coming that we need to fix. The IP management community needs to come together in an open, fair, and balanced way—under the rules of the American National Standards Institute (ANSI)—to answer those queries being made of the legislatures and courts around the world and of the IP management community in its current disarray. The IP management community will come together in the LES Standards Program to begin the process of answering these and many other urgent and important questions that politicians, judges, juries, business leaders, financial leaders, citizens, inventors, entrepreneurs, and enterprises of all kinds have been wrestling with for many years. LES encourages all organizations and individuals who have a stake in the answers to participate in the LES Standards development process. LES is moving forward to set up a process in which everyone around the globe is welcome to participate, whether a governmental organization or agency, an educational institution, a consulting company, a law firm, a sole proprietor, a product company, a services company, or any other professional group. We look forward to working together with you and your organization as we focus on the critical questions an IP-based world economy demands to have answered. We promise that the very best minds in the IP management community will be enlisted to lead us to success in this significant task. To join the Standards initiative, please complete the following form: https://lesusacanada.wufoo.com/forms/mto5q9j1gj3ytl/. ■

LES Standards Leadership Chair: Bill Elkington Email: bill.elkington@rockwellcollins.com Co-Chair: Robert F. Held, CLP Email: bheld@telecomsys.com December 2015

LES Global News—Highlights

Celebrating 50 Years Of Education And Networking In The Licensing Community uring a time where the idea of selling technology protected D by patents to others had never been widely exploited, the Licensing Executives Society (LES) was formed. LES has come

a long way since it was founded 50 years ago. As the industry landscape has evolved so has LES, through its membership—with more sectors spanning across industries and more business development professionals—and a wider reach internationally. However, throughout its course LES has been an organization that has allowed, and continues to allow, members to grow their network, hone their skills and knowledge, and advance their career—just now on a larger, global, cross-industry scale. The Beginning Organized by Dudley Smith and Dan Stice, both businessmen and attorneys, and several licensing associates, a group met for the first charter meeting in 1965 in Hollywood, Florida. The group set out to create an organization that would assist and encourage professionals engaged in technology transfer—as, at the time, this profession was young and not yet in the 1980s, becoming more business-oriented. “The value of patents and IP recognized, and there was no organization like this, according to Jack Stuart Ott’s book, “Licensing Executives Society: A Living History: The First 40 Years.”1 The two professionals envisioned an organization that would promote educational and professional goals, allow licensing people to meet and talk with others in technology licensing, and extend licensing internationally, according to the book. At its inception, membership was mostly composed of lawyers because IP functioned more in the legal realm. “Of course, outside law firms contributed their views on the legal environment, which was rather restrictive at the time with the antitrust laws,” said Pat O’Reilley senior counsel of Finnegan, Henderson, Farabow, Garrett and Dunner, and a member since 1979. The Changing IP Landscape What I enjoyed the “The value of patents most was teach- and IP generally became ing. I would give more evident when the talks for plenary Polaroid decision came down and Kodak had to sessions or at meet- pay them $900 million ings and I enjoyed sharing the in infringement damages,” said O’Reilley. expertise that I’ve developed. “All of a sudden every— Pat O’Reilley, Senior Counsel of Finnegan, one says ‘Wait a minute Henderson, Farabow, Garrett and Dunner that’s real money.’” During Ronald Rea1. Ott, Jack Stuart. Licensing Executives Society: The First 40 Years, A Living History. Licensing Executives Society. Sept. 1, 2006. http://www. paperbackswap.com/First-40-Years-Jack-Stuart-Ott/book/097892200X.

Licensing Executives Society International

Past Presidents of LES (USA & Canada) were present at the Annual Conference in NYC. Each spoke for a few minutes of their experience as an LES member. Seated left: Pat O’Reilley, Jim Sobereij, Ron Grudziecki, Mel Jager and Larry Evans. Standing left: Francois Painchaud, Jeffrey Whittle (current President) and Pam Demain. Ada Neilsen is at the podium.

gan’s term in the presidential office, he aimed to change the approach and attitude toward intellectual property as a positive aspect of business, and there was continual growth in IP from then into the 2000s, according to O’Reilley. “Licensing became more and more significant to businesses and indeed there were businesses that were founded on intellectual property,” said O’Reilley. “It got to the point where Microsoft, for example, had a stock market value that was greater than General Motors, and yet Microsoft didn’t have any tangible assets—all it had was intellectual property.” As licensing became more prevalent in business, it was important to be part of an organization like LES that offered analysis, discussions, and education on the up-and-coming changes and hot topics of the industry. Through meetings with successful leading industry companies and professionals, publications, surveys and courses, LES brought people together on the discussion of IP and licensing. “There were a lot of educational and networking opportunities—that’s what LES is known for,” said Ronald Grudziecki, a partner of Drinker, Biddle, and Reath, and a member of LES for about 25 years. Having grown so much, LES’ global reach spun into LES International (LESI), a worldwide extension of the LES family. As LES (USA & Canada) and LESI were closely entwined, so was the connection throughout the world. “One of my new colleagues came to me and said that she had 50 Years, continued on Page 5

LES Global News—Highlights

Big Changes Afoot for LES (USA & Canada) By Pamela Demain, Past-President of LES (USA & Canada)

ES has historically offered networking, good fellowship, and informative debates about licensing, best practices, and recent developments. The marquee networking and educational event, the ever-popular LES Annual Meeting, was on Oct. 25–28 in New York City, and celebrated LES’ 50th year. At the annual business meeting, held as part of the Annual Meeting, there was a vote for significant changes to the LES bylaws. This is part of LES’ groundbreaking, five-year plan, LES 2020, which incorporates changes in the organization’s structure and governance. The plan also put best practices under examination. In addition, new programs and member benefits are being devised. The biggest change the amended bylaws implement is a smaller Board of Directors with less operational responsibility. This reconstituted board would focus on oversight, rather than performance, of operations; long-range planning; and implementation of a consistent vision and mission for LES. As a result, sectors, committees, and subcommittees will become more robust and assume more independence and responsibility. Members will have greater and more diverse opportunities for participating in the workings of the society and in its leadership, and thus, in the role the LES plays in the innovation economy throughout the United States, Canada, and beyond. Other changes include the establishment of an advisory board made up of industry leaders with extensive experience in the world of licensing, intellectual property, business, and valuation. This advisory board will counsel the newly constituted strategic Board of Directors about initiatives and programs that have relevance to the business community. The new bylaws would further empower the Board of Directors to

hire a chief executive officer, who, as appropriate, would represent LES in discussions with elected leaders, administrative agencies (e.g., Canadian Intellectual Property Office and United States Patent and Trademark Office), and non-governmental organizations. In addition to implementing and devising these changes, LES has made headway in the LES 2020 plan this year. 1. LES has lowered its operating costs by transitioning from a stand-alone organization to an association management company, Association Headquarters. LES is now working with an empowered, diverse, skilled staff on a daily basis to achieve our most ambitious objectives. 2. After a thorough and careful review of LES’ finances, many LES contracts have been renegotiated or terminated to reduce costs, and all changes were implemented without loss of services or diminishment of traditional LES quality. Additionally, LES contracts for future annual meetings have been renegotiated to reduce overhead and potential penalties. Greater financial management controls are now firmly in place, and revised protocols will help shore up the fiscal health of the society going forward. 3. Chapter leaders now have consistent and experienced staff members working with them on a daily basis to assist in offering topical and meaningful content, programming, and education, as well as help in further enlarging the LES membership. 4. LES offers continuous career-building and characteristic LES Big Changes, continued on Page 6

50 Years, continued from Page 4 a problem and had heard that I knew everybody in the world because of my involvement with LES,” said Grudziecki. “She had a company in California that had a problem with a Danish company and she needed a lawyer who knew Danish contracts law. So I contacted different people in Denmark that I knew of through LES, and within a week I had the name of a guy who was a contracts professor from Denmark and was actually on sabbatical in California at Stanford.” LES meetings, whether it is a chapter meeting or a larger national meeting, offer the opportunity to meet IP professionals face-to-face, as well as learn new trends about IP and business development. “I don’t think there’s a meeting that I’ve attended where I didn’t learn something,” said Grudziecki. “I can do licensing work fairly quickly because I’ve learned a lot over the years from LES. Once I was representing a small pharmaceutical company in Philadelphia, and we were dealing with a very large pharmaceutical company. You’re always worried that they are going to take advantage of you. When we walked

in, the in-house attorney on the other side said, ‘Oh I know you from LES.’ The agreement they gave us was ver y evenly handed, and I think that, at least partly, was because of the LES connection.” LES has been the organization to join to learn and make connections with other IP professionals across the nation and the globe. “Ever y day you have got to learn something new because business is always changing,” said O’Reilley. ■

I was a relatively new member at the time, one of the more senior and prominent LES members’ daughter was getting married and my wife and I were invited. There were about 30 of us from LES who were all invited and while we were there we had a strategic planning meeting before the wedding. — Ronald Grudziecki, partner of Drinker, Biddle, and Reath

December 2015

LES Global News—Highlights Big Changes, continued from Page 5 networking opportunities, ensuring all members feel like a part of the LES family. A mentorship program will be debuted at the Annual Meeting to further this initiative. 5. LES has expanded and enhanced strategic alliances with other professional societies and educational organizations, such as the Biotechnology Industry Organization (BIO) and Association of University Technology Managers (AUTM), extending the LES brand and new-member outreach. 6. A new IT system and updated Web content are under development, and are set to be in place by mid-January. This powerful and versatile system will integrate the membership database and website, enhance member engagement, and ease updating new online resources and tools, all at a reduced cost compared to our legacy system. 7. Public policy efforts continue to grow, and the voice of LES is positively affecting administration policy, legislation, and precedent. LES has written several amicus briefs on key patent issues pending before the Supreme Court and at the Federal Circuit. LES’ increased emphasis on public policy is just one more vehicle by which LES is having a positive influence on the innovation economy. 8. An expansion of the LES webinar program continues to keep members abreast of important developments in licensing issues and IP law. LES webinars have attracted over 500 participants since January 2015. 9. The 2015 LES University continued to play to the traditional LES strength— first-rate, sophisticated, career-building, educational offerings for all skill levels. This year’s offering included three newly developed, business-focused courses. The 2015 LES University was a success, with over 90 collective attendees for the three courses. 10. The LES Standards initiative is going strong, and included a terrific Standards Summit in San Francisco, California in June. The three standards committees welcomed new members/leaders to its group. ■

LES Asia Pacific Regional Conference 2015 T

he 6th LES Asia Pacific Regional Conference 2015 took place in Kuala Lumpur, Malaysia at the Doubletree by Hilton Hotel from 30th September 2015 to 2nd October 2015, and was hosted by the Licensing Executives Society of Malaysia (LESM). The Conference aimed to provide an environment for participants from around the world to exchange their knowledge and experiences in the commercialization of Intellectual Property, and opportunities to network, exchange ideas, and build international contacts. Over 140 participants attended the conference, including delegates from 15 countries, from IP-owning businesses, investors, policy makers and academicians, legal practitioners and patent and trademark attorneys, as well as leOver 140 participants attended the conference, gal services providers. The LES Asia Pacific Re- including delegates from 15 countries. gional Conference 2015 presented an impressive line-up of speakers from the Asian Pacific, European and American legal fraternity with the theme of the conference “Game Changing Licensing Strategies-Navigating the Challenges Ahead.” Panel sessions and workshops over two days covered 11 topics Delegates attending panel sessions. on licensing and industryspecific issues. A Mock Mediation session was held on Day 2 in collaboration with WIPO Arbitration and Mediation Center and assisted by volunteers from the legal pro- Mock Mediation in session. fession with the aim to show delegates what a mediation session looks like. Based on a modified case, the mock mediation team presented an interactive workshop to demonstrate the process of mediation in a lively and entertaining way. A parallel session on Student Business Plan Competition was held on Day 1 of the Conference, which was an initiative to promote creative entrepreneurship among students and encour- Mock Mediation team.

LES Asia Pacific, continued on Page 7 6

Licensing Executives Society International

LES Global Newsâ&#x20AC;&#x201D;Highlights LES Asia Pacific, continued from Page 6 age the development of viable and innovative intellectual property works. Four teams from Malaysia, Singapore, Japan, and Korea participated in the competition. The competition was won by the Japan team. The Conference also offered an opportunity to delegates to opt for a site visit to the Royal Selangor Pewter Visitor Centre, one of the oldest home-grown brands in Malaysia as part of the conference programme. The site visit consisted of a one-hour

Students presenting their business plan.

Students being presented with the certificate.

Delegates with Datin Paduka Chen Mun Kuen at Royal Selangor Pewter Visitor Centre.

Delegates having a drink at the Welcome Reception.

facility guided tour of the Royal Selangor Pewterâ&#x20AC;&#x2122;s museum, factory, and store showcasing the pewtersmithing experience. As conferences are the definitive time to mix business with pleasure, the host organized various social events such as a welcome reception, gala dinner, Young Member Committee introduction and networking sessions, and a post-conference excursion to Malacca, to compliment the Conference and delight those attending. â&#x2013;

Post-conference tour to Malacca.

Delegates dancing to cultural beats at the Gala Dinner. December 2015

LES Global News—Highlights

EPO And SIPO Celebrate The 30th Anniversary Of Agreement panel on the new European patent with unitary effect PO and SIPO organized a major event in Lyon (unitary patent) and contributed an article to the book (France) to celebrate the 30th anniversary of their published by EPO and SIPO to mark the occasion.” ■ cooperation agreement. Benoit Battistelli, president of EPO, and SIPO Commissioner Shen Changyu, hosted this meeting which gathered around 150 major players in IP, from both Europe and China. Arnaud Michel was invited to represent LESI at this event. He started his comments to the gathered delegates by passing on a message from his successor, Jim Sobieraj, and went on to emphasize the up- Arnaud Michel, Past-President LES From left: Douglas Deeth, President of FICPI; coming LESI conference International, and SIPO Commissioner Arnaud Michel, Past-President LESI; Piere Véron, honorary President of EPLAW (European Patent in Beijing in May 2016. Shen Changyu, No. 1 in IP in China, at Lawyers Association) and Edouard Treppoz, He also participated in a an event in Lyon, France.

Professor at the University of Jean Moulin Lyon.

Licensing Executives Society International

LES Global Newsâ&#x20AC;&#x201D;Advertisers

December 2015

LES Global News—les Nouvelles

DECEMBER 2015

les Nouvelles JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL Volume L No. 4

December 2015

LES NOUVELLES

Advancing the Business of Intellectual Property Globally Quo Vadis—A Unique History Of The Evolution Of The Japanese Patent Invalidation Proceedings YUZUKI NAGAKOSHI — Page 189

JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL

Valuation Of Intangibles And Trademarks— A Rehabilitation Of The Profit-Split Method After Uniloc CHRISTOF BINDER AND ANKE NESTLER — Page 203

Valuation Of Intangibles In The World Of BEPS MARKUS GREINERT AND SUSANN METZNER — Page 213

Lump Sums, Running Royalties And Real Options DOUGLAS KIDDER, VINCENT O’BRIEN, JOHN HOLZWARTH AND JOHNNY CHAU — Page 217

The Spike And The Long Tail: Impact, Income, And Collaboration In University IP License Negotiations CHRISTOPHER NOBLE — Page 221

Valuation Along The Technology Pipeline: A Purposive Approach To The Valuation And Reporting Of Internally Generated Intangible Assets DAVID LAMBOURNE — Page 223

Terminating Patent Licences In Australia—Traps And Opportunities For Licensees And Licensors PETER HALLETT — Page 230

IP Australia—What Role In Value-Adding Services PATRICIA KELLY — Page 232

Recent U.S. Court Decisions And Developments Affecting Licensing JOHN PAUL AND D. BRIAN KACEDON — Page 237

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Licensing Executives Society International

LES Global News—Reviews Book Review | By Chris Katopis

From the Other Side of the World: Extraordinary Entrepreneurs, Unlikely Places By Elmira Bayrasli Published by: PublicAffairs (September 8, 2015) ISBN: 1610393031

ho is the next Steve Jobs? In a well-written, lively, and thoughtprovoking journey around the world, author and entrepreneur Elmira Bayrasli explores that question through seven vignettes about modern day tech entrepreneurs. She weaves a fascinating global quilt to introduce us to seven truly inspiring modern entrepreneurs from various corners of the world. The author also makes the provocative case that the next Steve Jobs will not be from Silicon Valley, but from a place that may surprise you. As well, she teaches us that 21st century entrepreneurship is not merely about doing well financially, it is about doing good. Americans are quick to note their so-called exceptionalism. The success of Silicon Valley can be explained by many, many factors. Overall, the single defining factor for that recipe for success remains elusive. Perhaps that is why it has been hard to emulate, even within the U.S., in such places as New York City’s “Silicon Alley” or Austin, Texas’ “Silicon Prairie,” and so forth. Nevertheless, the author succeeds in inspiring us about tech entrepreneurship in many markets far-flung and a world away from the California, Bay Area. She does so by introducing us to the following seven entrepreneurs: • Bülent Çelebi, cutting-edge wireless technology (Istanbul, Turkey) • Tayo Oviosu, financial services (Lagos, Nigeria) • Monis Rahman, Internet services (Lahore/Karachi, Pakistan) • Enrique Junco Gomez, energyefficiency services (Monterrey, Mexico) • Shaffi Mather, an entrepreneur and activist who launched a for-profit ambulance service (Mumbia, India)

• Yana Yakovleva, chemical industry (Moscow, Russia) • Lei Jun, smartphones and software (Beijing, China) In each case study, we learn how an entrepreneur achieved their business success by overcoming a variety of obstacles ranging from state-sponsored oppression, institutionalized corruption (i.e, India’s “chai paani”), overzealous

“Somewhere in the world, someone is working on something that will be the next Apple, eBay, Facebook, Google, Hewlett-Packard, or Intel. The next great innovator —the next Steve Jobs—won’t be from Silicon Valley, but will come from Mexico, Nigeria, Pakistan, or even Turkey. Indeed, the next Steve Jobs lives in one of those places today.”

regulation, and/or cultural norms. At one point, the author notes, “rigid laws enforced by an even more rigid regimes bent on maintaining the status quo discourage many [] from undertaking risk.” Certainly, Bayrasli leaves us wanting more after each vignette. We are left wanting to know things, such as, where are more of these modern-day entrepreneurs? Are they the proverbial unicorns or are they representative of a larger, sustained global movement? She touches on the role of IP in the startup ecosystem, but these vignettes are predominantly about a human dimension of taking risks in the furtherance of the rewards. This tome of entrepreneurship is a testament to courage and chutzpah. In

opening a conversation about the next Steve Jobs, Bayrasli leads an exploration about business, wealth creation, and market caps. However, she also successfully weaves in modern headlines about the political and social forces at play today in the world, such as the “Arab Spring” and recent news of military oppression. At times, the book is especially touching and poignant, such as when Bayrasli relates her experiences upon her return to her native Turkey. Today, the start-up story is all about the so-called disruptive technologies, like AirBnB and Über. For Bayrasli, global entrepreneurship is also about disruption—as it is also a means of transforming one’s society. This is most evident in the case study of Shaffi Mather’s struggle against India’s culture of corruption to launch a democratized, for-profit ambulance service, with tiered pricing so as to be affordable by the masses. As the author shares, “Innovation unleashes individual potential. And as individual potential grows, so too do awareness and engagement, sparking the desire for more rights and independence.” Bayrasli is passionate about the future of entrepreneurship around the globe, especially in the face of social and political oppression. Her enthusiasm is infectious. She is unabashedly optimistic that the next Steve Jobs will not be from Silicon Valley. Rather, she posits that the next Jobs will likely be from a BRIC nation or an emerging economy within Asia or Africa. The author makes an excellent case why that possibility may be so. Given the importance of the value of IP and licensing for business and entrepreneurship, we all know that he or she is very likely to be an LES member. ■ Chris Katopis is LES International’s Executive Administrator. Elmira Bayrasli works on entrepreneurship, global development, and foreign policy. She is the co-founder of Foreign Policy Interrupted and a lecturer at New York University. Elmira has written for Foreign Affairs, the Wall Street Journal, Reuters, and the New York Times. Elmira was a featured speaker at the LESI Global Technology Impact Forum (GTIF) in Brussels, in April 2015. December 2015

LES Global News—Reviews Book Review | By Dwight C. Olson, CLP

SECRETS

Managing Information Assets In The Age Of Cyberespionage By James Pooley Published by: Verus Press (June 30, 2015) ISBN-10: 0996391002 ISBN-13: 978-0996391009

n reviewing a book, I like to look at the table of contents, read the forward, scan the book, and think about the author and how I might begin. Sound familiar? I re-met James Pooley at the LESI/WIPO joint meeting that was associated with the LESI winter meeting a few years ago in Geneva. James Pooley was appointed the deputy director general for innovation and technology at the World Intellectual Property Organization (WIPO), one of the specialized agencies of the United Nations. He oversees the operation of the international patent system, as well as programs directed at the development of patent laws and innovation ecosystems, particularly with regard to small and medium-sized enterprises and universities. As James was head of the patent system there, I was intrigued with what he would have to say on managing secret information assets in his book “Secrets” in the age of cyber espionage. In the Introduction and Chapter 1 “Secrecy in the Age of the Internet” of the book, James sets the stage by describing management of secrets in the industrial age. These industrial age processes to keep information secret are going to be a bit different in managing secrets in today’s Internet information age. James touches on “Open Innovation and Global Supply Chains,” “Big Data and the Internet of Things,” and a “Million Doors to Your Data” that will require new management thinking. However, in closing of Chapter One, he reminds us that employees are “Still the Biggest Source of Loss.” In Chapters 2 and 3, Chapter 2 “What is a Trade Secret” and Chapter 3 20

“Who Owns Information” James takes us on a mental journey from the monks who stole China’s secret silkworm process to how industrial processes were controlled during the time of guilds and merchant societies. He reminds us that America’s Industrial Revolution was based on the theft of trade secrets and how the quandary of industrial espionage vs. unfair practices in the 19th and 20th centuries led to the modern robust rules of protecting commercial secrecy. James touches on “Commercial Secrecy and Common Law,” “What Makes a Secret Protectable,” and “Who Owns Information?.” In Chapter 4, he discusses “How the Law Protects Secrets” with a reminder that “the global rules on trade secrets are fairly simple: the law protects information that (1) is not generally known or very easy to get, (2) has value because it is secret, and (3) has been reasonably well protected from disclosure by the owner…. This is the standard reflected in Article 39 of the 1995 TRIPS (Trade Related Aspects of Property) … In effect it has been embraced by each of the 160 member countries of the WTO. How well it is enforced in each of those countries is another story…” He concludes this chapter with how trade secrets compare to other forms of IP protection and how secrecy can be integrated with other kinds of protection. Chapter 5 “Managing Your Information Assets” is where James starts to deal with the core message of his book: “how to manage these valuable assets, keep them safe, stay out of trouble, and maximize their utility in your business.” This chapter is what he terms “best

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practices in information protection” and calls attention to the current most significant 2014 publication on cyber security, the National Institute of Standards and Technology (NIST) “Framework for Improving Critical Infrastructure Cybersecurity.” As he says “So what relevance does that have for you if you run a different or smaller enterprise that perhaps isn’t essential to keeping the lights on and money flowing? The answer is that the framework was reasonably well designed and is expressed in terms that are applicable to most businesses regardless of size or sector or nationality.” James highlights the five principles of a protection plan that should drive trade secret protection. First, information should only be available to those with a need to know. Second, is simplicity. Third, you can’t keep everything secret all the time. Fourth, the greatest risk is inside, not outside. Fifth, information security is just ordinary risk management. Also, risks change with time and circumstances, so risk assessment must be a continuing process. I really appreciated his note of caution to start-up companies. “After decades in Silicon Valley, I appreciate the pressures that force new companies to triage their priorities and getting a prototype ready may seem like the only objective worth focusing on. But if in the process of pushing innovation out the door you destroy any chance of protecting the competitive advantage it represents, all of that work will serve only to power someone else’s market success.” He concludes this important chapter with his thoughts on “The Cloud,” “Training the Workforce,” Collaborations,” and “Commercializing Secrets.” SECRETS, continued on Page 21

LES Global News—Reviews

Chapter 6 “Contracts” is where James reminds us that contracts are critical to trade secrets. In this chapter he covers contracts for employees, nondisclosure, noncompetition convents, consultants and independent contractors, vendors, customers and sales agents, prospective business partners, collaborations and joint ventures, and concludes with a discussion on nondisclosure agreement (NDA) management. Chapter 7 “Espionage and Competitive Intelligence” is an important chapter for business and starts with the espionage comment: “Law enforcement officials like to remind us that there are two kinds of companies in the global data-driven economy: those that know they have been hacked and those that aren’t yet aware they’ve been hacked.” As James says, “Today, would-be information thieves are testing your locks and looking for windows twenty-four hours a day, seven days a week.” Then leading competitive intelligence professionals tell us there is nothing wrong with trying to find out information about the competition. “In fact it’s expected, since business success largely depends on differentiating yourself.” So James calls out the need for management and the need to understand “improper means” such as theft, bribery, and misrepresentation versus time tested and reliable forms of competitive intelligence such as reverse engineering. In Chapters 8 and 9, Chapter 8 “Avoiding Contamination” and Chapter 9 “Employees Who Leave to Compete” are chapters that are valid for any company even if they are not “internet” based or worried about cyber espionage. James discusses issues of hiring employees in recruitment, orientation, training, and monitoring with associated responsibilities of management. What to do in retaining the talent or not in termination procedures. From the employees perspective he highlights obligations and preparing to leave. Chapter 10 “Disputes and Lawsuits” is as James states “the fact is that lawyers, judges and litigants are at

the center of our traditional system of protecting confidential information.” So in this chapter, James discusses everything from the first warning letter to the settlement or trial. In Chapter 11 “Secrecy and Government” James discusses the various roles of government in the area of trade secrets, using the U.S. as his central example. However, as he points out, there is controversy over the ways in which governments around the world are engaging in cross border secrecy issues such as requiring excessive information that impact the ability of companies to protect their information assets. James comments that the U.S. has an increasing interest in trade secrets and even “President Obama spent more time addressing cyber security than he did on Iran or North Korea combined” in his 2013 State of the Union address. He also reminds us that “Like it or not, we all have to trust the government with our data… the U.S. spent over $570 billion in 2013 and with that purchasing clout comes the right to demand access to a lot of relevant information.” Chapter 12 “Criminal Theft of Information” is a reminder that there are several distinguishing features of criminal versus civil cases. First, the plaintiff is not the trade secret holder, but the government. Second, criminal courts can send the thief to jail, but civil court can stop trade secret misuse and sometimes get restitution. Third, criminal law punishes the mere attempt to commit theft, but in civil, the plaintiff must prove the defendant actually used the trade secret. Finally, the criminal process requires proof beyond a reasonable doubt against civil litigation where mere preponderance of the evidence is enough. James covers “Pros and Cons of Criminal Prosecution,” “What to do When You’re Involved in the Criminal Process,” and “Corporate Criminal Exposure.” In James’ closing Chapter 13 “Secrets in The Global Markets” he discusses the new security risk of international business and that trade secret enforcement varies around

the world. There are differences in laws with cultural and political influences, but there are attempts to harmonize global trade secret protection. Harmonization took a big step forward in 1995 with TRIPS and the establishment of WTO, but again mentions that “even where laws are similar, enforcement is a problem.” So James concludes the chapter with some practical suggestions for protecting information abroad. Such as: get a security strategy, beware of local sharing requirements, pick your partners carefully, pay close attention to your contracts, pay even closer attention to management, maintain good local intelligence and connections, divide and allocate access to secret information, exercise care in traveling to foreign countries, and in closing prepare for litigation. Ron Laurie, an LES member, in retrospect I think hit the nail on the head for many of us in LES. He wrote in his praise of the book, “This book couldn’t have come at a better time for those of us who advise technology companies on maximizing the value of their intellectual property assets. Over the past several years patents have come under increasing legal and political pressure as the primary repository of corporate technology value. As a result, the use of trade secrets as an adjunct, or in some cases an alternative, is attracting renewed interest. All of this is especially apropos in our brave new connected world where proprietary technical and business information is more vulnerable to misappropriation than ever. Jim’s experience in protecting trade secrets and his clear writing style make this book an essential traveling companion for anyone who must traverse this harsh and unpredictable terrain.” In conclusion I feel that this is a must read for any entrepreneur, as well as for most corporate management and officers of small to medium enterprises. I would also add that this is a must read for all involved in software and those developing big data and believing how secure they think the “cloud” is. ■ December 2015

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

Jim Sobieraj Patricia A.O. Bunye Arnaud Michel Omer Hiziroglu Fiona Nicolson John Paul Audrey Yap François Painchaud Eduardo de Souza Michael Lechter 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 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, Design Interface Inc.

les Nouvelles Volume L 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 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 ©2015 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.

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Delegates Andean Community Germany Enrique Berckholtz Christian W. Appelt Renzo Leonello Scavia Ingo Bruckner Arab Countries Heinz Goddar Nabil Salame Peter Hess Renad Noubani Jochen Schäefer Argentina Guido von Scheffer Gustavo Giay Hungary Fernando Noetinger Michael Lantos Australia & New Zealand Katalin Szamosi Jeff Bergmann India Philip Heuzenroeder Rahul Verdak Tim Jones Vishwanathan Sheshan Austria Israel Karin Hofmann Tessa Malamud Andreas Pföstl Liad Whatstein Benelux Italy Laura Macdonald Giovanni Grippiotti Jean Christophe Troussel 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 Junko Sugimura Colin Hunsley 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

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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 Jean-Christophe TROUSSEL Tatiana CAMPELLO Hayley FRENCH Rodrigo PUCHI Anita LEUNG Yong LI John R. ALISON Vojtěch CHLOUPEK Emmanuel GOUGÉ Peter K. HESS 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 Sheena JACOB Peter VENTER Jose Luis de MIGUEL Raymond REUTELER Wilaiporn CHETANACHAN Samir DELIOMANLI Jeffrey WHITTLE

Secretary

Enrique BERCKHOLTZ Nabil SALAMÉ Ignacio Maria BERETERBIDE Jan TENNANT Sabine FEHRINGER Achim KREBS Gisela GLISSMAN Simon CHALKLEY Hermes TORRES Rosita LI Yibin FENG Horng-Dar LIN Alena KODRASOVA Catherine LAFARGE 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

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

2015

November 19-20 LES Modul VII: Technology Transfer and Licensing in Europe, China, India and USA Munich, Germany November 25 Seminar Internet of Things & IP 2900 Hellerup, Copenhagen November 27 LES Thailand Annual Conference Sofitel Bangkok Sukhumvit Bangkok, Thailand

2016

January 22-23 LESI Winter Planning Meeting Lisbon, Portugal February 8-9 IP100 Executive Forum Arizona Biltmore, Phoenix, Arizona, USA

May 13–15 LESI Delegates Meeting China World Hotel Beijing, China May 16–18 LESI Annual Meeting China World Hotel Beijing, China September 4-6 LES Scandinavia Annual Conference Scandic Park Hotel Helsinki, Finland September 7-9 LES Pan-European Conference Hilton Hotel Bosporus Istanbul, Turkey October 23–26 LES (USA & Canada) 2016 Annual Meeting Vancouver, Canada

LESI Management Committees Chairs & Co-Chairs Audit Awards Communications Education Endowment External Relations Investment IP Maintenance Legal Long-Range Planning Meetings Membership Nominations Publications

LESI Industry, Professional & Regional Committees Industry Chemicals (CEEM) Consumer Products High Tech

April 26-28 LES (USA & Canada) Spring Meeting Houston, Texas USA

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 Kim

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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

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

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

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Mark Wilson Jean-Hyacinthe de Mitry

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