Vol. LII No. 4
December 2017
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
Strong IP Drives The Bottom Line Moves To China By Peter Hess, President, LES International
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ducation is one of the main pillars of LESI’s value propositions. Based on a first meeting between representatives of LES China and the LESI Educational Committee during the LESI International Conference in Paris in April 2017, a licensing seminar took place in Beijing from November 15 to November 17, 2017, at which I had the honor to give the opening speech. The unique feature of this event with more than 100 participants was that it was organized in cooperation with CIPO (the Chinese Intellectual Property Office), LES China, and the LES International Educational Committee. In the name of LES International, I would like to say, “A Cordial Thank You” to Mr. Zhao Meisheng, Deputy General Director of CIPO, Mr. Zhongqi Zhou, President of LES China, and Martin Schneider, Chair of the LESI Educational Committee, as well as to their respective teams which did the hard work to make this successful event happen. Let’s hope that many subsequent Hao Ma, President of AIPPI events will follow in ChiInternational, and Peter Hess, President of LES International na, helping to make our at the Beijing Conference, LES family to grow in meeting with AIPPI.
China even stronger in the future. This event also reflects the huge interest which Patent Offices worldwide have to cooperate with LES and its educational programs. During my visit in Beijing, I had also the chance to meet with Mr. Hao Ma, President of AIPPI International. During this fruitful meeting, we had the chance to discuss potentially common projects of interest which may result in some closer future corporation cooperation between AIPPI and LES International. As in many fields, both organizations face common challenges. It was agreed to start a corresponding discussion between the Boards of AIPPI International and LES International. With my very best wishes to all LES Members worldwide, I remain... Peter K. Hess, President LES International
Peter Hess leads panel discussion on Intellectual Property.
For more licensing seminar photos, see Page 2
LES Global News—Highlights Photo Gallery: Licensing Seminar In Beijing, China...continued from Page 2
Peter Hess, President LESI, gives opening remarks.
William Bird, President, LES Benelux.
Katharine Ku, Stanford Univ.
Ming-jie CHAI, Lenovo Singapore.
Seminar participants, back row (left to right): Mr. Aimin HUO, Secretary General, LES China; Mr. Xiaoqing MA, Counsel, Beijing Qiangqi IPR Research Institute; Partner, Beijing Shaohemingdi Law Firm; Mr. David Huang (speaker), Partner, LexField Law Offices; Dr. Achim Krebs (speaker), Partner, HGF B.V., Netherlands; Mr. Weidong WANG, President, Beijing Qiangqi IPR Research Institute; Mr. Wilson ZHANG, Partner, NTD Patent and Trademark Agency Ltd.; Mr. Ming-jie CHAI (speaker), IP Legal Counsel, Lenovo Singapore; Dr. Xiaobo FAN, Professor, Beijing University of Chemical Technology; Attorney at Law, Beijing Celue Law Firm Front row (left to right): Mr. William Bird (speaker), President, LES Benelux; Partner, IP Lodge bvba, Heverlee Belgium; Ms. Katharine Ku (speaker), Director, Office of Technology Licensing, Stanford University; Mr. Zhongqi ZHOU, President, LES China; Dr. Peter Hess (speaker), President, LES International; Managing Partner, Bardehle Pagenberg, Munich/Germany; Ms. Yan ZHOU, Director, LES China; Chief Expert, Beijing Qiangqi IPR Research Institute; Ms. Mingyuan CHEN, Deputy Director, Patent Management Department, SIPO; Dr. Martin Schneider (speaker), Co-Chair Education Committee, LES International; Managing Partner, Schneider Feldmann, Zurich/Switzerland.
David Huang, LexField Law Offices.
Ningling Wang speaks on the Impact of Competition.
Dr. Achim Krebs, Partner, HGF B.V., Netherlands Audience and participants at licensing seminar.
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LES Global News—Highlights
Inside LES Global News Highlights –Pages 1-10, 12-22 Society News, Committee Reports –Pages 24, 26-27
Meetings & Delegates, Advertisers –Pages 11, 23, 25, 28-35
Memoriam –Pages 27
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 ©2017 Licensing Executives Society International
LES Italy—Interesting Programming Attracts Attendance
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ixteen events and conferences have been organized by LES Italy in the last year. Most of them were complimentary to LES Italy members, while non-members paid an entry fee. Thanks to these educational activities, LES Italy has obtained an increase of 14 percent in membership over the past 12 months (from 326 members on September 2016 to 371 members on September 2017). Among the most interesting conferences organized by LES Italy was the second “National Round-table with Judges.” For this event judges from the District Court of Milano, Torino and Roma were present. It took place in February 2017 in Milano and discussed recent case laws relating to IP matters. (See photos, Page 3). In June 2017, the conference on “The New EU Trademark,” co-organized with the Italian School for the Judiciary (Scuola Superiore di Magistratura), was held in Torino. While in October 2017, as part of LES Italy’s General Assembly, the Association organized the traditional debate also open to non-members on “The Latest News Affecting Intellectual Property in Italy and Europe” with a special focus on the impact of the Brexit in the patent and trademark field. In 2017, LES Italy continued to organize its two-day licensing course which took place in Padova (March 2017) and Milano (June 2017). They had an overall attendance of more than 100 attendees from the major Italian companies, law and IP firms, universities and research centers. A very welcomed cocktail reception was organized to celebrate World IP Day 2017. The reception took place in Milano on the beautiful rooftop terrace of the Hotel Milano Scala, overlooking the city with a 360° panoramic view. The event was only for LES members with the opportunity for each member to invite a guest working in the IP field and who could be interested in joining LES Italy in the near future. Keynote LES Italy continued on page 4 At the European Inventor Awards (Venezia, 15 June 2017). Mattia Dalla Costa, President of LES Italy and partner of CBA Studio Legale e Tributario (first on left) and Mario Moretti Polegato, President of Geox (first on right). “The New EU Trademark” (Torino, 12 June 2017). From left: Dario Paschetta, Studio Frignani Virano e Associati; Paola Gelato, Jacobacci & Associati; Marco Ricolfi, Tosetto, Weigmann e associati; Silvia Vitrò, Judge at the District Court of Turin-Civil Court-IP division; Mattia Dalla Costa (LES Italy); Umberto Scotti, Judge at the Supreme Court; Claudio Marangoni, Judge at the District Court of Milan, Civil Court, IP division; Mathias Zintler, KNPZ Rechtsanwalte and LES Germany’s Member.
December 2017
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LES Global News—Highlights
LES Italy, continued from page 3
National round-table with Judges (Milano, 16 February 2017)— From left: Gianfranco Crespi, Vice-President of LES Italy and founder of Studio Legale Crespi; Marco Venturello, Vice-President of LES Italy and founder of Venturello e Bottarini, Avvocati; Silvia Giani, Judge at the District Court of Milano, Civil Court-IP division; Silvia Vitrò, Judge at the District Court of Torino—Civil Court-IP division; and Mattia Dalla Costa, LES Italy.
speaker of the cocktail reception was Patricia A.O. Bunye, former President of LES International; a great opportunity for many LES Italy members to have a more international perspective on LES activities. In addition to all these events directly organized by our chapter, LES Italy has been supporting and attending many other conferences both at national and international levels. Several LES Members attended the IMDM and the LES International Annual Conference last April in Paris. In addition, Mattia Dalla Costa, President of LES Italy, was invited to attend the European Inventor Award (Venezia, June 2017) and together with Dario Paschetta, Secretary, and Gianluca De Cristofaro, LES Italy’s Officer, joined the LESI European Committee meeting with EU Commission on the new trade secret regulation last May in Brussels. Two additional conferences were held by LES Italy. In October 2017, the “Judicial Protection of Standard Essential Patents” took place in Torino to highlight the main legal issues affecting Standards Essential Patents. In November 2017, “International Technology Transfer—Licensing and ADR,” organized together with the WIPO Arbitration and Mediation Center, brought together several speakers from LES Italy, LES Germany, LES Spain & Portugal and LES (USA & Canada). They came from industry, research organizations and legal practices to present their extensive experience at the frontline of IP licensing and technology transfer in different fields such as mechanical, sporting goods and the internet of things. It was an interesting conference, held in English, that was attended by many national and international LES Members. ■
IP Day Cocktail Reception (Milano, 27 April 2017)—Patricia Bunye together with some Members of LES Italy’s Executive Board.
Panelists on “The latest news affecting Intellectual Property in Italy and Europe” (Milano, 17 October 2017). From left: Cesare Galli, Full Professor at the University of Parma; Mattia Dalla Costa, LES Italy; Luigi Carlo Ubertazzi, Full Professor at the University of Pavia; Massimo Scuffi, Italian delegate in the legal group of the Preparatory Committee of the Unified Patent Court (UPC); Giulia Ponticelli, Directorate General of Combating Counterfeiting, Italian Patent and Trademark Office.
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Get LES Global News Anywhere On Any Device Including issuu.com app or www.lesi.org/global-news
LES Global News—Highlights
Global Technology Impact Forum
GTIF Paris 2017
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s part of the LESI 2017 Annual Meeting, the Global Technology Impact Forum (GTIF) was held in Paris with support from the French Patent Office (Institut National de la Propriété Industrielle, “INPI”). INPI Director and past LES France President Frédèric Caillaud delivered the opening remarks for this year’s conference, “IP Revolution? Technology-Based Collaboration to Achieve Societal Benefits.” The GTIF is a unique conference offering by LESI. It has emerged as the leading forum where outstanding organizations in the business of Intellectual Property (IP) meet to share and discuss the latest tools and developments affecting the IP and innovation systems globally, with a focus on important social and humanitarian goals. This year’s conference featured speakers on topics ranging from Government IP Policy, Government Perspectives on Social and Humanitarian IP and Technology Transfer Policies; Investing in IP for Improvements in Global Health; Energy Transition & Sustainable Development; the Agriculture Industry—Economics, IP and Societal Change; as well as a workshop in the practical implications of socially-responsible licensing for agreement drafting.
From left, LESI PastPresident, Yvonne Chua, Patricia Bunye and Fiona Nicolson.
From left, Gary Keller, Pamela Cox, Julie Hutson (Wellcome Trust), Magali Poinot (Innovative Medicines Initiative), Mr. Chan Park and Mark Wilson.
Mark Wilson, GTIF Committee Chair stated, “The 2017 GTIF meeting was a stimulating day of debate that considered innovation and social responsibility. The key theme of using IP-based business models to deliver societal and business benefits was reviewed across multiple sectors, in an engaging fashion, by a range of expert speakers. In addition, and for the first time, the GTIF meeting featured an educational license-drafting workshop component. The GTIF Committee is grateful for INPI’s generous support of this ongoing conference series.” LESI instituted two awards to recognize those initiatives with outstanding impact in the building of good will towards IP. The two 2017 GTIF Award winners were the National IP Management Office (NIPMO), Republic of South Africa, and the Global Health Investment Fund (GHIF). The next GTIF meeting will be held as part of the 2018 San Diego Annual Meeting on Wednesday, May 3, 2018. To become involved with the GTIF planning committee, please contact either Mark Wilson, GTIF Committee Chair mark.wilson@strategictechbio.com or Chris Katopis, LESI Executive Administrator, at ckatopis@lesi.org. ■
Paul E. Salmon, Senior Counsel, Office of Policy and International Affairs, USPTO.
From left, LESI Board members Ichiro Nakatomi, Peter K. Hess, François Painchaud, Patricia Bunye and Fiona Nicolson.
December 2017
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LES Global News—Advertisers
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LES Global News—Advertisers
DECEMBER 2017
les Nouvelles JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL Volume LII No. 4
December 2017
LES NOUVELLES
Advancing the Business of Intellectual Property Globally Special Issue In Cooperation With The European Patent Office Foreword To The Special Issue BENOÎT BATTISTELLI AND PETER K. HESS — Page 257
JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL
SME Case Studies On IP Strategy And IP Management—Releasing Untapped Value THOMAS BEREUTER, YANN MÉNIÈRE AND ILJA RUDYK — Page 258
SME Patent Strategies For IoT-Based Business Models ALEXANDER WURZER, THEO GRÜNEWALD, WOLFGANG FISCHER AND AXEL KARL — Page 266
The Unitary Patent System From An SME’s Perspective KLAUS HAFT — Page 274
Challenges For A Start-Up Company When Commercialising A New Technology And Extending Its Business Model CHRISTIAN HACKL — Page 278
Aerogen—Breathing New Life Into Aerosol Drug Delivery JOHN MCMANUS — Page 283
Cosmed—At The Cutting Edge Of Cardiopulmonary Diagnostics MASSIMILIANO GRANIERI — Page 288
Micrel Medical Devices—Smart Infusion Pumps For Treating Patients At Home KARIN HOFMANN — Page 292
Marinomed—Using Red Algae To Fight The Flu CHRISTIAN HACKL — Page 297
Webdyn—Integrating ICT Creates Solutions For The Internet Of Things PIERRE OLLIVIER — Page 302
Fractus—Snowflake Pattern Precipitates New Application For Antennae PHILIPPE SIMON — Page 306
Ekspla—Leveraging IP: From Research Tools To Industry Applications CHRISTIAN HACKL — Page 311
Orcan Energy—Recycling Waste Heat To Cool Down The Planet CHRISTIAN HACKL — Page 316
Skeleton—Graphene Draws On Capacity For Energy Storage ANTON SVENSSON — Page 320
Voltea—Capacitance Creates A Watershed In Purification ARNAUD GASNIER — Page 325 $62.50/Issue
Lithoz—3D Printing Opens Up A New Chapter For Ceramics KARIN HOFMANN — Page 330
Picote—Pipe Repairs That Break The Rules But Not The Walls ARNAUD GASNIER AND ANTON SVENSSON — Page 335
December 2017
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LES Global News—Society News
Views From An Accompanying Person (AP) By Frank Binnie ’ve been an accompanying person (AP) with LES and LESI for over 20 years and what a terrific time I have had! The friends I have made and the places I have seen and the events I have attended have been remarkable! It’s obvious why top business people, lawyers and attorneys join LES. The relationships which are built through spending time together at educational and social events are long lasting and rewarding and it is amazing that we have so many friends all over the globe. From my wife’s perspective knowing so many LES Members is very helpful, not only for her business and clients but also much more than that, is being able to call upon and meet with friends from all over the world is fantastic especially when business is so international. We are lucky enough to have LES friends in such far flung places as Rio, Washington, Beijing, Moscow and Melbourne. For this letter though allow me to focus on my other reasons for being a happy AP. The list of LESI/LES places I have visited is endless and the experiences in all of them have been breathtaking! Such as: • The dancing lessons in Rio; the marching along the Great Wall of China • Ordering a made to measure dress (get 3 free !!!) in the Silk Market in Beijing • The US rock band in Moscow and the wonderful people we met at the stops on the hop on hop off buses • The Scottish Country Dancing • The splendors of Chichen Itza
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• The Golden Mile (and House of Blues) in Chicago • Brussels dinners and the Waterloo battlefield • Venice and the masked balls • The Coronado in San Diego • The hilarious dinners and breakfasts in Miami • The crazy sailing off Auckland and exploring the beaches in a rickety old hire car • The Sushi course in Osaka and terrific tempura. Getting your badge and AP programme at registration was always a thrill. So please remember your APs. They look for value for money (vfm) but they can also give great vfm. Remember APs are invariably very talented people in their own right. In the past many APs have helped LES/LESI choose locations, venues and events. This letter is not a criticism and not a plea for the ‘good old days’ this is just a reminder to make sure these amazing societies make full use of ALL of the APs’ talents and expertise to give great vfm and increase the numbers of members and encourage them to bring along their own APs. APs are not ‘an add-on extra’ they are an integral part of the organisations and need nurturing. The APs are another reason why LES/LESI is so different and so much better than its competition. APs help make it the friendliest IP and business community and no other society in the world can match that. ■
LES France
Workshop, Breakfast Meeting & Webinars Held In France
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n July 18, 2017, the European Directive on Trade Secrets was presented and discussed during a very active and lively workshop. The speakers were: Anne Charlotte Le Bihan, lawyer at Bird &Bird Charlotta Ljungdahl, Air Liquide Anne Céline Truchot-Bothner, Alstom Emmanuel Gougé, lawyer at Pinsont On July 19, 2017, the IP Valuation committee had its 3rd meeting. The results of the different meetings of the committee will be presented during a webinar in November. On September 21, 2017, a breakfast meeting treated IP in Pharma and Concurrence; three speakers were invited to present their point of view: Thierry Dahan, VP of the Concurrence Authority Laurent Flochel, VP of the law firm Charles River Associates, Julie Catala-Marty, associate of the law firm Frankin 24
Licensing Executives Society International
The most important jurisprudence cases and their impact on the licensing agreements have been reviewed. The questions related to parallel importations and patent settlements were illustrated with concrete cases. On September 29, 2017, a webinar relating to Open Source was followed by more than 50 participants. The following speakers were featured: François Letellier, innovation Director in different start-ups Jeremy Pappalardo, lawyer at the lawfirm Carrel Régine Poiret, director of the licensing-in activities at Technicolor Open source software is everywhere, in all areas and are more than useful in the innovation process. The legal fundamentals for the agreements were also presented. It was insisted on the Open Source politic and strategy in a company. In the next months we will have our General Assembly on December 5, 2017, and some various Committees meetings. ■
LES Global News—Meetiings
SAVE THE DATE 2018 EVENTS
The 2018 IP100 Executive Forum February 15 -16, 2018 | Arizona Biltmore Hotel | Phoenix, AZ To request an invitation, contact meetings@les.org
LESI 2018 Annual Conference | Hosted by LES (U.S.A. and Canada) April 29, 2018 – May 2, 2018 | Manchester Grand Hyatt Hotel | San Diego, CA Early Registration ends December 31! Register today at www.lesi2018.org EarlyBird Bird Registration ends soon! Register today at www.lesi2018.org
LES 2018 Annual Meeting October 14-17, 2018 | Boston Marriott Copley Place | Boston, MA Registration coming soon!
Search for Upcoming Meetings at: www.lesusacanada.org December 2017
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LES Global News—Society News LES Hungary
Elections, Young Members Congress & Training In 2017 Renewal of LES Hungary’s Officials n May 2017 LES Hungary held its official meeting on the renewal and election of its officials. On that occasion the Group re-elected its president, the board of presidents, the secretary to the board, as well as the international delegates. The new members to the board of presidents were elected for five years. The new officials are listed as follows and can also be found on the official website of LES Hungary. Our former president, Michael Lantos, helps the work of the Society as a member of the Board.
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The Board of Presidents as of 2017 President: Dr. István Molnár Secretary to the Board: Zsófia Kerepesi Board Members: Dr. Georgina Busku Dr. Bálint Halász Mihály Lantos Noémi Liber Levente Pethő Dr. Miklós Sóvári International Delegates: Dr. István Molnár Dr. Georgina Busku Fifth Young Members Congress On 15 September 2017 the Fifth Pan-European Licensing Executives Society International Young Members Congress (LESI YMC) Event was held in Budapest and was attended by more than 100 participants. The program comprised of highly professional and engaging presentations, such as a panel discussion on Artificial Intelligence, an update on the latest FRAND ruling in the UK, a presentation on the key issues as the UPC is about to start and an interactive workshop on contract drafting under the
UPC. According to feedback we received from fellow attendees, the contract drafting workshop lead by Dr. Eszter Szakács—being on home turf—and Alexander Haertel was particularly creative and engaging. In addition to the various educational sessions on the program, the event was also highly sociable, providing a great opportunity for attendees to meet existing contacts and get to know and share experiences with next generation IP professionals from Europe, Canada, U.S.A. and Asia. We are proud to report that this year’s event received a generous amount of sponsorship funds that really made a difference in raising the standard of the event. As recognition of the professional devotion and enthusiasm, on the gala night Dr. Georgina Busku—chair of the organizer committee of the Budapest event—was kindly invited to take the position as Chair of LESI YMC 2020. Member Training Every year LES Hungary organizes workshops and/or training for its members to share the latest legal developments and information that can widen the scope of our members’ professional knowledge. In October this year LES Hungary organized a members training on the upcoming changes to data protection regulation. Our board member, Dr. Bálint Halász from Bird & Bird delivered a practical and useful presentation on the ins and outs of the GDPR coming into force in May 2018 effecting a wide variety of clients operating in various sectors. New Members And last but not least, we are proud to report that we welcomed three new members to the Hungarian Group, one member from the industry sector, which is always a special pleasure to see, and two talented ladies from the legal profession. By events like the 5th YMCA and other local workshops and training we endeavour attracting more talented professionals and strive for our members to steadily continue to grow in the coming years. ■
LES Thailand
IP Valuation Workshop Hosted In Bangkok
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ES Thailand hosted an IP Valuation Workshop in Bangkok on 2-3 October at King Mongkut’s University of Technology. The Workshop was a continuation of a 31 July IP Valuation Overview held at Tilleke & Gibbins’ Bangkok office. Professor John Orcutt, University of New Hampshire School of Law, presented both the Workshop and Overview sessions and centered discussion, case study and practical example valuation exercises around Income, Market and Cost methods. The 50+ participants represented a diverse range of backgrounds from private practice and corporate IP lawyers, academia and government. Professor Orcutt’s presentations were insightful, practical and encouraging in that IP lawyers and patent agents/researchers themselves are very well placed to run valuation models. ■
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LES Global News—Society News
President Peter Hess Visits Singapore And Shanghai
LES Singapore, Singapore, 28th August 2017.
From left (LES SG members): Cherilyn Wong, Hwang LLC; Tong Kok Fai, Ngee Ann Polytechnic; Rahul Pandey, Clarivate Analytics; Ferzana Haq, HS Legal LLP; Peter Hess, LESI President/Bardehle Pagenberg; Lional Tan, LES SG Secretary /Rajah&Tann; Audrey Yap, LESI Vice President/Yusarn Audrey, Sheena Jacob, LES SG VP/ JurisAsiaLLC.
Shanghai IP Office, Shanghai China, 24th August 2017.
From left: Ningling Wang, LES CN Board member/Finnegan; Chris Shaowei, LES CN VP/NTD China; Mr. Rui, Deputy Director General, Shanghai IP Office; Peter Hess, LESI President/Bardehle Pagenberg; Audrey Yap, LESI Vice President/Yusarn Audrey; Ms. Tao Rong Director, Enforcement Dept Shanghai IPO; Mr. He Yue Wei Director Patents &International Relations Shanghai IPO; Aimin Huo, LES CN Hon Secretary/CCPIT.
In Memory of:
Michael Burnside—
Leading Figure in the Launch of LES UK/Ireland
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ichael Burnside, born 1st July 1926, passed away peacefully on 17th June 2017, just short of his 91st birthday. He had been for many years a stalwart of LES, both internationally and within the United Kingdom. Indeed he was a leading figure in the launch of LES UK/Ireland, the first LES group set up outside the U.S. Michael obtained a B.Sc. from Kings College London in Chemistry at the age of 19 and worked briefly in industry, before deciding to qualify as a Patent Agent. He trained with Haseltine Lake and worked thereafter for Mewburn Ellis and Dunlop. Seeking a U.S. qualification, to complement his UK admission as a Chartered Patent Agent, Michael moved in 1958 with his wife and daughter to the United States. He took law at NYU night school and was admitted to the New York Bar, working by day for Langner, Parry, Card & Langner. In February 1966, he and his wife Estelle returned to London as the parents of three. Michael launched his own firm, Michael Burnside & Co. later Michael Burnside & Partners. His speciality was in filing for patents worldwide on behalf of major companies, particularly American and Japanese.
Together with John Gay and Basil Bard, Michael was involved in founding in LES Britain/Ireland, LES’s first overseas establishment. From 1974 he was the first Secretary of LES International and then President of LES Britain in 1980-81 when the LES International Conference was held in London. Michael was a frequent speaker at LES conferences around the globe, and a contributor to les Nouvelles. Indeed he wrote a regular column on European developments, reporting on the output of the European Commission and Court. Notably he was much focused on the developing practice of the European Commission in the field of patent and then know-how licensing. Recognising his expertise in this area, the European Commission appointed him to prepare a report during one of the phases of reform to its block exemptions. Michael’s elder son, Alec, remains an LES member to this day. Having gained his first notions of European law from his father, Alec continued the Burnside hold on the European column for many years, taking it over when Michael stepped back from the role. In retirement Michael maintained his interest in professional matters for many years, while aging gracefully in the company of Estelle, three children, nine grandchildren and four great-grandchildren. ■ —Estelle and Alec Burnside December 2017
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LES Global News—Meetings
Advancing Business of Intellectual Property Globally
Intellectual Asset Management, Strategies and Deal Structures Joint Event of LES Austria - LES Czech Republic & Slovakia - LES Hungary 19 January 2018, Vienna, Austria Haus der Industrie (House of Industry), Schwarzenbergplatz 4, 1031 Vienna Room: Kleiner Festsaal, 1st floor Room for Cocktail Reception: Foyer, 1st floor Meet Licensing Professionals from different fields of industry as well as from the university and legal sector and listen to presentations from top specialists in licensing and technology transfer, share thoughts and ideas, use networking opportunities. R.s.v.p. until January 10th, 2018, at the following address: adocker@schwarz-schoenherr.com
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LES Global News—Meetiings
SAVE THE DATE
LES India invites you to the
LES Asia Pacific Conference Mumbai, India • 13 –15 November 2018 LESI Member Benefit: 20% OFF Bloomberg Treatises, Including These New Editions!
Patents and the Federal Circuit, Thirteenth Edition By Robert L. Harmon, Cynthia A. Homan, and Laura A. Lydigsen
Patents and the Federal Circuit addresses issues and developments in substantive patent law, infringement litigation, and procedure. The Thirteenth Edition includes discussion of: the Supreme Court’s decision in SCA Hygiene that laches does not bar damages for patent infringement where the infringement occurred within the 6-year limitations period; the Federal Circuit’s en banc decision in Medicines Co. v. Hospira, Inc. regarding the scope of a commercial sale for purposes of the on sale bar; venue following the Supreme Court’s decision in TC Heartland; liability for infringement of multi-component devices following the Supreme Court’s decision in Promega Corp. v. Life Technologies Corp.; and much more. 2017/2,026 pp. Hardcover/ISBN 978-1-68267-273-0 Order #3273/$695.00 LESI Member Discount Price: $556.00
Demonstrative Aids at Trial By Harry J. Roper and Douglas R. Dalgleish
Written by highly experienced American College of Trial Lawyer Fellows, and informed by consultation with trial judges, jury consultants, and graphics consultants, Demonstrative Aids at Trial shows how to provide persuasive visual explanations to juries. In this book, the Complex Litigation Committee identifies and unravels the legal and practical issues presented by demonstrative aids, and offers suggestions for their persuasive and proper use. 2017/160 pp. Softcover, Spiral-Bound with Full-Color Images ISBN 978-1-68267-370-6 Order #3370/$195.00 LESI Member Discount Price: $156.00 Visit www.bna.com/bnabooks/daid for more detailed information.
Visit www.bna.com/bnabooks/pfc for more detailed information.
For more information about books, call 800.960.1220 • www.bna.com/bnabooks/LESI
December 2017
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LES Global News— LESI Delegates Officers President President-Elect Past-President Vice-President Vice-President Vice-President ® Vice-President Secretary Treasurer Legal Counsel
Peter Hess François Painchaud Patricia A. O. Bunye Rob McInnes Ichiro Nakatomi Jean-Christophe Troussel Audrey Yap Fiona Nicolson John Paul KJ Kim Russell Levine
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
les Nouvelles Volume LII 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 ©2017 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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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 Duncan Ferguson Santosh Mohanty Mark Pullen Richa Pandey 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 Junko Sugimura Colin Hunsley Korea Jennifer Pierce 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 & Slovakia Trinidad Villareal Vojtech Chloupek Poland Milos Hraba Marek Lazewski France Alicja Rogozinska André-Pascal Chauvin Anne-Charlotte Le Bihan Russia Patrick Pierre Margarita Divina Laurance Le Texier Natalia Karpova
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 & 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 Philip HUEZENROEDER Alexander CIZEK Laura MACDONALD Cândida Ribeiro CAFFÉ Colin HUNSLEY Rodrigo PUCHI Charmaine KOO Yi LONG John R. ALISON Vojtěch CHLOUPEK Anne-Charlotte LE BIHAN Ursula KÖNIGER Michael LANTOS Raj HIRWANI Hananel KVATINSKY Mattia DALLA COSTA Junko SUGIMURA Kwang Jun KIM Chiew Lan CHEAH Hector E. CHAGOYA Maria Trinidad P. VILLAREAL Alicja ROGOZINSKA Sergey DOROFEEV Per ERICSSON Suresh SACHI Alessia DEL BIANCO Susana Bayon PLAZA Raymond REUTELER Alan ADCOCK Murat IDAL Bill ELKINGTON
Secretary
Enrique BERCKHOLTZ Nabil SALAMÉ Ignacio Maria BERETERBIDE Jan TENNANT Thomas ADOCKER Guillemette VITAL DURAND Claudio ANTONACCIO Simon CHALKLEY Hermes TORRES Michael LIN Aimin HUO Horng-Dar LIN Alena KODRASOVA Henri COPPENS Klaus HAFT Katalin DERZSI Sunil KRISHNA Dalit SAGIV Dario PASCHETTA Masaki HATANO Dookyu KIM Tamara Lee CIAI Manuel MARQUEZ Reefia MITRA-VENTANILLA Jakub MROZOWSKI Velery MEDVEDEV Olli PEKONEN George HWANG Darren MARGO José Miguel LISSÉN Stefan KOHLER Darani VACHANAVUTT IVONG Evren BUKULMEZ Kevin SPIVAK
LES Global News— LESI Delegates
Licensing And Intellectual Property Organizations Meetings For more information on LESI Meetings, go to www.lesi.org September 9-11 LES Scandinava Annual Conference 2018 Stockholm, Sweden
2018
January 19-21 LESI Winter Planning Meeting Vienna, Austria
October 14-17 LES (USA & Canada) 2018 Annual Meeting Boston, Massachusetts U.S.A.
February 15-17 The 2018 IP100 Executive Forum Arizona Biltmore, Phoenix, AZ U.S.A.
November 13-15 Asia-Pacific Conference 2018 Mumbai, India
March 21-23 LES ANZ Annual Conference 2018 Adelaide, SA Australia
2019
April 27–April 29 LESI 2018 Spring IMDM Meeting Grand Hyatt Manchester San Diego, CA U.S.A.
October 20–23 LES 2019 Annual Meeting Marriott Desert Ridge Resort & Spa Phoenix, AZ U.S.A.
LESI Management Committees Chairs & Co-Chairs Audit
Ted Cross
Awards
Kevin Nachtrab
Communications
Omer Hiziroglu
Education
Janet Pioli Martin Schneider
External Relations
Audrey Yap
Investment
Jim Sobieraj
IP Maintenance
Rinaldo Plebani Michael Lechter
Legal
Russell Levine Kwang Jun Kim
Long-Range Planning
Sherry Rollo
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
April 29–May 02 LESI 2018 Annual Conference/ LES (USA & Canada) Spring Meeting Grand Hyatt Manchester San Diego, CA U.S.A.
Consumer Products
Junko Sugimura
EEMC
Rush Khan Tanja Sovic
High Tech
Keith Lutsch Alfred Yip Sonja London
IUGT
Laura MacDonald
Life Sciences
Gary Keller
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 2016 J. Sobieraj 2017 P. Bunye
Copyright Licensing
Ken McKay Abraham Alegria
Dispute Resolution
Tilman Müller-Stoy
Patent & Tech Licensing
Patrick Terroir
Trademarks, Designs and Merchandising
Stefan Völker
IP Valuation
(Vacant)
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 2017
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LES Global News—Advertisers
Vienna Calling: 2018 WPM Exclusive Sponsorship Opportunities Available The 2018 LESI Winter Planning Meeting (WPM) will bring together the most senior representatives from our 33 National and Regional societies which boasts a membership of over 9000 IP and Business professionals. We have a fantastic opportunity for you to support this event through our sponsorship packages. There are various sponsorship packages available, starting from €500 and will include benefits such as advertising in Global News and les Nouvelles.
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2009_LES_MAY_4.15.indd 1
IL Auction Firm Lic. No. 444.000350
As licensing law is created and revised to keep pace with developer and user needs, this volume provides the information and tools practitioners need to develop comprehensive licensing agreements, rectify existing problems, maximize returns within the legal boundaries, anticipate new concerns, and avoid potential pitfalls. The 2013 Cumulative Supplement offers updates on licensing cases, including decisions from the Supreme Court regarding the body of licensing law; court decisions clarifying when a transaction is a copyright or patent first sale and when it is a license; and rulings on the enforceability of open source software licenses and the antitrust implications of licenses used in standards organizations. 2007/1,584 pp. Hardcover/ISBN 978-1-61746-528-1 Order #1528/List Price: $365.00 Special LESI Member Discount Price: $292.00
Licensing Executives Society International
PATENT, TRADEMARK, AND COPYRIGHT
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This volume fully integrates the provisions of the Leahy-Smith America Invents Act into the U.S. Code sections of this book and provides helpful visual guides that will aid practitioners in understanding the law and when provisions will go into effect. This is a must-have resource for patent law practitioners, as it contains all the changes enacted into law through April 2014. The June 2014 Edition includes the 2014 appropriations for the Patent and Trademark Office; the 2014 appropriations for the Copyright Office; NASA’s statutory authority regarding government interest in patents; and the statutory changes enacted into law by the “Patent Law Treaties Implementation Act of 2012.” 2014/990 pp. Softcover with CD-ROM ISBN 978-1-61746-500-0 Order #2500/List Price: $185.00 Special LESI Member Discount Price: $148.00
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LES Global News—Advertisers
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December 2017
35