Viewpoints
The Newsletter of the Licensing Executives Society (U.S.A. and Canada), Inc.
Vol. XXVI No. 2
June 2018
Highs And Lows At LESI Conference
In Memory: Peter Hess LESI President 2017-2018
LESI 2018 Welcome Reception, more photos on Page 5
Meeting attendees at the LES International Conference hosted by LES (U.S.A. and Canada) enjoyed indoor/outdoor networking overlooking the San Diego Bay. There were more than 570 registrants for the April 29- May 1 meeting. Tragically Peter Hess, LES International President, passed away as the meeting started on April 30. He was unable to attend due to his grave illness. More on Page 3.
FRAND Licensing Standards Committee
Matteo Sabattini Explains It All
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ES (U.S.A. and Canada) has established the new FRAND Licensing Standards Committee, focused on requirements for business processes and negotiation practices Matteo Sabattini that are measurable and uniformly applicable across the industry. We spoke with FRAND Licensing Standards Committee Chair, Matteo Sabattini, about this new committee and it’s role within the Society:
What is the importance of standards, in general?
What is the importance of this committee?
“FRAND licensing is a fundamental and integral component of innovation that has guaranteed the success of the standardization process, and has allowed many industrial ecosystems to thrive. Highly complex technical standards require significant, risky upfront investments. The success of technical standards involve extensive participation by technology developers and innovators,
“The FRAND Licensing Standards Committee will create an industry-wide, consensus-based business process standard for businesses and professionals who engage as principals or agents in the practice of licensing standard essential patents (SEPs) on fair, reasonable and non-discriminatory (FRAND) terms.”
“Open, consensus-based standards represent a vital part of the industrial ecosystem. Standards have been shown to lower barriers to entry, reduce costs, achieve broad interoperability, enhance collaboration and, ultimately, benefit society. Business process standards have been instrumental in creating a set of guidelines that are in some cases widely used and accepted. They have also helped businesses of all sizes achieve compliance through best practices.” Why is this important to you, either personally, professionally, or both?
See obituary on Page 3 and broad market adoption on a global scale. FRAND licensing guarantees a fair ROI to standard developers, while providing implementers and users of the standard access to the necessary technology.” What would you say to someone wanting to know more? “Get involved now. Participation and discussion with peers from the industry is the best way to make sure the standard we are developing benefits from broad expertise across different verticals and from different business models. FRAND licensing is not industry specific, especially in an era of technology convergence. LES Standards are tools for licensing professionals created by industry professionals. Participation provides a dual benefit, to participating enterprises and to the licensing community. While enhancing the quality and reach of the developed standards, participating members will be exposed to a range of different practices across, and know-how from, different verticals.”
LES VIEWPOINTS HIGHLIGHTS
LES Montreal Exciting Local Chapter Events Pages 6-7
Life Sciences Deals Letter to Congress What are the keys to success? LES Supports Stronger Patent Act Page 8
Page 10
New Education Director Meet Mark Keagle Page 11
Viewpoints
What Is Intellectual Capital Management?
BOARD OF DIRECTORS President & Chair Bill Elkington
Chief Executive Officer Kimberly Chotkowski
William Elkington
Past-President & Past-Chair Brian P. O’Shaughnessy President-Elect & Chair-Elect Robert F. Held Secretary Kevin Spivak Treasurer Mike Pellegrino Senior VP Membership, Communications & Technology Ida Shum Senior VP Meetings, Education & Strategic Alliances Gary Fedorochko VP Public Policy & Standards Rachel Kreppel Director International Jim Bratton Director, Local Chapters East Annie Gauthier Director, Local Chapters West Louise Levien Director, Membership & Member Engagement Annemarie Meike Director, Communications & Publications Gillian Fenton Director Education: Matthew McNeill Director Meetings: Scott Williams Counsel: Paul A. Roberts
Membership inquiries and contact changes should be sent to: membership@les.org
Editorial inquiries and contributions should be addressed to: Editor Carla J. Blackman carla@designinterface.com or Editorial Director Gillian Fenton The quarterly newsletter is published by Licensing Executives Society (U.S.A. and Canada), Inc. and is available online at www.lesusacanada.org. Views expressed in articles are solely those of the respective authors.
ARTICLE DEADLINES FOR QUARTER 3 LES VIEWPOINTS: AUGUST 3, 2018 Copyright © 2018 Licensing Executives Society (U.S.A. and Canada), Inc.
President & Chair of the Board, LES (U.S.A. and Canada)
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n the last issue of Viewpoints, I discussed the need to use a bigger concept than “intellectual property” to refer to the “i-stuff” that the 21st century enterprise creates and uses to generate sales and profits. I called this broader category of “i-stuff” intellectual capital. Further, I suggested that the management of intellectual capital was a business management matter, in addition to being a legal matter. And I suggested that human capital management might be a useful analogy to help us think about what intellectual capital management might entail. One of the observations that should be made at the outset is that there is no specialty discipline that has been developed in our universities on the subject of intellectual capital management. I was perusing the Wharton Business School website the other day, counting up the number of majors available to MBA students. There are 19 of them. Here are examples: Accounting, Actuarial Science, Business Analytics, Business Economics and Public Policy, Finance, Marketing, Multinational Management, Statistics, and Strategic Management. But there is no Intellectual Capital Management. According to a variety of experts, about 80 percent of a company’s equity value is in its intellectual capital. So managing it well is critical. But there is no Intellectual Capital Management department in most enterprises. There are Accounting departments and Marketing departments and Strategy departments and Finance departments. Oh, there are Legal departments, where the patent lawyers are kept. There are Engineering departments, where innovation is inspired and managed. And there are Human Resources departments, where leadership education is generated, where hiring, firing, and compensation policy is developed, where performance measurement and enhancement is developed and taught, where staffing tools and systems are purchased and provided, where personnel and organizational conflict resolution resources are curated. Human Resources is charged with helping the enterprise attract, retain, develop, motivate, and effectively deploy its human capital. It provides leadership and guidance in these functions, but typically there are 15% of the people in the enterprise who also have direct responsibility for managing employees and therefore play an important role in attracting, retaining, developing, motivating, and effectively deploying the enterprise’s human capital as well. And Human Resources is responsible for working closely with this 15%—the leadership of the company—to ensure that the enterprise’s employees are well managed. When it comes to intellectual capital, a much higher percentage of the enterprise’s employees—especially in intellectual-capital-intensive companies and industries—is directly responsible for managing the developed intellectual capital. Individual contributors—whether engineers, business developers, product line managers, contracts and subcontracts managers, supplier management specialists, contractors, or consultants—typically have access to strategically valuable intellectual capital and are often in a position to share that intellectual capital with others, both inside and outside the company. Often such intellectual capital may be shared beneficially, but sometimes people make mistakes and share intellectual capital inappropriately or unwittingly. Many organizations in the enterprise have an intellectual capital management function. As we have already suggested, Human Resources, Information Technology, Physical Security, Engineering, Legal, Contracts and Subcontracts, Supplier Management, Manufacturing, Program President, Continued on Page 3
Peter Hess - In Memoriam
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t is with great sadness and respect that we announce the passing of our great friend and leader, Peter Hess of LES Germany, the immediate Past-President of LESI.
Peter Hess was a partner at the Munich-based law firm of Bardehle Pagenberg. At the firm, he handled a variety of complex patent prosecution cases, and opposition and patent nullity proceedings at all instances before the European Patent Office (EPO) and the German Patent and Trademark Office. His practice focused on the computer and IT fields, medical devices, and the automotive supplier industry. Many of his cases involved managing parallel patent litigation across various European jurisdictions, with most of these requiring careful coordination with parallel litigation in the U.S.A. Peter Hess was a global leader in the fields of IP commercialization, technology transfer, and licensing. He was active in LES in many capacities, including as the President of LES Germany from 2014 - 2015, the LES International Board Treasurer, and as President of LESI from 2017 - 2018. He was active in organizing the LESI Annual Meeting held in Munich in 2005. During his term as LESI Board President, he chose the theme of “Strong IP Drives the Bottom Line” and championed this idea. His presidential term was quite successful with the advancement of several initiatives including a redesign of the les Nouvelles cover and developing joint initiatives between LESI and several prestigious IP organizations, such as the European Patent Office (EPO). Peter was a charismatic, beloved member of the LES family and will be deeply missed by all of us. Peter was 55 and had nobly endured a long battle with cancer. Peter is survived by his wife Elisabeth. Those seeking to make contact, please write to president@lesi.org.
Table of
CONTENTS
LESI 2018 Annual Conference .........1 FRAND Standards Committee .........1 Board of Directors ...........................2 President’s Message ...................2-3 Peter Hess Obituary ..........................3 CEO’s Message..................................4 LESI 2018 Slide Show......................5 LES Montreal Events.......................6-7 Global Life Sciences Survey................8 CLP Job Task Analysis.....................8 Life Sciences Deals Workshop...........9
John Paul, left, with Peter Hess at the LES Annual Meeting 2017 in Chicago.
President, continued from Page 2
Management, Product Line Management, Strategy, Strategic Partnership Management, Business Development, M&A, and so forth all have various roles in the management of an enterprise’s intellectual capital. But these functions are often uncoordinated, or if coordinated in some areas are not coordinated in others.
LES Letter to Congress...................10 Deal Of Distinction Nominees..........10 LES Education ...............................11 Local Chapter ATW Events.............12 Local Chapter Events......................13
Imagine the enterprise without Human Resources and with each department and discipline developing its own approach to employee management. This is something like what we find today in Intellectual Capital Management.
LES New Members...............................14
Why is this? You might ask. Perhaps it has to do with the absence of research. Maybe it has to do with business schools not taking intellectual capital management seriously as a business discipline. There’s undoubtedly more to it than that, but this may be the beginning of an explanation.
LES Member Spotlight ..................15
Please let me know your thoughts. The views and opinions expressed in this article are those of the author and do not reflect the policy or position of Rockwell Collins, Inc.
LES Annual Meeting Boston......16-17 3 | June 2018
Thanks for your help.
LES Members on the Move.............15
Kim’s Column From the desk of Kim Chotkowski, CEO, LES (U.S.A. and Canada)
Greetings LES (U.S.A. and Canada) Members and Friends!
In our efforts to keep our valued members more connected I would like to share a little bit about my activities each quarter. As CEO, I am constantly on the road representing your interests as Intellectual Capital professionals. I started out the year representing LES at a few industry-related events including the 2018 AIPLA Winter Institute in LaQuinta, CA and the 2018 AUTM Conference in Phoenix, AZ. My first quarter travels brought me back to the Nation’s Capital to speak in the Rayburn Building for the Eagle Forum on Strong Patents for Strong Economies commenting on remarks made during the event by Rep. Massie R-KY. I also participated in the ABA’s 33rd Annual Intellectual Property Law Conference in Arlington, VA on a panel moderated by Nicole D. Galli, Law Offices of N.D. Galli LLC, Philadelphia, PA Michael J. Gulliford, Soryn IP Group, LLC, New York, NY and Joshua H. Meltzer, Woodsford Litigation where we discussed the Current Trends and Ethical Implications in IP Monetization and Litigation Financing.
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With LES leadership I met with the USPTO Director Andre Iancu to learn about his goals for the USPTO under his guidance. I also met with NIST Director Dr. Walter Copan to discuss his ROI program and other standards related matters. Other travels throughout the West Coast included the Silicon Valley Chapter’s Annual Conference in San Jose, California at HP Headquarters. We ended the quarter with LES (U.S.A. and Canada) Society hosting a very successful LES International Conference in San Diego, CA where over 575 IP Professionals gathered from 33 Licensing Executives Societies at the Manchester Grand Hyatt for three full days of dynamic sessions and workshops. The success of this conference was due in part to the wonderfully dedicated volunteers of our society who gave of their time and commitment to making all feel welcome. I believe it was an enriching time for all in attendance and give a special thanks to the local San Diego Chapter for being such gracious hosts. As we move forward with planning the 2018 Annual Meeting in Boston, I hope to meet more of you. Most recently I participated in the U.S. Chapter of the International IP Commercialization Counsel (IIPCC) event entitled: “Meeting the Challenges to America’s Economic Future: Charting the Course in US IP & Innovation Policy.” Several high-level IP executives and government officials were in attendance. I participated as moderator on a panel on stories from the real world “in the trenches” of IP and dealing with the effects of current U.S. IP policy on several organizations. Those sharing their recent experiences included: Laurie Self (Vice President and Counsel, Government Affairs, Qualcomm), Manny Schecter (Chief Patent Counsel, IBM), Bryce Pilz (Director
Kim Chotkowski, CEO, LES, with Jim Edwards, Executive Director, Conservative Property Rights at the Eagle Forum in the Rayburn Building, Washington, D.C.
of Licensing, University of Michigan), Jeffrey Cicarella (Counsel, Cleveland Clinic), and Aaric S. Eisenstein (VP, Personalized Media Communications). Additional discussions surrounded the Leahy-Smith America Invents Act (AIA), including a panel with Judge Paul Michel, as well as a “fireside chat” with Senator Chris Coons (D-DE), Congressman Steve Stivers (R-OH), and the Hon. Andrei Iancu, Director, USPTO, who will be joining us at the 2018 LES Annual Meeting in Boston, October 14-17 at the Marriott Copley Place. Capturing Your Thoughts Many thanks to those who contributed to our LES (U.S.A. and Canada) Tagline Contest. We have compiled the final input and the Board is scheduled to vote on their choice. Our new Society message will be announced shortly. Continuing the New Direction LES continues to evolve and it is showing in the change in leadership. With new members of the Board come fresh ideas and perspectives and these can only help move the organization in a new direction. Our current slate of Directors is moving forward with the 2020 strategic plan in rebuilding LES and re-engaging lost members. They need to hear from each of you who are still committed to the mission of the Licensing Executives Society. We can work together to help chart the course for our industry, the nation and beyond. I look forward to personally hearing from each of you. If you have not already done so, please volunteer to serve on a committee with LES. We need you to grow our Society!
Tune into the next issue of Viewpoints for updates on our exciting plans and future activities.
LESI 2018 San Diego, CA
LESI Conference Slide Show
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Photos by Carla J. Blackman
By Martin Couillard, Advisor at the Research and Knowledge Transfer Office of HEC Montréal Local Chapters LES Montreal Chapter Events
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anada, and more particularly Quebec, has been the scene in recent years of an historic effervescence with regard to emerging technologies such as artificial intelligence (AI). This effervescence is first rooted in the university environment where Québec has excelled for several decades in AI and related fields. Adding to this very active research community, the technology giants have opened AI laboratories in Montreal, while the AI-related start-ups and enterprises are on the rise. Moreover, private and public funding is also there to back this ecosystem. In this context, the Licensing Executive Society’s (LES) Montreal chapter organized two recent events in February and April, and supported a major Symposium in May on these topics, including Artificial Intelligence (AI), Big Data, Virtual Reality (VR), Internet of Things (IoT) and Blockchain.
Intellectual Property Challenged by Emerging Technologies This series of LES Montreal’s events started by an expert panel discussion in February entitled: “Intellectual property challenged by emerging technologies: IoT, VR, Blockchain, AI—Paradigm Shift?” The discussions were about the disruption
The February Montreal event held at the Desjardins lab (360° picture generously provided by IAMGENIUS VR). grounds and fields were registered. Before the panel discussion, a brief introduction was given by Caroline Pernelle, director of partnerships of the Institute for Data Valorization (IVADO), about the recent momentum that is building for the city to become the global hub for data science expertise in both private and academic sectors. IVADO is a collaboration between the universities Polytechnique, Université de Montréal, and HEC Montreal, with the objective of bringing together industry professionals and academic researchers to develop cutting-edge expertise in data science, operational research and artificial intelligence
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Eamon Leonard (left) explains Blockchain and its potential applications in IP rights. of traditional concepts of inventiveness, originality, creation and ownership of rights. Also discussed was the impact of integrating IP elements into a virtual world, particularly with respect to trademarks, as well as on the potential applications of Blockchain in the field of IP.
The event was held at the Desjardins lab in Montreal, an innovation lab of “Mouvement Desjardins.” More than 80 people from various back-
Ismael Coulibaly, lawyer and trademark agent at Benoit & Côté, led the panel discussion, which was composed of Rodrigo Vergara, Chief Evangelist at Genius & iAmGeniusVR; Eamon Leonard, Blockchain strategy consultant at Leadweb; and Paul Gagnon, IP/IT Legal Counsel at Element AI.
The panel opened with an overview of Branded Content Creation and VR/AR given by Rodrigo Vergara. He made a quick overview of a few IP related issues and the challenges raised by VR content with respect to trademarks, copyright and personality rights, where the interaction between real and virtual worlds imposes drawing a line to define property boundaries and ownership. The question on how are Real-World IP Rights treated within a virtual environment was discussed. Conversely,
the question of how are Virtual-World IP Rights treated in the real world was also addressed. Next, the panel focused on another important emerging technology, the Blockchain, with a presentation given by Eamon Leonard, who is very active in the Blockchain community. He acts as a Global Strategy Advisor at the Blockchain Association of Canada, as well as VP Marketing at Leadweb and Timechain. He has also managed communications for the first regulatory-compliant ICO in North America, “Impak Coin.” His presentation included some applications of the Blockchain technology in the field of IP rights. An example was given about the priority of invention, where a patent application can be registered on a Blockchain with an immutable timestamp to prove that the inventor was the first who came up with this idea. Interestingly, this technology can provide selective transparency to control the public disclosure of an invention, as only an encrypted digital signature, called hash, is actually stored on the Blockchain. Lastly, Paul Gagnon took the floor to discuss about legal challenges surrounding these new technologies. He presented the notion of computer-assisted creation and the originator of intellectual property by giving the examples of a Beatles song made by AI and a brand-new Rembrandt 3D printed by AI. He also talked about open-source licenses and how they are fundamental for the community. The take-home message was that innovation on these emerging technologies often involves LES Montreal, continued on Page 7
LES Montreal, continued from Page 6 collaboration. The value of these innovations resides mainly in the data rather than in the algorithm itself. Nevertheless, the real value is also in the know-how. As a result, this new reality might change the way of thinking of IP practitioners.
The panel discussion was followed by a cocktail reception where guests and speakers mingled and discussed while enjoying specially selected wines of Belleruche Côtes-du-Rhône, generously provided by M. Chapoutier. The event was also sponsored by Desjardins lab (https://www.desjardins.com/ca/ co-opme/action-plans-tips/desjardins-lab/index.jsp) and IVADO (https://ivado.ca/en/).
Hugues Foltz (left) and Louis Gratton during the April Montreal event on IP and chain supply.
Intellectual Property in the Supply Chain For its April event, the LES Montreal chapter organized a Lunch & Learn conference entitled: “Intellectual property in the supply chain in the age of Industry 4.0”. More than 40 people were registered to attend this event that was generously sponsored by Norton Rose Fulbright and held in its downtown Montreal office.
Then came the question of ownership of the data that appears to be more important to manage when compared to managing the algorithms t hemselves (who a re constantly evolving and changing). The issue of the value of the data over the algorithm resonated through the presentation. Paul Gagnon (center) speaks about legal challenges surrounding Controlling the access of emerging technologies. your data by third para proud supporter of this event, where more ties is key. A comparison was made with the than 400 people were registered. introduction into the market of the “Software This symposium aimed to promote IP as a Service” (SaaS) concept, in which the data licensing in artificial intelligence and data is stored in the Cloud. Companies seem more sciences. The participants learned about best and more open to the idea of having their CRM strategies for data sharing, IP protection, data not stored on their own servers. licensing and collaboration (open source, Finally, tips were offered to facilitate the gradual integration of AI into a supply chain by starting with small pilot projects (in collaboration with a consultant or a university researcher), where a data scientist might be hired later on.
IP Licensing in AI and Data Science On May 17, 2018, a major Symposium on Licensing in Artificial Intelligence and Data Sciences (www.licensingai.com) was organised in Montreal by HEC Montréal, Polytechnique Montréal, Université de Montréal, Univalor and IVADO. The LES Montreal chapter was
patent, data licensing, copyright, trade secret). Worth mentioning, presentations on licensing strategies and approaches used at different universities were given, including an inspiring keynote given by Daniel Dardani from the MIT Technology Licensing Office.
Ultimately, the expectation is that all these conferences helped to develop IP licensing strategies that promote a sustainable ecosystem locally, and nationally. In Quebec, the LES Montreal Chapter and the Quebec City chapter will continue to be active players in this ecosystem by providing relevant conferences and networking opportunities.
The keynote speaker was Hugues Foltz, entrepreneur and consultant in breakthrough innovation and Industry 4.0, who discussed why or why not we should use artificial intelligence in a supply chain. The discussion took the form of a Q & A session led by Louis Gratton, an attorney and trademark agent of Norton Rose Fulbright.
LES Montreal chapter executive members, (L-R), Tommy Kenny (IntelGenx), Véronique Bougie (Mperia Therapeutics), Martin Couillard (HEC Montréal), Christine Martens (Aligo Innovation) and Nicholas Bertram (Anglehart et al.), absent from picture.
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Legal issues related to data access, collection and use were addressed. Business strategies were discussed for gathering a great quantity and quality of data, by focusing first on the quantity. “If you manage to crash one of your servers, it is a sign that you have collected enough data!”
Global Life Sciences Royalty Rate & Deal Terms Survey Open Your participation makes it valid & reliable
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ES is launching its “Global Life Sciences Royalty Rate and Deal Terms Survey” for deals entered into in 2016 through the current date. It makes in-depth data summaries and analyses of transactions in the life sciences and health care sectors from around the world. Members rate this information as one of the most valuable benefits of LES membership. Beth Gildea, Chair, wants to reassure respondents that all answers are completely confidential. She says, “No member on the royalty survey deal committee team sees any of the individual deals, ever. Everything goes to Vault Consulting, who specialize in confidential surveys. The questions go out from them and all responses are sent back to them. The survey team never sees any individual response, they only see it in the aggregate. We want members to feel very comfortable about that aspect.” Questions included in the survey will cover these important topics: • Fixed vs. tiered royalties? • Reason for doing the deal? • Field of Use—Human, Veterinary, Research? • Stage of Development? • A profile of responses—Therapeutic/Diagnostic/Platform deals? • Exclusivity? • Territories included? • Inclusion of Co-Promotion/Co-Marketing? • Valuation techniques used?
Target dates for the survey include the initial survey sent to members in midMay, with a few reminder e-mails in June. The final responses are due back the first week in July. Upon completion of the survey process, LES will provide LES members with Beth Gildea an aggregate report displaying key metrics resulting from this study. A preview of the results will be presented at the Annual Meeting in October, with a full report in January of 2019. If you have any questions or concerns about the survey, or the confidentiality of your information, feel free to e-mail Vault at support@ vaultconsulting.com. Information on Vault Consulting can be found at http://vaultconsulting.com. You may also contact LES directly by e-mail at membership@les.org. LES would like to extend a thank you to members of the committee. They include: Beth Gildea, Chair; Jim McCarthy, Assistant Chair; Haskell Adler, Faith Charles, Jennifer Dyer, Gary Gabrielsen, Jianbo Hu, Dana Matzen, Rob McInnes, Sean Sheridan and Arpi Siyahian. Ben Bonifant will act as Analysis Advisor. The final report will be available to LES members at no charge, however it may be sold to non-members. LES membership dues are supporting 100% of the costs of this project. Past survey results can be found on the LES website, visit http://www.lesusacanada.org/?page=royaltyrates.
CLP Completing Job Task Analysis To Validate Exam Content
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n the decade since the Certified Licensing Professional (CLP) program launched, more than 800 individuals have taken the examination in order to earn the CLP credential. The maintenance of a professional credentialing program is ongoing based on continual review and revision to ensure all aspects of the program, including the certification exam, are appropriate and relevant to the role. In 2018, CLP, Inc. launched a comprehensive project, called a job task analysis (JTA), to review and validate the exam content, or the information covered on the certification exam. CLP addresses five frequently asked questions below to help clarify the purpose and scope of this important project.
What is a JTA? A JTA is a systematic study of a job role to determine the most relevant and most frequently utilized knowledge, skills and abilities required to perform in the role. What is the purpose of this project? This project allows CLP to ensure the content tested on the exam reflects the role of professionals with at least three years of experience in the licensing field, one of the requirements for CLP exam eligibility.
Why do a JTA periodically? A JTA is performed periodically to keep up with changes in a profession and ensure the exam content represents the current practices in the field. This is a particularly important process for maturing credentialing programs, like CLP.
What does the JTA involve? The first step is a review of the current exam content outline (http://www.licensingcertification.org/for-candidates/exam-content/) by a group of 10 – 15 subject-matter experts (SMEs) in the field. This group of SMEs examines the current content and makes an initial assessment of potential changes to that content.
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The second step is to validate the work of these SMEs with a comprehensive survey distributed to individuals working in the field, such as currently CLP-certified individuals and members of professional organizations, such as LES and AUTM. What is the outcome of the JTA? The outcome is the validation of the exam content outline, or, if appropriate, slight revisions to the current exam content outline to more accurately reflect the job role.
Cynthia Allen speaking to a meeting attendee at the LESI conference in San Diego.
If you have questions regarding the CLP program or the job task analysis project contact Cynthia Allen, CLP Certification Manager, at callen@licensingcertification.org.
LESI 2018 Annual Conference Mini-Plenary
Doing Major Life Sciences Deals: The Keys to Success
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t the LESI Annual Conference in San Diego, moderator Amanda Hollis of Kirkland & Ellis created a panel discussion around “Doing Major Life Sciences Deals” as a case study. She then asked for advice from panel members. The experts included Stasia Ogden, Vice President, Global Patent Litigation Governance, Head of Patents, GSK; John Calvo, Amanda Hollis Senior Counsel, Bayer; and Christina Allegrini, Vice President, Associate General Counsel, Global Intellectual Property, Fresenius Medical Care.
The Challenge… Your employer, LESI Pharma, is a large Pharmaceutical company with many approved products. Years ago LESI Pharma developed and patented a compound named “Silver Bullet” that is very effective at killing certain tumor cells, if it can reach the cells. However, Silver Bullet was never commercialized because in order to reach tumor cells, Silver Bullet had to be given at high levels that created unintended side effects. Unable to deliver Silver Bullet to tumor cells, LESI Pharma shelved the project. Your CEO approaches you about a new company, Upstart Pharma. They are a small biotechnology company with several promising technologies for delivering drugs to tumors. Upstart Pharma does not currently have any approved products or any revenue, and its founder developed the technology while he was a professor at San Diego University. Several of the foundational patents are owned by San Diego University and are licensed to Upstart Pharma. Your CEO looks to you for advice. The Advice… The moderator asked and the panel answered a few good questions: 1. Who at big Pharma is involved? It needs a deal team from business development, legal, finance and alliance management to help live with the deal. They might also need the medical team and regulatory team. It’s important to loop in the right people, not just the function. Are the reporting of net sales terms with the agreement in conflict with their financial system? They don’t want a big disconnect between deal and on the ground implementation. If you take the long-used template of Phase 1,2 and 3, it might not match the current system of product development. Some companies are trying to file for approval just after Phase 1.
2. Who is on the start-up side? Often they are very passionate people, but often with not a lot of experience. Sometimes they don’t know the hurdles of FDA compliance, or manufacturing, importance of adequate patent protection, etc. Sometimes the start-up forgets big Pharma is so slow to move. Smaller companies move faster and are more agile compared to big Pharma.
3. What structure? Usually In-licenses come with a collaboration, development, commercialization and co-promotion component. Large companies may have lots of resources to do the development, but those people are often already committed to other projects. Sometimes it makes sense for big Pharma to let start-ups do the R&D because they know the technology well. Often there is a disconnect of expectations between parties. We advise an audit clause.
4. What milestones? Define what the milestone and objective criteria is for the start-up’s development. There needs to be a system to know that the money is being well spent and on budget. Possibly a joint steering committee could have a mechanism to readjust expectations. Sometimes there are different expectations around clinical trial results; “commercially reasonable” is still very different between types of companies. It’s really a long term relationship and no one knows what will happen. 5. How to handle risk allocation, product liability and third party infringement? There needs to be a system to monitor infringement; also need to realize that big Pharma takes a long time to decide strategy on third party infringers (investigate whether it’s really an infringement). Intellectual Property is an area that needs to establish and confirm ownership. Also consider scale-up, formulation, marketing and IP. Do customers want this so that it’s worth the extra cost? If university or another company has licensed to a start-up, they usually have to renegotiate the license when big Pharma gets involved. Sometimes there’s a “collaboration data file” (e.g., following an oral discussion or documents exchanged between parties) and it helps prevent issues of who invented what, etc. 6. What are common things things that help or don’t help? You need to communicate, transparently; face-to-face really helps. Also need to appreciate different cultures.
7. Who initiates negotiations? Both sides. Criteria for prioritizing projects shifts over years. It’s based on budget, market or customer input, progress of projects and reimbursement. Reported by: Katherine Ku, written and photos by Carla J. Blackman
Audience at the Life Sciences Mini-Plenary in San Diego.
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Panelists from left: John Calvo, Christina Allegrini, and Stasia Ogden
By Cynthia Allen
LES Supports Stonger Patents Act
10 | LES Viewpoints
LES Letter sent to Congress as Part of Public Policy Initiative April 17, 2018 U.S. Representative Steven E. Stivers 1022 Longworth House Office Building Washington, DC 20515 Dear Congressman Stivers: On behalf of the Licensing Executives Society (U.S.A. and Canada), Inc. (“LES”), we thank you and your co-sponsors for your recent introduction of the STRONGER Patents Act of 2018 in the U.S. House of Representatives. We also thank you for your leadership in raising awareness of the importance of durable, reliable intellectual property rights as an essential element of our economy, a pillar of our legal system, and a benefit for all of humanity. Your remarks on April 10th at the IP LeadershIP 2018 event at the Newseum, Washington, DC, were especially encouraging. We are writing to offer our assistance. We understand that you plan to hold a hearing on the state of the U.S. patent system, and to explore the phenomenon of “efficient infringement.” Efficient infringement is an unfortunate development in technology commercialization. It frustrates the incentives our nation’s founders expressly contemplated for authors and inventors in Article I of our Constitution. The diminution of those incentives discourages innovation, reduces investment, and hinders the formation of new businesses and industries. LES is a non-partisan, non-profit, volunteer-driven professional society devoted to speeding innovation to market. For over 50 years, we have been the only professional society devoted exclusively to the licensing of intellectual property. We represent all industries, from high technology to pharma/biotech. Our members are inventors, entrepreneurs, business executives, accountants, and lawyers. And, we represent licensors as well as licensees. In short, we represent all sides in all quadrants of the innovation economy. We are devoted to the principle that intellectual property is a private property right that must be respected like any other form of private property – through predictable, reliable, and durable legal rights that are worthy of investment and command the respect of the market. Over its first 225 years, the U.S. patent system has proven to be among the most potent economic engines ever devised. Coupled with the pioneering American spirit, our patent system fostered electrical lighting, the automobile, controlled flight, the silicon chip, and numerous life-altering inventions yet to come. However, to continue along this trajectory, we must preserve the incentives the founders envisioned. To do so, we must provide a legal regime that respects intellectual property rights, and especially the right of inventors to exclude others from trespassing on those rights. Efficient infringement runs counter to such a legal regime, and it violates the American tradition of respect for the rule of law and the importance of private property rights. It smacks of gamesmanship and sharp practices, and produces profound inefficiencies and inequities in the marketplace. These have an especially harmful effect on the inventor and entrepreneur. LES is committed to fostering innovation through a fair and equitable marketplace for innovation. The LES Standards Initiative is bringing the licensing industry together to self-regulate, and discourage abuse of our patent system. We are drafting consensus-based voluntary standards for the ethical, prudent, and practical use of intellectual property to drive commerce and improve the human condition. We have briefed members of Congress and various federal agencies on this initiative, and we have appeared in hearings before Congressional Committees. We ask that you consider including an LES representative among your witnesses. We stand ready to assist you in whatever way you deem appropriate as you plan this hearing, and as you work to restore the U.S. patent system to its former glory. Please feel free to contact me at your convenience. Very best regards, Brian P. O’Shaughnessy, Immediate Past-President, LES (U.S.A. and Canada)
LES Deals of Distinction Award 2018— Call For Nominees Deals completed in 2017 - due June 11, 2018
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e are delighted to announce the call for nominations for the 2018 Deals of Distinction Award is open for all sectors. Now in its 14th year, this year’s awards will be presented at the LES Annual Meeting in Boston, MA, October 14-17, 2018. Sectors include: • Chemical, Energy, Environment and Materials (CEEM) • Consumer Products • High Tech • Industry-University-Government Interface (IUGI) • Life Sciences A few past winners of this honor are: • AT&T and Uber (2017) • U.S. FDA, National Institutes of Health, PATH & the Serum Institute of India (2014) • AOL, Microsoft and Facebook (2012) For a list of past Deal of Distinction award winners, please visit the LES website Deals of Distinction. Click here for the nomination form, which is due by June 11, 2018. It is important to note that there are specific things that the Sector Leadership Committee is looking for in the nominations. They include: 1. The transaction was announced in 2017 and had a significant licensing component. 2. At least one party to the selected deal is an organization based in the territories of LES (U.S.A. or Canada). 3. All types of licensing and technology transfer subject matter will be considered with specific attention give to: a. Creative solution to the business issues, b. Novel structure for terms, and/or c. A deal that is seen as a “seismic event” and signals a major change for the art of licensing in the IUGI industry sector. The final selection of the 2017 Sector winner will be decided by the DDA Awards Subcommittee. Important Note: At least one representative of the winner parties must be willing to attend the award presentation during the 2018 Annual Meeting in Boston, October 14-17. Contact sectors@les.org with questions or to learn more about nominating a deal. Lewis Stark, Consumer Products Sector Chair
Introducing Mark Keagle, New Director of Education LES Edu
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y name is Mark A. Keagle, and I want to start off by thanking everyone at LES (U.S.A. and Canada) for providing me with this opportunity to help guide and direct the education offering here at LES. LES (U.S.A. and Canada) is a leader in the field of Intellectual Property and Intellectual Capital. It is from this position of leadership that LES is continuing to take great strides moving our educational offering forward. This is why I am excited to be given to opportunity to work with such a wonderful organization. Having spent my career as an educator I am eager to work with The Board of Directors and the CEO to help bring make vision of education for LES a reality. In September LES will be holding a series of educational classes and workshops in Chicago, Illinois. Brinks Gilson & Lione Law Groups will host the event from September 14 -28. Courses to be offered will include a one-day IP (Business Basics) 101 class, and then both a 3-day Master’s and Advanced Business Development class. We will be concluding the conference with two different Royalty Rate Survey workshops: one focused on Hi-Tech and the other on Life Sciences. On the heels of Chicago is the LES Annual Meeting, held in Boston, Massachusetts at the Marriott Copley Place Hotel. On Sunday, October 14 there are three separate educational offerings. LES will again offer a one-day IP (Business Basics) 101 course, as well as two separate workshops. One workshop will focus on valuation and the other will be IP in the Boardroom. And at the back-end of the LES Annual meeting, on Thursday, October 18, LES will offer a one-day CLP Exam Review course.
Monday, September 24-28, 2018 Location: Chicago, Illinois LES University – North PDS200: Business Development for IP Licensing Early Bird $1,195 Member/$1,495 Non-Member After September 1 $1,295/$1,595
PDS300: Strategic Licensing: Advanced Skills & Tools Early Bird $1,295 Member/$1,595 Non-Member After September 1 $1,395/$1,695
Hi-Tech Add-on: Special Topics in Hi-Tech including review of the HTS Royalty Survey $495 Member/$595 Non Member $345 (if add-on to PDS200 or PDS300)
Sunday, October 14, 2018
From there the future is wide open. Plans are coming together for the 2019 calendar and beyond. We have been exploring a number of possibilities; from expanding the number of courses we offer, to increasing the number of locations and frequency of our conferences, offering our classes in a variety of formats, and broadening our target audience as far as who we are offering classes to. Nothing has been off the table as we have discussed and debated the direction we want to take education moving forward. But, no matter what we had been discussing, our goal remains the same: Stay abreast of what is current and relevant, and provide the same information to our members and students. That is what will set us apart from everyone else. Additionally, as LES moves forward in creating future educational offerings ,our goal is to post a calendar with enough advanced notice so that everyone involved has ample time to plan and adjust their schedules accordingly.
Location: Boston, Massachusetts
I want to leave you with one final thought: I am always open to comments, suggestions, and ideas. If you have a course you want to see offered, an idea on how to make things better or more efficient, or anything at all please do not hesitate to e-mail me: mkeagle@les.org. I am looking forward to getting to know more of you as I grow in this role, and am excited about where LES is headed.
Best Practices in Life Sciences Licensing
IP101 Business Basics $245 LES Annual Meeting Registrant/$295 Member and Non-Member $150 Professor/$75 Student Member and Student Non-Member
Valuation Workshop $150 Member/ $195 Non-Member
IP in the Boardroom Workshop $150 Member/ $195 Non-Member
Thursday, October 18, 2018 Location: Boston, Massachusetts CLP Exam Review Course $995 Member and Non-Member
November, 2018 Location: New Jersey Early Bird $995 Member/$1,295 Non-Member After (date) $1195/$1495
December, 2018 Advanced Negotiation $795 Member/$995 Non-Member/$795 Student
For up-to-date information visit: www.lesusacanada.org/page/2018edcalendar
11 | June 2018
Location: Location Pending
LES New York Celebrates World IP Day 2018
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n April 25th more than 30 New York based licensing, IP and creative arts professionals came together to discuss the topic of “Powering Change: Women in Innovation and Creativity” with a noteworthy panel. The event was widely regarded as a success by those in the audience with engaging discussions lasting for more than one and a half hours, followed with freeform networking over drinks and appetizers. The event also celebrated Mr. Teemu Alexander Puutio’s official inauguration as the Chair for LES NY, having joined from Fordham University in 2017. Alexander expressed his strong commitment to engaging the membership with an increased number of workshops and seminars and is looking forward to bringing an LES USA flagship event to New York during his tenure. During the discussions the panelists and audience explored a variety of issues with the following notable points being made by the group: LES NY leadership Christine Fischette and Arnold • Women are capable of engaging in any kind of Burnstein. innovation. However, we often forget how important diversity of backgrounds is, not because of different capabilities to innovate but instead because of different ideas on what to innovate. • Not all innovation is ultimately about revenue, it’s about social impact. Areas where some of the largest impact can be had is access to education. Sadly the same areas are almost always underfunded because of lack of investment revenue opportunities. These issues help entrench us in our current problems. • Much of what we see today as problems in the industry are due to poor patterns and lack of role models. Automotive in particular is a traditional product that has always been designed by men, marketed by men in order to sell to men. However, it is no longer just used by men. It is important to learn how companies speak about the content, taking into account the different aspects of the products without giving in to stereotypes. • Addressing the root causes of the gender disparity problems requires us to come to terms with the fact that there are different causes at different stages and that the policy challenges vary at each level. Addressing these challenges effectively requires active partnerships such as those that Cornell has begun to build with CUNY. Personalized learning is an emerging solution that can be used to bridge many of the current divides.
Moderator Deborah Somerville facilitates the panelists’ response to a question from the audience. Panelists from left Katherine Strandburg, Berit Virtanen-Thewlis, Matthew D’Amore and Johanna Wahlrros. LES thanks the organizing team including: T. Alexander Puutio, event organizer, LES NY; Janet MacLeod, Managing Partner, Fox Rothschild; Deborah Somerville, Partner, Fox Rothschild
LES Quebec—World IP Day
12 | LES Viewpoints
We had over 30 participants attending the event. This year, the Quebec City Chapter was celebrating the World IP Day by organizing a networking event featuring a speaker talking about a topic which was both entertaining and educational, namely “History of Patents, From Ancient Greece to Today.” Usually, our World IP Day celebration is the last event of our Chapter prior to summer and allows the Quebec IP community to meet. From left to right, Reno Lessard, Norton Rose Fullbright (Program Chair); Serge Lapointe, Fasken (speaker at the event); Philippe Boivin, INO (Chair); Alexandre Daoust, Norton Rose Fullbright (Education Chair); Antoine Bellemare, Fonds Innovexport (Co-Chair); and Jean-Francois Rheaume, Raymond Chabot Grant Thornton (Sponsor of the event).
LES Washington D.C. Chapter
Andrew Hirshfeld, Commissioner Of Patents, Speaks To Chapter
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fter introductory comments on March 15 from the LES DC Chapter Chair, Raymond Van Dyke, Commissioner Hirshfeld spoke on a number of initiatives of the United States Patent & Trademark Office, and mentioned that he leads about 10,000 employees, i.e., 8,165 examiners, 183 design examiners, and staff. The first initiative discussed was pendency, where the first action pendency for 2017 was 16.3 months (with the target being 15.5 months). The target for 2018 is 15.4 months, and a total pendency of 25 months. Commissioner Hirshfeld expressed a goal to bring first action pendency down to 14 months to better align with the statutory limit of 14 months under the Patent Term Adjustment timeframe. Commissioner Hirshfeld then discussed the Office’s tackling of the over 600,000 applications filed last year, where 450,000 were new applications, i.e., not continuations or divisionals. He then spoke about the decrease in the growth rate of the application filings from three-four percent several years ago to one percent or so more recently. Last year, however, the filings increased 3.1 percent and in 2018 the filing rate has increased to roughly 4.2 percent as of this date. The only art unit down was business methods. Examiner attrition is roughly four percent, and 350 new examiners have been hired. He then spoke of the Office’s installation of new technologies to better capture the variety of information inherent in the operations of the examiner corps, and the Office’s ongoing efforts to better mine this data to increase efficiency and productivity. For example, the various examiner reviews are being combined into a Master Review format for
better analysis, and over 12,000 new reviews are planned for 2018. All of these individual and group reviews will allow better granularity for assessments on quality and possibilities for improvement. Further efforts include examiner training, as well as free training for new practitioners and the inventor community. Regarding patent practice, Commissioner Hirshfeld encouraged more use of the interview request procedures, which would also help the Office better measure the interview process and the success of the new procedures to facilitate interviews and allowances. Last year there were 22,000 such requests, representing roughly eight percent of all pending applications. He said about 90 percent of these interviews were over the phone, but encouraged the use of video to better facilitate communication. Also, he discussed the Office’s efforts to better provide relevant art to examiners. Through ongoing IT endeavors, the references in related cases are being promulgated to the examiners, with future efforts to widen the production of relevant materials to the examiners for their review. Although the Global Dossier is useful for many, the Office is having issues integrating this into the examiner review process. Finally, through various partnership meetings, 12 or so over the past year, the Office is continuing to work with the public on current issues. Commissioner Hirshfeld then addressed a variety of questions from the attendees, including the Office’s excitement over the appointment and confirmation of the new Director, Andrei Iancu.
Chapter leaders and speakers from left: Raymond Van Dyke, Andrew Hirshfeld, Lori Morrison and Thomas Wiseman.
A Full House For Quebec City Chapter’s Event On Artificial Intelligence!
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as the business models of AI, the IP behind AI and the IP created by AI, the disruption to come for various industries, and much more. The panel was followed by a cocktail reception during which the attendees networked until late in the evening. The event was a great success, thanks to multiple sponsors such as ROBIC LLP, PwC, BDC, LE CAMP and the Quebec Technology Association (AQT). If you would like to hear more about that topic, don’t miss the panel “Artificial Intelligence: The Intellectual Property Behind the Disruption” at the LESI Annual Meeting in San Diego on April 30, which will again be moderated by Vincent Bergeron, the Chair of LES (U.S.A. and Canada)’s YMC Committee.
13 | June 2018
uebec Cit y ’s st ar tup incubator LE CAMP was filled to maximum capacity on February 1st for the event “Artificial Intelligence: The Intellectual Property Behind the Disruption,” with more than 105 attendees. The panel was moderated by Vincent Bergeron, Partner at ROBIC LLP, with five panelists from very different backgrounds in artificial intelligence: Caroline Jonnaert from Stingray Music, Julien Lassonde from PwC, Laurent Simoneau from Coveo, François Laviolette from CRDM, Laval University’s Big Data research center, and Rémy Beaumont from Moonshot Health. The panelists covered many interesting topics related to AI, such
LES New Members Scott Anderson
Attorney/Partner Foley & Lardner LLP
Gabriella Baez
Manager, Business Development & Marketing Kashiv Pharma
Lauren Boodhoo
Manager, Intellectual Property The University of the West Indies
Amy Cooper
Global Brand Licensing Manager The Chemours Company
John Crowe
Co-Founder Eir Pharmaceuticals, LLC
Dennis Duncan
Senior Patent Counsel Dolby Laboratories, Inc.
Andrew Eggleton Associate Counsel New Hampshire Ball Bearings, Inc.
Cary Ferchill
Karmon Johnson
Daniel Menichella
Technology Transfer Officer UILO, Univ. of British Columbia
Sunhee Lee
Partner Sughrue Mion, PLLC
CEO CureVac Inc.
Roger Mifsud
Global Head, Open Innovation Church and Dwight
John Neclerio
Partner Duane Morris LLP
Dorene Lynch
Senior Director Business Alliances Pfizer, Inc.
Evan Ng
Partner Dorsey & Whitney LLP
Ronald McGinley Director Office of Commercialization McNees Wallace & Nurick LLC
Daniel O’Brien
General Counsel Ultravision International
Chola Olympio
David Mellman
Licensing Manager The Boeing Company
Licensing Associate The University of Southern California, USC Stevens Center for Innovation
Mike Phelan
Scott Swanson
Xavier Pillai
Corporate Attorney Aspen Aerogels, Inc.
Director, Global IP ASM International, N.V.
Steve Stringer
Director, Sanofi Pasteur Transactions Sanofi President The Phelan Group LLC
Poongunran Muthukumaran
Ryan Liebengood
Jennifer Paster Detmer
John O’Malley
Shareholder Volpe and Koenig, P.C.
Shareholder Leydig, Voit & Mayer Ltd.
Abby Queale
Alliance Manager Los Alamos National Laborartory Technology Transfer Program Manager Doolittle Institute
Thousif Syedin Patent Analyst Menteso, Inc.
Associate General Counsel Florida State University, Office of Commercialization
Thanh Vuong
Gregory Schwartz
Meredith Wilkerson
Attorney at Law Billion & Armitage
Head IP Synaptive Medical
James Silver
Student Osgoode Hall Law School
Licensing Office— Life Sciences Office of Tech Development, University of Oklahoma
Patrick Snow
Robert Williams
Denise Steensland
Jim Wohrley
CEO ICEBERG IP Group Licensing Manager The Boeing Company
Intellectual Property Manager The Boeing Company IPM Contract Specialist The Boeing Company
Sector Committee Leadership
Attorney Avisen Legal PA
Chemicals, Energy, Environmental and Materials (CEEM), Co-Chair
Ann Cannoi
ACannoni@webblaw.com
Louise Fransson
Chemicals, Energy, Environmental and Materials (CEEM), Co-Chair
Alex Tang
alex.d.tang@gmail.com
Consumer Products, Chair
Lewis Stark
Lewis.stark@eisneramper.com
High Technology, Chair Elect
Efrat Kasznik
ekasznik@foresightvaluation.com
High Technology, Chair
Ian DiBernardo
idibernardo@stroock.com
High Technology, Past Chair
Stefan Tamme
stamme@rambus.com
High Technology, Secretary
Micheal Fluhler
MFluhler@fishstewip.com
Industry-UniversityGovernment Interface (IUGI), Chair
Adrian Cyhan
Adrian.Cyhan@DINSMORE.COM
Life Sciences, Chair
Andy McGee
amcgee@lilly.com
Life Sciences, Past Chair
Karthika Perumal
premkarthika@gmail.com
Life Sciences, Webinar Chair
Arpi Siyahian
asiyahian@nutechventures.org
Emerging Enterprises, Chair
Sherry Rollo
SRollo@hahnlaw.com
Emerging Enterprises, Past Chair
Annemarie Meike
meike1@llnl.gov
Public Policy, Co-Chair
Rachel Kreppel
Rachel.Kreppel@pharma.com
Managing Director KPMG, LLP
Public Policy, Chair
Brian O’Shaughnessey
Brian.OShaughnessy@dinsmore.com
Valuation and Pricing, Past Chair
Antoine Bellemare
Antoine.Bellemare@vrr.ulaval.ca
Freeman Jackson
Valuation and Pricing, Chair
Scott Weingust
sweingust@srr.com
Valuation and Pricing, Chair Elect
Nick Baicu
nbaciu@oceantomo.com
Valuation and Pricing, Secretary
Trevor Blum
TBlum@HL.com
Women in Licensing, Chair
Soody Tronson
soody@stlgip.com
Technology Branding and Trademark Licensing, Chair
Weston Anson
wanson@consor.com
Business Analyst PARC
Natalie Fujii
Licensing Specialist Boeing Intellectual Property Licensing Company
Amir Ghavi
Partner Fried Frank LLP
Loida Guerrero
Licensing Specialist Boeing Intellectual Property Licensing
Neng Guo
Licensing Analyst BP Chemicals
Kevin Guy
14 | LES Viewpoints
Legal Counsel University Health Network
Austin Lee
Director Redbud Consulting LLC
Lawrence Fox
Arjeta Meneri
Medical Director, Respiratory Theravance Biopharma
Student Florida State University
Nishant Jaiswal
Manager IP Business Strategy Hewlett Packard Enterprise Co.
LES Members on the Move Antoine Bellemare: is now Investment Director at Fonds Innovexport (a seed and start-up VC fund) in Quebec City, Canada. Mr. Bellemare was previously the Technology Transfer Officer at Université Laval also in Quebec City, Canada for more than 12 years. He is also Secretary for CLP and the founder and co-chair of the LES Quebec City Chapter. He can be reached at antoine@fondsinnovexport.com
David Duski: recently transitioned from Davis & Hosfield Consulting LLC to BDO USA, LLP effective April 2, 2018. His new title is Director, Forensic Investigation and Litigation Services. Mr. Duski leads the National Intellectual Property Consulting practice.
Kathleen A Denis, PhD, CLP: Past-President of LES (U.S.A. and Canada) and the Founding Director of the Rockefeller University Office of Technology Transfer retired on January 31 after almost 18 years at Rockefeller. She will continue to serve on the ELabNYC and AUTM Foundation Boards and will participate in various independent projects. She can be reached at kadenis924@gmail.com.
Conna Weiner has been asked to join JAMS, a highly regarded provider of neutral mediation and arbitration services. Ms. Weiner has extensive experience as a neutral and participant in life sciences and healthcare licensing and transactions, as well as litigation. Please visit her website at: www.connaweineradr.com.
Michael Crichton: has been named among Lexpert’s “Rising Stars: Leading Lawyers Under 40” for 2017. Crichton was honored alongside other “Rising Stars” winners at a gala event held at the Fairmont Royal York in Toronto on November 16. Michael Crichton is the Canadian leader of Gowling WLG’s Intellectual Property Litigation & Strategy Group. Based in Ottawa, Crichton has been repeatedly recognized in The Best Lawyers in Canada and was named among the winners of the 2015 Ottawa Business Journal Ottawa Chamber of Commerce “Forty Under 40” awards for both his business and community accomplishments.
Steven Kuemmerle: Rosalind Franklin University of Medicine and Science’s Executive Vice President for Research, Ronald Kaplan, Ph.D., announced today that Steven Kuemmerle, Ph.D., joined the university as special advisor on innovation and industry partnerships in the Office of Research. Dr. Kuemmerle joins RFU from the University of Chicago’s Polsky Center for Entrepreneurship and Innovation where he was senior director for industry relations.
LES Member Spotlight Q&A With Brad Kullberg From The LES (U.S.A. and Canada) Boston Chapter
By Abbie B. Elliott
From October 14-17, 2018, hundreds of IP professionals will convene in Boston, Massachusetts for the LES 2018 Annual Meeting’s multitude of educational offerings and networking opportunities. We spoke with Brad Kullberg, Senior VP at Nathan Associates, Inc. and Co-Chair of the Boston Chapter, about why you should get excited about “The Birthplace of Innovation” (www.lesmeetings.org/am18). Q: Why should attendees be excited about this meeting? A: Brad: It’s been many years since Boston has hosted an Annual Meeting, and there have been so many exciting developments in recent years including the Seaport District, Kenmore Square, and Downtown Crossing. Always rich in history, today, Boston is a vital center of innovation and culture.
Q: What is your favorite thing to do in Boston? A: Brad: Running along the Esplanade with a view of MIT and Cambridge across the Charles River is always amazing. I have a family member who would answer “shopping on Newbury Street.” Q: What is your favorite restaurant in Boston? A: Brad: So many great options, I can’t narrow it to one. Three great seafood restaurants are: Ostra on Charles Street, Row 34 in the Seaport, and Mare in the North End.
Brad Kullberg
To reach Brad with your questions: Bradford J. Kullberg CLP, Senior Vice President, Nathan Associates, Inc. Boston Chapter Co-Chair bkullberg@nathaninc.com
15 | June 2018
Q: What is one thing attendees should bring to Boston? A: Brad: Attendees should bring some spending money for Red Sox and Patriots team gear because isn’t every one a Red Sox and Patriots fan?
Q: What makes Boston unique? A: Brad: The ridiculous local accent.
Boston–The Birthplace Of Innovation–To Host Annual Meeting
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By Linda Corcoran ear ye! Hear ye! LES (U.S.A. and Canada) will take Boston by land, air and sea as legal, technology, financial, and business professionals from across the nation gather for the 2018 Annual Meeting, October 14-17. The meeting theme, “Birthplace of Innovation,” refers to this historic city, sometimes called “The Cradle of Liberty” or “The City on a Hill.” Since its origin, creativity and ingenuMichael Fluhler ity have made Boston their home. The region Meeting Chair is noted for its institutions of higher learning, such as Harvard and Massachusetts Institute of Technology (MIT). While Biotechs, the likes of Amgen, Biogen and Novartis, also have a heavy footprint in Boston, as does much of the modern tech world.
Boston provides a hotbed of innovation for the LES 2018 Annual Meeting, which will celebrate licensing and examine its current trends and evolving best practices. The meeting will offer perspectives from the world’s leading IP authorities across industry sectors.
Leading the charge for the opening plenary session will be Dr. Walter G. Copan, Intellectual Property and National Institute for Standards and Technology (NIST) Director and Under Secretary of Commerce for Standards and Technology. Andrei Iancu, United States Patent and Trademark Office (USPTO) Director and Under Secretary of Commerce, will join Dr. Copan in an informal, conversational “fireside chat.” Dr.
Copan will draw on insights from his distinguished and diverse career as a science and technology executive in large and small corporations, U.S. Government, nonprofit, and other public-sector settings. Mr. Iancu, in addition to his role at the USPTO, serves as the principal advisor to the Secretary of Commerce on domestic and international intellectual property policy matters. Their joint conversation promises to be transparent and lively. Another meeting highlight will occur at the Tuesday Chairman’s Luncheon, when Deepak Malhotra, Eli Goldston Professor of Business Administration at the Harvard Business School, takes center stage. Mr. Malhotra brings knowledge garnered from his teaching, research and advisory work that focuses on negotiation, dealmaking and conflict resolution. In addition to networking opportunities and plenary sessions, there are educational course Deepak Malhotra offerings, including a CLP Exam Review course, which many registrants will find of great value. The Boston Marriot Copley Place will provide this year’s Annual Meeting venue. Room reservations can be made directly with the hotel; discounted rates are available through September 27, 2018. Meeting information and registration can be found at lesmeetings.org. Make plans now to meet in Boston, where invention and innovation have flourished since the birth of our nation.
16 | LES Viewpoints
2018 Meetings Zurich • Pan-European Meeting—Friday, July 13, 2018 Cancun • Pan-American Meeting—Friday, September 21, 2018 Hong Kong • Asia Pacific Meeting—Friday, November 30, 2018
LES 2018 Annual Meeting OCTOBER 14-17 OCTOBER 14
5 Reasons to Attend: – Sunday Evening Welcome Reception Hosted by:
– Revolutionizing the Gala Night “Big Top
LES: More than just Licensing” – Sector Crawl Event – Annual Frank Barnes Award & Annual Deals of Distinction Awards Luncheon – New Exhibit Hall Discoveries & Networking REGISTRATION RATES
SAVE with Early Bird Rates: February 1–May 5 Member $1,395 | Non-Member $1,595
Education Offerings – IP101 Business Basics – Valuation Workshop – IP in the Boardroom Workshop
OCTOBER 15
Opening Plenary Fireside Chat Featuring Keynote Speakers:
Andrei Iancu
Director, United States Patent and Trademark Office (USPTO) and Under Secretary of Commerce and Intellectual Property
Dr. Walter G. Copan
Director, National Institute for Standards and Technology (NIST) and Under Secretary of Commerce for Standards and Technology
OCTOBER 16
Chairman’s Luncheon Featuring Keynote Speaker:
Professor Deepak Malhotra
Regular Rates: May 6 – October 5 Member $1,595 | Non-Member $1,795
Eli Goldston Professor of Business Administration, Harvard Business School
TO REGISTER, VISIT:
OCTOBER 18
http://www.lesmeetings.org/am18
CLP Exam Review Course
For more information please visit: www.lesusacanada.org/education
SPONSORSHIP & EXHIBIT OPPORTUNITIES NOW AVAILABLE! Contact: sponsors@les.org
Official Hotel:
Boston Marriott Copley Place 110 Huntington Avenue Boston, MA 0 2116 Special LES Room block with rates available starting at $299 per night
Boston, Massachusetts
the birthplace of
INNOVATION 17 | June 2018