GLOBAL 2014 March LES 1 XLIX No

GLOBAL 2014 March LES 1 XLIX No. Vol. NEWS Highlights Societies’ News Meetings New Members Reviews

Advancing the Business of Intellectual Property Globally First Pan-European Young Member Event Presents Challenges In Licensing By Tilman Müller-Stoy n November 15, 2013 the first Pan-European Young Member Event was held in OVienna. More than 70 participants—almost half of all LESI YMC members—attended the conference. The conference was hosted in the magnificent old ceremonial hall at the Vienna University of Technology. The general topic discussed was “Chal- lenges in Licensing.” Speakers came from different countries all across Europe (Ger- many, Austria, Sweden, France, Switzerland) and even from outside of Europe (U.S., Russia) as well as from different professions (law, business, industry). The topics were as different as the licensing business in Russia, the recent evolution of U.S. patent law, compulsory licenses for SEPs, and technology transfer in a global electronics company. Despite the beauty of Vienna, all attendees stayed for the whole conference. In the evening, the conference was followed by an excellent dinner at “Huth im Haus der Musik,” a beautiful venue in the heart of the city. As a must for a Young Member Event, the dinner was followed by a pub crawl which ended late in the night for many attendees and for some even lasted until the morning rose. As the Vienna event was such a big success, plans are already underway for the second Pan-European YMC event in 2014 which will be held in Paris. Further, preliminary discussions are taking place for organizing a first Pan-Asian and a first Pan-American YMC event. The LES 100 Course in Vienna, held in combination with the first Pan-European YMC event, took place on November 16, 2013. MAKE THE WORLD During the preparations for the Young Members Event, the idea came up to combine BETTER THROUGH the event by offering an LES 100 Course by LES Austria as young members and potential future young members are one of the main target groups of a Basics Course. Both LICENSING events were advertised jointly. The trainer team consisted of three persons, Hayley Young Member Event, continued on Page 8

MAY 18-21, 2014 MOSCOW Attendees listen to presenters on the topic of Hayley French presents at the Young Member www.LES2014.org Challenges in Licensing. Event in Vienna. LES Global News—Highlights

Inside LES Global News A Stronger LES

Highlights & Legal Updates In The Year Of The –Pages 1-8 Horse And Beyond Joining Hands, Driving Membership, Sharing By Yvonne Chua, –Pages 5-7 President, LES International

Society News ith the arrival of the Year of the Horse which symbolizes passion, perseverance –Pages 12-15 Wand progress, may this year bring happiness and prosperity to all in the LES family. As the global economy continues with the innovation drive, the coming year will Meetings & Delegates undoubtedly bring more excitement to all in the IP arena. –Pages 9-11, 16-17, 21-24 GTIF 2014 The Global Technology Impact Forum (GTIF) 2014 held in Geneva was another Memoriam pride for LESI. Under the theme “Collaboration,” which coincides with the spirit of —Page 20 my presidential theme Joining Hands, and partnering with WIPO, we were blessed with participation from governments (including the USPTO, Brazilian National Devel- opment Bank, Mexican Ministry of Economy, Industry Canada Ministry and the U.S. Book Reviews Mission), NGO community (ACPAA, AIPPI, and AUTM), entrepreneurs, finance, IP –Pages 18-20 business community as well as the LES family across the Americas, Europe and Asia. Quick Links: The program was inspiring and enriching as we all worked towards global cooperation on the use of IP for regional economic development and for the betterment of www.lesi.org mankind. Our panel speakers included WIPO Director-General Francis Gurry and the WTO’s IP Division Director Antony Taubman. The keynote address by U.S. Court of www.lesi.org/les-nouvelles Appeals for the Federal Circuit Chief Judge Randall Rader beautifully reminded us that www.lesi.org/les-societies our patent system is in fact a compassionate gift that we pass to our next generation. Leading non-profits such as the Gates Foundation and Medicines Patent Pool shared www.les-europe.org their work on providing innovation to developing countries. From our corporate participation, one interesting panel from Orange, Qualcomm and Ericsson focused on www.les-asiapacific.org developments in mobile and telecomm technologies. With great pleasure, I presented the Best National IP Technology and Transfer Policy Call For Content Award 2013 to the Abu Dhabi Executive Council, Technology Development Committee for its pioneer program “Takamul”; and to the Mexican Ministry of Economy and National We request contributions from all soci- Council for Science and Technology for its program on “the Creation and Capacity Building eties and individuals about important of Knowledge Transfer Offices”; whilst “Water for Humans” was recognized as the Out- events, changes in the law in your coun- standing Humanitarian Technology Transfer Initiative 2013 for its work in rural Mexico. try or region, conferences, annual meet- I am truly thankful to all participants for joining hands with LESI at this unique forum. ings, board changes, and the like from Please join me in con- your society. You can submit articles gratulating the GTIF Planning Committee or announcements to the editor or use including Hector Cha- the form on the website at the following goya, James Malack- address: www.lesi.org/les-societies/les- owski, Martin Schnei- global-news/submission-form. der, Gary Keller, Kristi Deadlines: January 15, April 15, July 15 Stathis, Raymond Re- uteler, Chris Katopis and October 15 and all for their year- Editor: Larry Plonsker, 10580 Northgreen Dr., long dedicated work. Wellington, FL 33449 • Email: [email protected] For details of the GTIF 2014 program Congratulations to the GTIF Planning Committee, and to Award and presentations, Copyright © 2014 Winners (with plaques): Hector Chagoya, Martha Angélica Peña Licensing Executives Society International please visit www.gti- Ceniceros, Yvonne Chua, Rick McKenney, Ahmed Al Calily, Jim forum.org/gtif2014. Malackowski and Arnaud Michel.

2 Licensing Executives Society International LES Global News—Highlights

Planning Meeting—Regionalisation Based on our reputation for education and excellence in IP in- It was heart-warming to see many of our National Presidents sights, WIPO invited LESI to participate in TISC’s online educational and Committee leaders joining the Board in Geneva for the Winter program series. Our External Relations Committee will select the Planning Meeting. Their presentations, very well prepared, im- speakers. Other participating organizations include the Gates Foun- mediately drew interesting discussions on various captivating top- dation, New Hampshire Law School and General Electric. ics of concern for the LESI Family. Under the theme “A Focus on Joined by President Elect Arnaud Michel, Presidential Nomi- Regionalisation” as announced for the next society year, President nee James Sobieraj, and Markus Ineichen, we had fruitful meet- Elect Arnaud Michel chaired the meeting. The main goal was to ings in Geneva in January with Dr. Francis Gurry, Director Gen- study the strengths and weaknesses of regional societies, improve- eral of WIPO, and various other WIPO officers on fostering a ments that could be done and how we could join hands to over- closer collaboration, in accordance with our MOU with them. come challenges, assist societies in their mission and enhance WIPO has been our strong strategic partner for GTIF since the value to members. At the heart of the consideration was the inven- inaugural forum in January 2012. tive tools and international focus of committees, including nation- Society Visits al committees, to get a critical mass that would in turn increase In fulfilling my presidential duty and with pleasure, I visited LES LESI synergies and true global discussions on global issues. In this Germany in January and at- day long and productive meeting where more than 40 of us gath- tended their Seminar and ered, committees also shared their work progress to-date and their General Assembly when I pre- plans for the upcoming society year. sented the Joining Hands Addressing IP Trends chopsticks to newly elected With the increased global enthusiasm on the business of IP, I President Peter Hess, a dear was invited in January to speak at the 2014 Asian Licensing Con- LES friend. In meeting with ference held in Hong Kong, the largest annual event of its kind in their board, I am impressed Asia, on the topic of ‘Intellectual Property Protection for Brand by its good mix of members Owners and Practical Tips on Licensing.’ from the industry, university and legal sectors, etc., built At GTIF, I was honoured to speak on ‘Global IP Trends 2013 up through its detailed ‘suc- Highlights’ at the first Panel Session. As IP and technology transfer cession plan’ and also its in- Peter Hess (left) and Frank issues are becoming more essential to all aspects of our lives and creasing female composition. Zacharias joining hands with around the globe, and with IP filings rising to new heights with Yvonne Chua. Asia as an IP powerhouse; in such trends, we see the unique In my subsequent visit to strengths of LES in advancing the business of IP. LES Britain & Ireland, one of the earliest LES societies to be Pursuant to the tremendous interest on the Asian IP marketplace, established, I was invited to at the Seminar organized by LES Britain & Ireland in London on 23 take part in a special pro- Jan 2014, I shared a presentation on ‘Recent IP Trends in the Asia gramme which included a sem- Pacific,’ which was a collaborative effort of all LES Asia Pacific societ- inar, drinks reception and din- ies and an excellent illustration of the power of joining hands. ner as well as their board Fostering Our Collaboration With WIPO meeting prior thereto. I am In the spirit of continued collaboration with WIPO following our delighted to see that many se- MOU, LESl is pleased to accept WIPO’s invitation to join as a part- nior members are continuing ner in WIPO’s new initiative, WIPO Green, to tackle environmen- their involvement in the soci- tal challenges of the day. Launched in November 2013 with wide ety; at the same time, young members have wonderful ideas Jennifer Pierce, President of LES publicity, WIPO Green is an interactive marketplace that promotes Britain & Ireland, receives a gift innovation and the diffusion of green technologies among the in- to contribute. My sincere from Yvonne Chua. dustry. Markus Ineichen, vice-chair of LESI External Relations thanks to both societies for Committee, represents LESI in serving on the Advisory Board. making my visits very special. The warmth of this LES friendship will always be remembered. We are pleased to be a founding partner of this meaningful program, which is now connected to over 25 partners across dif- Joining Hands ferent regions and are committed to contribute to its important The Joining Hands theme has successfully inspired many collab- work and success. orations amongst societies, committees and between LES and LESI has also been invited in a project carried out through WIPO other organizations. The first Pan European YMC Event which Technology and Innovation Support Center (TISC) that supports took place in Vienna in November 2013 under the joint support of innovators in developing countries in creating and managing new LESI, LES Austria and others was a primary success of Joining solutions to technological challenges. Currently, the program’s fo- Hands. Other collaborations such as by the IUGT, Life Sciences cus includes connecting participants from WIPO innovation sup- and European Committees are in progress. At the same time, the port centers in Africa, Asia, and South America. President’s Message, continued on Page 4

March 2014 3 LES Global News—Highlights

President’s Message, continued from Page 3

AP Regional Meeting to take place in BioPharmaceutical Royalty Rate and Deal Seoul in November as well as the Pan- Terms Survey Latin American meeting with LES Chile, LES Brazil and LES Andean A significant LES membership value is the exclusive access to Community joining hands are also on the BioPharmaceutical Royalty Rate and Deal Terms Survey. On their way. behalf of the LESI Board, I am pleased that we again support con- ducting the survey this year as funded jointly by LESI and LES Importantly, with the World IP Day fast approaching on 26 (USA & Canada) biannually. April 2014, I would strongly encourage all national societies to take part in “Joining Hands Around the World with LES” by host- As industry experts know, valuable data and information suring a local event and/or education program in celebration of the rounding deals of the biopharma industry are often publicly un- value and benefits of IP and licensing in your community. Once available due to regulations and strict confidentiality requirements again, John Paul and Gary Keller are heading this project and will promulgated by the governmental and other regulatory bodies, or be reporting the wonderful results at our Moscow Delegates are being held by proprietary databases. The LES Survey has Meeting and in LES Global News. I sincerely hope that every one emerged as a valuable tool for members, dealmakers, practitio- of our 32 societies will work together to create a great series of ners, and those interested in the biopharma business sector. simultaneous LES events around the globe. For details, please see I will ask all members to support the Royalty Rate Survey when http://www.lesi.org/events/around-the-world-with-les. contacted by their national society. The process strives for confi- LESI President’s Awards dentiality and privacy. Your identity (and any employer’s identity) Following the announcement in Philadelphia of the new Award will be strictly protected. The forthcoming results are most valu- on “Outstanding Activity/Event of the Year” to LES (USA & Canada) able and provide insights for many across the LESI community and LES Japan jointly, I am excited to announce that the LESI who work in the biopharma industry. Board has approved the granting of “The President’s International 2014 LESI Annual Conference Service Recognition Award” to Dr. Hayley French, a remarkable Our highlight of the year is fast approaching. The LESI Annual member, also President-elect of LES Britain & Ireland who has for Conference will be held from 18 to 21 May, being the first inter- over 20 years dedicated untiring service to LES, specifically on national IP conference on this scale to be held in Russia. Under education, with great accomplishments. The President’s Award the theme ‘Make the World Better through Licensing,’ there will on “Most Progressive Society of the Year” goes to LES Korea for be a particular focus on globalisation and emerging markets such its revolutionary reformation in the last 2 years when it has wit- as Russia, the CIS countries, Brazil and China. The Organising nessed a sharp increase in membership, notably from industry Committee from LES Russia has created a wonderful program of sectors, and the establishment of four active committees namely, plenary sessions and workshops covering diverse issues all closely Network Committee, Education Committee, Business Commit- related to the business of licensing. Plenary speakers include se- tee and Publishing Committee, with each committee being led by nior representatives of the Russian Government and industry. a vice president and at least two managing directors. Its innova- Highly regarded IP leaders, such as Dr. Francis Gurry, US Chief tive programs, “The Licensing Clinic” and “The Global Licensing Judge Randall Rader together with senior industry representatives Support Initiative,” as well as its education courses and network- from Siemens, TATA Technologies, J&J and other multinational ing activities to strengthen ties with other NGOs, not to mention companies, will also be addressing us. its active engagement in LESI activities, have all contributed to its well-deserved recognition. I am thankful for the support by many Excitingly, the Conference and the LESI Delegates Meeting will national societies in submitting nominations for these Awards be held at the prestigious World Trade Centre and the special din- and please do join me in giving a big applause to these awardees ner cruise on the River Moscow will surely be one of the high- at our forthcoming Moscow Delegates Meeting to be held from lights. I warmly invite all to join us in May for this unique experi- 16 to 18 May. ence where LES members and the IP community from all over the world will take part in an excellent program of education and so- Improvements in LESI Website cial events. For further details please visit http://les2014.org. LESI continues to improve the website to enhance the user experi- Conclusion ence, thanks to the committed work of Mark Horsburgh, Shawn Jac- ka, Ned Barlas and Chris Katopis. The long term goal is to make the The 2013-2014 Society year is progressing quickly with many website a portal for any professional engaged in commercialisation of outstanding activities having been achieved through the persistent intellectual property and the aim is to provide an access point for collaborative efforts of many LES members. As we continue to ex- news and events relevant to your specific region, sector and interests. pand Joining Hands across the LES family and beyond, I wish to As a first step we have enhanced the delivery of event information by express my heartfelt appreciation to all for your participation and providing a click-through map to local events. The next improvement support to the Joining Hands theme and in giving sparkle to the first will be better use of web page real estate to deliver more information part of our society year. As always, I am eager to learn your thoughts on the home page. Significant improvements to access the member- on how to deliver even more value to our members and I also look ship directory are in the pipeline. forward to seeing you at our Moscow Meeting in May. ■

4 Licensing Executives Society International LES Global News—Highlights

Driving Membership LESI Member Societies Drive Membership By John Walker he LES family comprises 32 sepa- cuss the topics and potential speakers for the seminars within Trate member societies many of the board. LES Switzerland’s Board has representatives of law which are ‘multi-country’ or region- firms, universities, and industry, and this leads to a yearly pro- al. All of these member societies op- gram interesting to different groups of potential participants. erate relatively independently under Playing host to broader regional (Pan European in Davos) and the LESI umbrella. However, all soci- international (Zurich) LES events has also provided LES Swit- eties have one goal in common—to zerland the opportunity to demonstrate to its members the maximize the benefits and experi- benefits of being part of a global pro- ences to all members through join- fessional organization. ing LES. In this edition, three of our LESANZ President Tim Jones reinforc- member societies provide some in- es the France and Switzerland experi- John Walker sights into how they go about en- ence. “In a nutshell, most of LESANZ’s couraging member participation. membership satisfaction is driven by One approach used by LES France is to offer its members a regular and interesting regional events fixed and ‘all inclusive’ annual member- (ideally between 8-12 in each region), ship fee. This fee includes all LES an IAM course (ideally 1 per year per France’s events (in 2013 this included region), together with our Annual about 10 conferences and events, in- LESANZ Conference.” cluding its one day annual meeting in a With an extensive geographical Tim Jones very nice central Paris location). “These spread—from Perth to Wellington—LESANZ strongly believes provide great networking opportunities that regular events in all local regional areas encourages mem- which members look forward to,” says bers and maintains healthy member networking and benefits. LES France President Emmanuel Gougé. Each region has its own committee with the autonomy to select The only benefits not included are spe- topics and run the event, supported by the national secretariat cific training courses, such as LES100, for admin, social media, marketing, etc. LESANZ encourages members to bring a guest for free to outreach to new potential Emmanuel Gougé but these are offered at a very attrac- tive rate. members and clients of its current members. Even with its training courses, LES France aims to organise events, Balance of events is paramount. “We try very hard to maintain a such as LES100, in its regions. This year an IAM course is scheduled mix between the dryer IP law type events, and the more interest- in Toulouse, Gouge said. “We also are keen to reach out to SMEs ing commercially focused events, such as panel discussions and and smaller start-ups,” he added. ‘war stories’ from entrepreneurs and innovators,” says Jones. LES France have also introduced a Young Members Group. Whilst the regions are relatively autonomous, LESANZ are This Group provides great networking sessions and workshops looking at introducing a national ‘series’ of popular events that such as mock trials and licensing negotiations. Numbers are gen- we run across all regions, possibly using the same speakers and erally limited to encourage interaction and participation. fly them to each city. Educational events feature prominently in LES Switzerland’s Use of this regional model means LESANZ’s IAM 101 Course is run in each region during the year (it includes membership agenda. “We normally aim to organize five educational events as an option) and IAM102 is always run at its Annual Confer- per year. Two of them in the French speaking part, three in the ence. LESANZ’s Annual Conference rotates around its regions German speaking part, of which one and thereby stimulates interest in LES in that region. is a weekend in the Alps,” says Re- gula Altmann-Johl, President of LES The above experiences from three of our most active mem- Switzerland. “The weekend special- ber societies all reinforce the benefits members can receive from LESI. They demonstrate a key lesson for member societ- ly gives the opportunity to socialize ies—education and networking (both professionally and so- as well,” she adds. cially) represent a powerful tool for enhancing the member- Altmann-Johl considers that by ship experience. However, the message to members is even having an active and enthusiastic more important—if you have any ideas or suggestions for board and ‘core group’ of members, stimulating activity in your member society, don’t just think they can get an accurate picture of about it; rather, get involved. Not only can this be personally the benefits of being a member of very satisfying, but you can be assured the member society LES. As an example, they always dis- Regula Altmann-Johl will really appreciate it. ■

March 2014 5 LES Global News—Highlights

Sharing Reflections On LES In Greater China— Impressions From 4th LES Asia Pacific Regional Conference Hangzhou, China, October 15–17, 2013 By Heinz Goddar

aving been privileged to contribute how smoothly the aforementioned LES branches, belonging Hto the development of China’s pat- presently to different policital/economic systems, work to- ent system in general since 1981, upon gether on a very practical level. If one compares the situa- initiative by the German Patent Office tion and peaceful collaborative development of the LES fam- (as the German Patent and Trademark ily in the respective part of the world over the last years, Office, GPTO, was called at that time), with the problems that still exist in other professional orga- having helped in the coming into exis- nizations insofar, my impression is that LES has fully suc- tence of LES China in 1986, having had ceeded in its superior role as the NGO engaging in interna- the pleasure during my Presidency in tional trade with services, like technology transfer. Insofar, LESI in 2000 to bring the (Sub-)Chapter Hong Kong of LES LES functions as a natural counterpart to the World Trade China into life in the year 2000, and, last but not least, later Organization (WTO). having contributed to the foundation of LES Chinese Taipei in I believe that the Hangzhou Regional Conference, followed 2003, I had the pleasure to experience the developments of the by LES China’s Annual Meeting 2013 where I had been in- various LES “branches” in “Greater China” at the 4th Asia Pa- vited by the Board of LES China to participate as a “narra- cific Regional Conference at Hangzhou with great satisfaction. tive” Keynote Speaker, explaining my personal experiences I had participated, before that, in various local and region- with the LES history in “Greater China”, has proven again al conferences of both LES China (LES-CN), LES China— that LESI and its national/regional societies are the real Chapter Hong Kong (LES-CN-HK), and also LES Chinese Tai- stakeholders of the realization of Article 7 TRIPS. pei (LES-CT). Also, I had experienced a closer and closer In a nutshell: I have been proud that I had the chance to cooperation between the aforementioned LES branches on contribute to many of the above mentioned developments in an international scale under various aspects. What struck me “Greater China” to a certain extent, be it as a member of at Hangzhou, however, has been the experience of a very various Committees of LESI, be it as a member of the Board mature interaction and collaboration between LES-CN, LES- and President thereof. May the cross-strait as well as intra- CN-HK and LES-CT, as it had already led in the past to a China development of the LES family in “Greater China” number of cross-strait activities. continue its prosperous path for many, many years to come, Needless to say, how touching it has been for me to see for the benefit of all of its members and beyond!■

“LES is truly a Neil Wilkof: Co-Winner Of The global family. 2013 INTA Advancement Of Before traveling internationally, I Trademark Law Award always reach out he International Trademark Asso- to my friends in T ciation noted Neil’s “long-time con- LES or the local tribution as a writer, a speaker and an educator. Most recently, while serving chapter to attend on the Editorial Board of INTA’s peer- an LES meeting reviewed journal, The Trade Mark Re- during my visit.” porter, Neil has been instrumental in expanding the journal’s global reach —Jim Malackowski, and enriching its content.” Neil is a Past-President LESI long time LES member. ■

6 Licensing Executives Society International LES Global News—Highlights

Joining Hands Around The By François Painchaud World With LES By Chris Katopis

ith the World IP Day, which ember Societies of the Li- Wwill fall on April 26, 2014 Mcensing Executive Society this year, the Joining Hands proj- International around the world hold events under the umbrella of ect reaches its whole magnitude. “LES Around The World (ATW)” This is a particularly important ini- on or around April 26th, the day tiative for LES this year as Joining on which the WIPO Convention Hands brings together all the local chapters of many came into force in 1970. LES ATW Societies. John Paul and Gary Keller will lead the LESI is an extraordinary opportunity to effort along with Chris Katopis. As in the past, we reach out to our like-minded colleagues and other organiza- would ask your support to plan activities for this year tions to celebrate our passion for our profession. and consider how you can celebrate the value and The goal of LES ATW is to increase general understanding benefits of IP and licensing in your community. Please of what IP really means and offers an opportunity each year let us know by March 15, 2014 (email [email protected]) to join with others around the globe, to highlight, discuss and demonstrate how IP helps shape our world. Across the who will be the designated coordinator for your na- globe, events are held that bring together IP stakeholders, tional society and provide the coordinator’s contact experts, and novices from within the LES organization and information. We trust your leadership will enable an- in partnership with other organizations and outsiders. other great impact on the LES family. The practical effect is that LES members come togeth- LES Japan took the lead by er—or “Join Hands”—within their own society, as well as making a meaningful visit to with the LES family as a whole. Societies are encouraged its mentee, LES Malaysia, on to be as creative as they like in organizing ATW events, November 19, 2013 [link to whether it is a series of IP and business seminars or mere- ly a reception at a firm office. the story enclosed]. Both societies exchanged on their ac- Examples of past ATW events have included: tivities and on IP and License • Multi-day seminars on patents, trademarks, and topics. More than the professional aspect, the human licensing; presentations made in connection with local universities; experience teaches us how to better work together, • Networking luncheons; meeting with local IP agents; erasing borders and enhancing our potential. coordinating with a government agency, such as a LES Chile also chose to broaden its perspectives by patent office or an embassy; joining hands with LES Andean Countries and LES Bra- • Supporting a WIPO workshop for an ASEAN zil in their efforts towards having a Pan-Latin American delegation; hosting a quiz game; holding a happy meeting in the near future. In the meantime they will hour reception. organize a joint meeting with Andean Countries and LES ATW, continued on Page 9 Brazil in 2015 in Santiago, Chile. All this positive emu- lation will gather LESI strengths to help bring them visibility and new members. At the same time, LESI Past President, Kevin Nachtrab, traveled to Chile from October 21st to 24th 2013 to meet the leadership of LES Chile. They enthusiastically support the initiative to bring the LESI CLP review courses to Chile, as it was highlighted that putting on educational offerings will help to raise the profile of LES in Chile. We are all thankful for these initiatives, which em- body the creative drive of LESI and remind us that the big and strong LESI family mountain is made of little LES Czech Republic—Mr. Emil Jeneral from the Czech IPO stones. What’s yours? ■ discusses the European Patent Convention, at the LES ATW. March 2014 7 LES Global News—Highlights LIVE, IN NEW YORK….. The FINAL ROUND of the LES International Business Plan Competition!

lan now to join the LES Foundation for the Final Round ness plans to an expert panel of judges in hopes of winning Pof its 2014 International Graduate Student Business Plan the $10,000 Grand Prize or the $5,000 LES International Competition, March 24th from 1 p.m. until 5 p.m. at the Global Award. All of the finalist teams will select from a Crowne Plaza Times Square Manhattan, 1605 Broadway (at pool of valuable in-kind prizes. Visit www.lesfoundation.org 49th) in New York—one day in advance of the LES (USA & for more on the finalist teams. Canada) Mid-Year Meeting. The LES Foundation Board credits numerous Competition “The Finals are open to anyone who is interested in seeing supporters for this year’s impressive pool of participants, next-generation technologies and meeting future IP leaders,” including: said Competition Chair Annemarie Meike. “It’s an exciting • LES (USA & Canada) Chapters and LESI National Societ- afternoon and a great way to kick-off the LES meeting.” ies for their assistance in reaching out and recruiting teams This year, 74 teams from around the globe, including Aus- from university programs locally and regionally. “Special tralia, Belgium, Canada, France, Great Britain, India, Kenya, kudos goes to the Houston Chapter for creating a Competi- Sweden and the United States competed, and on February tion Chair position to help coordinate team recruitment 7th six teams were invited to advance to the Final Round in Texas in support of the Competition,” said Foundation in New York where they will present their innovative busi- Board President Tom Britven. “We hope other chapters will adopt this idea so that we can continue to grow this great event.” • Mentorship Chairs Phil Barnett and Mark Smith, who worked to enhance the func- tionality and reach of the Mentor Program to assure expert mentorship for the teams in preparation for the Finals. • 2014 Judge Coordinator Mike Kraus, who recruited over 50 judges internationally. This robust complement of judges not only assures statistical accuracy, but also facilitates the Foundation’s goal of providing educational benefit and comprehensive feedback to all participating teams, even those eliminated in the First Round. • All of the 2014 mentors and judges for their most valuable contributions. • LES (USA & Canada), LES International and Global Award recipients Stephen Kayode of ParadigMed (left) and Antonio Gentile of MRS all of our 2014 sponsors and donors for their (right) celebrate their winnings with LES Foundation Secretary Peter Ross. valuable financial and in-kind support. ■

Young Member Event, continued from Page 1 French from Great Britain and Daniel Herzog as well as seven different European countries (38 percent Austrian Karin Hofmann from Austria. participants). With regard to the professional background The course was scheduled on a Saturday to make it easy there was a good composition among the attendees, com- for European Young members coming for the YMC Event ing from university technology transfer offices, industry to take part in the course if they stayed for the weekend. and law firms. The benefit of this combination for LES Austria was a The participants as well as the trainers enjoyed the larger attendee group because of the YMC participants and course, especially the Licensing Game, and the feedback the exchange of viewpoints from other countries for the was very good. Furthermore, there were three new LES Austrian attendees. members registered in Austria and some more in other There were 23 persons registered, of which 21 attended countries due to the Event. the course, despite the excellent evening program of the To cut it short, the LES 100 Course offered in combina- YMC Event the day before. The participants came from tion with the YMC Event was a great success. ■

8 Licensing Executives Society International LES Global News—Meetings

Global Technology Impact Forum Recap January 19-21, Geneva, Switzerland By Chris Katopis

n January 2014, the 3rd Annual LESI Global Technology two day event, LES Society Members from throughout Eu- IImpact Forum (GTIF) was hosted by the World Intellectual rope, the United States, South Africa, Singapore and China Property Organization (WIPO) in Geneva, Switzerland. GTIF were part of the dialogue during the panel presentation on is the most significant gathering of senior leadership of non- various topics. One particular moment of note was when a government organizations (NGOs) dedicated to the business panel specifically called upon Jorge Goldstein (LES (USA & of intellectual property globally and specifically to the trans- Canada), of the Sterne, Kessler Goldstein & Fox law firm to fer of IP and related technology to those in need. discuss their IP pro bono practice. They see IP as a human The event proved to be a powerful collaboration of re- right. Jorge discussed the firm’s pro bono representation in nowned IP professionals and senior leaders in science and a matter concerning the licensing of the jagua plant (which technology. We were pleased to welcome a number of first produces a safe blue food colorant) with European multina- time participant NGOs including the African Agricultural tionals. A lively conversation on public health issues, includ- Technology Foundation (AATF), American Council on Re- ing the trademark issues surrounding tobacco plain packag- newable Energy and the Drugs for Neglected Disease Initia- ing, also emerged. tive. And we welcomed back a number of organizations who It is in fact this collaboration, consistent with Yvonne had participated previously, including the Bill & Melinda Chua’s theme for this year of “Joining Hands,” that pre- Gates Foundation, the World Trade Organization, All China sented the most significant moments during the event. Of Patent Attorney Association (ACPAA), AIPPI, and AUTM, particular note in this regard was the corporate representa- among others. We were pleased to welcome diplomatic mis- tives discussions with various NGOs following a remarkable sion representatives from several governments, including panel focused on developments in mobile and telecomm Canada, Brazil, Germany, Mexico, UAE and the United technologies, which featured speakers from Orange (Luc States. The USPTO provided an update on its Patents for Savage, LES France), Qualcomm (Sean Murphy), and Erics- Humanity pilot program. son (Gustav Brismark). While many traditional events encourage interaction For those who would like to learn more about the GTIF among the panelists, this event extended the sharing of in- 2014 program, speakers, and see the presentations, please sights to members of the galley. In many instances over the visit www.gtiforum.org/gtif2014. ■

LES ATW, continued from Page 7 As an LES member, you should be proud that we host For the latest information on ATW 2014 events, please this unique global gathering of thought-leaders, NGOs, visit: http://www.lesi.org/events/around-the-world-with-les. ■ government representatives, corporate, and firm experts. We urge your society to become involved with your local events this year. We are pleased that the following LES societies are among those who have made commitments to celebrate ATW 2014: Arab Countries Australia and New Zealand Austria Benelux Brazil Chile China-Hong Kong France Italy Japan Korea Malaysia Philippines Russia Scandinavia South Africa World IP Day experts from LES Arab Countries: (right to left): Ali Jazairy (WIPO), Gary Keller (Xomix), Andreas Winkler (Boehmert), Spain and Portugal Switzerland Heinz Goddar (Boehmert), Omer Hiziroglu (Inovent), Mohammad Turkey USA & Canada Shariff (U. Putra) and Raja Saliba (Sughrue). March 2014 9 LES Global News—Meetings

LES (USA & Canada) Meet Some Of The World’s Leading IP Dealmakers At The 2014 LES Mid-Year Meeting— Featuring Sector Specific Networking & Workshops

Program Update: United States District Judge James F. Holderman will present “F/RAND Licensing: A Federal Judge’s Perspective” as the Keynote Speaker on Thursday, March 27. Judge Holderman is the only federal judge who, to date, has made a RAND determination in the context of a multi-district, multi-party case. He did so in October 2013 in Innovatio IP Ventures, LLC Patent Litigation, MDL 2303. He is in a unique position to provide a federal judge’s perspective on F/RAND licensing.

uilding lasting professional relationships and collaborating sant IP Management; and Stefan Tamme, VP of IP Strategy, Bwith peers from around the globe is consistently cited as a Rambus. Note: This session is a follow-up to an article pub- top benefit of attending LES meetings. The 2014 LES Mid-Year lished in the December issue of les Nouvelles. Meeting, March 25 to 27 at the Crowne Plaza Times Square • Industry-University-Government Interface—Doing Deals Manhattan, will bring together hundreds of experienced profes- with Chinese Universities: An In-Country Perspective—This sionals from the legal, financial, business and technology fields workshop will provide a brief overall view of the current IP to discuss trends and best practices in IP and licensing. environment in China; describe the challenges in obtaining A truly international event, the Mid-Year Meeting will host patents in China; discuss the core differences in patent pros- attendees from more than a dozen countries including Canada, ecution practice between the U.S. and China; and review the China, Switzerland, Germany, Mongolia, Taiwan, Korea, Japan key considerations when dealing with a licensee based in and the United Kingdom. Speakers from GE, Pfizer, IMG World- China. Speakers: Mark Bloom, CLP™, RTTP™, Director of wide, Lilly Ventures, Bose Corporation and many other IP ex- Corporate Alliances & Technology Transfer, Bigelow Labora- perts will lead thought-provoking and interactive sessions. tory for Ocean Sciences and Philip Zhang, Ph.D., Co-Man- The Mid-Year Meeting offers innovative programming custom- aging Principal, Milstein Zhang & Wu LLC. ized for each LES sector, as well as expanded cross-sector net- • Chemicals, Energy, Environmental, and Materials—I working opportunities. This unique format facilitates industry- Built My Patent Portfolio, But Did I Build It On Quicksand?— specific learning while promoting cross-sector collaboration and Recent case law out of the U.S. Supreme Court defining pat- information exchange. entable subject matter and the scope of 35 U.S.C. §101 has Sector Specific Workshops, Open to All created uncertainty regarding what is eligible for patenting. Attendees, Include: And cases involving exhaustion of intellectual property • Life Sciences—How Biopharma Innovation Centers Are rights have added to this uncertainty. This workshop will Collaborating with Academia to Produce Results—Representa- focus on strategies for handling and valuing patent portfolios tives from various biopharma “innovation centers” will discuss in view of the recent Court decisions of Prometheus v. the structures they have developed and adopted to foster and Mayo, Association for Molecular Pathology et al. v. U.S. facilitate development collaboration with academia. Modera- P.T.O, et al. (“Myriad Litigation), and In re Bilski. Partici- tors: Christine Fischette, Senior Advisor, Griffin Securities pants will offer tips for drafting license agreements that and Ron Newbold, PhD, MBA, Vice President Strategic Re- cover these patent portfolios from both a licensee and licen- search Partnerships External R&D Innovation Worldwide Re- sor standpoint and strategies for evaluating and creatively search & Development, Pfizer Inc. resolving issues with existing license agreements. Speakers: • High Tech—Trends & Opportunities in Semiconductor Li- Steve Feldman, Husch Blackwell LLP; David Haas, Manag- censing—Topics include: the effects of more complex system- ing Director, Dispute Advisory & Forensic Services, Stout on-chip devices on patent and technology licensing activities; Risius Ross; and Sumiko Kobayashi, Partner Abe, Ikubo & how industry consolidation impacts semiconductor compa- Katayama (Japan). nies’ IP defense and monetization strategies; the impact of • Consumer Products—Trademark Licensing in a Technol- shifts in global markets—such as the rise of China—on licens- ogy Driven World—With technology evolving at an acceler- ing activities; and synergies and tensions between licensing ated pace, those involved in any areas dealing with trademark and product businesses. Speakers: Drew Fellows, VP Licensing licensing must keep up with the pace of change. This presen- Processors, ARM Ltd.; Changhae Park, VP of IP Licensing, tation will explore suggested contract provisions to remain Freescale Semiconductor; Phil Shaer Sr. VP & GC, Conver- current with today’s technology; expand your trademark and 10 Licensing Executives Society International LES Global News—Meetings

The 2014 LES Mid-Year Meeting takes place at the Crowne Plaza Time Square in New York City.

your brand; protect your brand in a rapidly changing market; erty Legal Association (NYIPLA) for this special Mid-Year Meet- increase your brand value by using technology; and more. ing, which will feature a timely session organized by the leading Speakers: Weston Anson, Consor Intellectual Asset Man- state professional association for intellectual property attorneys. agement; Larry McFarland, IP Legal Specialist, Kilpatrick An additional opportunity for collaboration will take place on Townsend and Stockton LLP; and Robert Strand, VP Licens- March 28, when the 92nd Annual NYIPLA Dinner in Honor of ing, IMG Worldwide. the Federal Judiciary will take place. The proximity of the Judg- Building Important Relationships Face-to Face es’ Dinner offers a unique opportunity to connect with the legal community. NYIPLA members will be eligible for a special regis- To facilitate networking and building strategic connections, at- tration fee to attend the LES Mid-Year Meeting, creating further tendees will have the opportunity to design their own agenda— opportunities for networking and information exchange. in effect, creating a meeting within a meeting. Because meeting peers and professionals from other companies and industries is Views From the Bench so integral to LES meeting attendees, networking events have On Thursday, the Keynote Luncheon Speaker United States been redesigned to more quickly connect newcomers and first- District Judge James F. Holderman will present “F/RAND Li- timers with their groups of interest. censing: A Federal Judge’s Perspective.” Following Judge “The issues, laws and regulations of various countries need to Holderman’s presentation, attendees will be able to hear more be appreciated and understood by everyone in the IP and Licens- views from the bench during a special panel of U.S. District ing community. The Mid-Year meeting affords an excellent op- Court Judges discussing “Judicial Insight into Patent Infringe- portunity to learn and share with colleagues from more than a ment Litigation.” dozen countries,” says Russell Levine, Partner, Kirkland & Ellis IP & Licensing With an International Perspective LLP and LES USA and Canada President. “Time and again, the This year, March 25 to 27 will be three days that will advance relationships made at LES meetings are the crucial factor in an your competitive position. You’ll explore trends and exchange important deal. Our goal is to increase the opportunity for at- ideas at sector specific workshops and cross-sector networking. tendees to connect within their sector as well as with those in You’ll collaborate on new strategies and best practices. So mark other sectors.” your calendar and register now for this outstanding opportunity In Partnership With the New York Intellectual to build relationships with the world’s leading licensing, intel- Property Law Association lectual property, business development and technology profes- LES is pleased to partner with the New York Intellectual Prop- sionals. www.lesmidyear.org. ■ March 2014 11 LES Global News—Society News

LES South Africa Public Health Sector And The South African National Policy On Intellectual Property By Madelein M. Kleyn

he publication of the South African National Pol- manifest shortcomings of the Ticy on intellectual property (SANIPP) in Septem- draft policy document. Re- ber 2013 has opened a proverbial can of worms and grettably, the document is so the Pharmaceutical industry is up in arms. flawed in many respects that Madelein M. Kleyn The SANIPP proposes the introduction of stronger it is susceptible to a variety of Chair of IP, University of Stellenbosch IP rights through the introduction of, amongst oth- interpretations and it may ers, pre-and post-grant opposition proceedings, and well be that its ambiguity and incoherence has been makes reference to the introduction of compulsory the cause of the present contretemps. That said, the licensing provisions in the Patents Act. Whilst the IP Chair does not agree with the PAE that the SA- focus is on various industries, the matter of public NIPP is aimed at “justifying a weak IP regime that health and the pharmaceutical industry forms a cen- allows the government to abridge intellectual prop- tral theme of the SANIPP. erty rights that are well established in the developed The Innovative Pharmaceutical Association of South world” or that the policy is aimed at scaring off for- Africa (IPASA) voiced its dismay with the SANIPP and eign investment. made it clear that it is adamant to do all in its power The broad objective of the SANIPP (as set out on to prevent the SANIPP from being implemented. IPA- p. 4 of the Policy document) in general is to stimu- SA approached a Washington, D.C.-based, lobbying late the economy of SA and to empower its citizens. entity Public Affairs Engagement (PAE) which, A strong IP system with integrity and credibility of IP amongst others, has as a goal “to shape public policy rights granted under the system, and a system which and opinions.” See http://publicaffairsengagement. complies with the principles of international instru- com/who-we-are/. ments, such as TRIPS, will assist in achieving and PAE has proposed a campaign to delay the implemen- realising the objectives. tation of the policy. The Mail and Guardian published The SANIPP includes proposals for stronger pat- the campaign document in early January 2014 on http:// ents through the implementation of examination cdn.mg.co.za/content/documents/2014/01/16/sk- systems and incorporation of pre-and post-grant op- mbt36314011511040.pdf. position proceedings. Such a system, if viable for Health Minister, Aaron Motsoaledi, defined and criti- implementation in South Africa (a serious question cized the campaign document by saying, “This docu- mark must be raised in this respect), would result in ment can sentence many South Africans to death. he patents granted that have passed the patentability said. That is no exaggeration. This is a plan for tests of novelty, inventive step and industrial appli- genocide.”(http://mg.co.za/article/2014-01-16-motso- cability. The current law already lays down these aledi-big-pharmas-satanic-plot-is-genocide). substantive requirements, and an examination system will not alter this in any respect. The temperature of the debate has unfortunately risen out of all proportion and what is required is It must be accepted that the reason for protect- that all parties should take time for sober reflection ing intellectual property in a competitive environ- so that it can be pursued on a rational, calm and ment is mostly related to financial benefit. In the constructive basis. The IP Chair has reviewed the case of health care, the subject matter requires proposed campaign and, although we are in agree- substantial financial investment for research and ment that the SANIPP is vague and of poor quality development, inventions and exploitation and as and that it should not be rushed into implementa- such, pharmaceutical companies would not make tion without proper public consultation with the rel- the required investment without assurance of in- evant IP role players and experts, this is where it tellectual property enforcement. stops. The Chair has previously commented on the The patent system is designed to promote innova-

12 Licensing Executives Society International LES Global News—Society News tion and, at the same time, offer a mechanism en- (MNC) brought a law suit against the government of suring that the fruits of that innovation are accessi- South Africa for its passage of this Act. The law suit ble to the general public. In the context of public was dropped as a result of immense international health, the challenge for policy makers is to opti- pressure in April 2001. The law is still intact and is mise the balance between the rights of patent hold- available for use. This factor seems to have been ers, who provide technological innovations to im- overlooked by the writer of the draft policy docu- prove health conditions, and the needs of the ment, the Minister of Health and IPASA. general public. In Conclusion This challenge is an international one as health The SANIPP does not advocate weak IP protection. conditions and crises, such as malaria, tuberculosis The specific aspects raised in the SANIPP that can and HIV/AIDS, continue throughout the world. impact the pharmaceutical industry per se are in fact Through TRIPS certain flexibilities are provided for already part of South African law. Any delay of the member countries which include the inclusion of pro- implementation of these measures on account of the visions of compulsory licensing in patent legislation. steps set out in the PAE campaign document can only Compulsory licensing is not foreign to the devel- be to the disadvantage of South Africa. oped world. There are some uniform regulations The success of the implementation of the SANIPP with regard to EU compulsory licenses where the will depend first and foremost on the policy being EU considers the importance of granting these li- formulated in a coherent, systematic and lucid man- censes in the interest of the community as a whole, ner, unlike its presentation in the draft document. such as compulsory licensing of patents relating to Once the policy has been properly stated, its suc- the manufacture of pharmaceutical products for ex- cess will depend on the manner in which the objec- port to countries with public health problems. Al- tives of the SANIPP are to be achieved and whether most all of the members of the EU provide for com- the IP system is moulded to suit the developmental pulsory licensing in their legislation. Although the objectives of the country, and be aligned with and USA does not have compulsory licensing per se, the appropriate to the level of development and innova- abuse or misuse of patent rights are provided for in U.S. law through U.S. Anti-Trust law. tion of SA. There is no implication that the level of IP protection should be lowered. This should not be Compulsory licensing does not affect the strength the case. A strong IP protection system is generally of IP, just the flexibility in invoking granted patent viewed as a tool to enhance innovation, technology rights when such patent rights are abused. Such development and ultimately economic growth, and abuses can include a patentee’s refusal to grant a this objective should be sought. However, it is not license on reasonable terms, which causes preju- through IP alone that these objectives can be dice. A compulsory licence can serve the public in- reached. In order to address public health and edu- terest. What terms are reasonable in any given situ- ation can be assessed in the light of the conditions cational needs, the role of other factors must be rec- applicable to licensing in the relevant field. ognised, such as the availability and efficacy of health services, particularly public health services, Compulsory licensing is presently, and has been the availability and pricing of essential foods, access for quite some time, included in the South African to schools and educational institutions, and the patent law in S56 of the Patents Act. The facility quality of the teaching and training. has, however, just never been used. The formulation and implementation of the IP South Africa has in the past taken steps to deploy Policy must take place through a civilized and prop- TRIPS flexibilities in the face of genuine AIDS erly orchestrated consultative process involving IP “emergencies.” In this context the Medicines and Related Substances Control Amendment Act No. 90 role players and experts in industry. We are a de- of 1997 was adopted. The objective of the Act was mocracy after all. In this way destructive public con- to reduce drug prices by allowing generic substitu- frontations can be avoided in the common good. ■ tion of off-patent drugs, the parallel importation of on-patent drugs, as well as price transparency. This This article was previously published. See http:// Act caused quite an uproar in February 1998 when blogs.sun.ac.za/iplaw/2014/01/24/public-health-sec- the South African Pharmaceutical Manufacturers tor-and-the-south-african-national-policy-on-intellec- Association and forty Multinational Corporations tual-property/.

March 2014 13 LES Global News—Society News

LES South Africa Society Events By Zelda Snyman

ast events: LES South Africa presented a Ptalk on 24 Oct 2013 entitled: IP Struc- turing and its Implications. The speaker was Andre Visser, a partner at the firm Adams & Adams. Twenty-five people attended. A number of attendees reported that the topic was of great interest and informative. New Proposed IP Policy: LES South Afri- ca submitted comments and suggestions on s Andre Visser, the new proposed National IP Policy to the Attendees at the meeting main speaker listened to Andre Visser talk DTI ( Department of Trade & Industry) in Oc- at the October about IP structuring and its tober. The DTI develops and reviews regula- 2013 meeting. implication. tory systems in the areas of competition, consumer protection, company and intellectual property. Upcoming Events: We have not finalised our 2014 Year Plan- ner, but we are planning a one day Introductory Workshop in Dur- s ban, Natal; the Fundamentals 200 and 300 early in the year; a Na- Meeting attendees take tional Conference around September on Valuation of IP; and, The part in discussions after AGM in July. ■ the meeting.

LES Italy delegates have already been identified (Mr. Bonini and Mr. Daffarra). During the LES Italy General Meeting 2013, the new Bylaws of LES Italy Annual the Association were modified and unanimously approved. In order to increase the number of junior members, LES Italy has General Meeting 2013 decided to increase the threshold for the junior subscription fee from the current age of 30 to 35. Furthermore, to facilitate the at- tendance of the Executive Committee meetings, the Executive Board will now have the opportunity to officially take part in the n October 31, 2013 the LES Italy General meetings by conference call. OMeeting took place in Milan. Over 100 As part of the last LES Italy Annual General Meeting, the Associa- people attended the meeting during which the tion organized a conference which was also open to non-members on new LES Italy Executive Board was elected. “The Latest News Affecting Intellectual Property in Italy and Europe.” Roberto Dini was confirmed for the second The main representatives from the Italian Patent and Trademark consecutive term as President of the Associa- Office and top experts specialized in IP were invited to deliver a tion, while the new Executive Board will be speech at the conference. The speeches on the Unitary Patent and composed of: Roberto Dini, the Unified Patent Court, delivered by Margot Fröhlinger, Principal re-elected Vice-Presidents: Mario E. Traverso, President of LES Director for Patent Law and Multilateral Affairs before EPO, and Marco Venturello Italy for the Marina Tavassi, President of IP Specialized Court of Milan, were Secretary: Corrado Borsano second consecu- particularly appreciated by the audience. ■ tive term. Treasurer: Gian Antonio Pancot Other Officers: Ercole Bonini, Cristiana Brega, Federica Brotto, Riccardo Castiglioni, Luciano Daffarra, Mattia Dalla Costa, Giovanni Antonio Grippiotti, Bruno Muraca, Monica Nannarel- li, Rinaldo Plebani Auditors: Giacomo Bermone, Giulio Bonadio, Andrea Vestita Mr. Dalla Costa, Mr. Grippiotti and Mr. Traverso will also act as Marina Tavassi, President of IP Specialized Court of Milan, Mar- got Fröhlinger, Principal Director for Patent Law and Multilateral International Delegates for LES Italy. To ensure LES Italy’s presence Affairs before EPO, and Roberto Dini, President of LES Italy. at all the main events and IMDMs arranged by LESI, two additional

14 Licensing Executives Society International LES Global News—Society News

LES Chinese Taipei 2014 AUTM Asia Conference Opportunities and Challenges for Asian Emerging Markets—From Innovation to Start-up April 9-11, 2014 • Taipei, Taiwan ES Chinese Taipei is one of the sponsors of the LAUTM Asia 2014 in Taipei, from April 9 to April 11. LESI Past President Heinz Goddar and LESI President Yvonne Chua will speak at the conference in Taipei. The AUTM Asia 2014 Taipei conference will be attended by more than 500 participants. Experts from Asia, Europe and the United States Opportunities and Challenges for Asian Emerging Markets— will discuss important issues regarding innovation and From Innovation to Start-up • Venue: Grand Hyatt Taipei, Taiwan entrepreneurship, as well as the protection, manage- • Early Registration Deadline: Jan. 31, 2014 ment and commercialization of intellectual property. ■ AUTM Asia 2014 is the largest gathering of academic research institutions, industry technology transfer professionals and entrepreneurs in Asia. If you haven’t registered yet, join us by Jan. 31 and save $50! Register now! Go to: http://www.autm-taipei.tw EDM: http://ushopmanager.hiwinner.tw/hipershop/hiwin0073/ Yvonne Chua Heinz Goddar LESI President LESI Past President store/F3/edm_AUTM_Asia%202014_taipei_en_1.html

LES Benelux The Alliance Management LES Benelux Topic Meeting took place in Rotterdam on October 3, 2013. It gathered Topic Meeting: six speakers, 38 attendees, a good mix of industry and service providers, for six sessions in one day. Alliance Management held in The speakers lead us from the fundamentals of an alli- Rotterdam on October 3, 2013 ance (how to plan and add value to an alliance—introduction by George Rahim, GSK) through the contractual part By Dean Gordon (ASML) (Clauses Facilitating Alliance Management by Bruno In today’s economy there is a growing emphasis on alli- Leduc, IBM) to Intellectual Property Management of Alli- Iances and collaboration with external organizations driven ances (presented by Achim Krebs, Haseltine Lake). by the need to access innovation to develop new products They further introduced us to advanced stages in the and technologies. While alliances are not new, some chal- lifetime of alliances where contractual compliance is scru- lenges have to be overcome to achieve operational harmony. tinized by audits and inspections (Contract Compliance and Audits, presented by Bert Van Oosterhout, Deloitte Audit Enterprise Risk Services) and disputes related to alliances can be resolved by way of arbitration and media- tion (Jacomijn van Haersolte-van Hof, HaersolteHof). Fi- nally, Isabelle Ferreira with Prosensa presented IP Strategy in Alliances using a real and practical example. The audience showed a lot of interest reflected by the quality and quantity of questions asked, which offered opportunities to the speakers to further elaborate on the topics and issues presented as well as to the audience to enhance their understanding and knowledge of alliances. ■

March 2014 15 LES Global News—Meetings

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16 Licensing Executives Society International

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MARCH 25–27, 2014 | NEW YORK MARCH 25–27, 2014 | NEW YORK MARCH 25–27, 2014 | NEW YORK LES Global News—Meetings

Around The World With LES

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Celebrate World IP Day with your local Society Network with Friends and Recognize IP’s Role in Innovation Visit www.les.org for upcoming events in your area!

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Book Review | By Dwight C. Olson, CLP and David Drews, CLP this book useful, and True Patent Value then provides a good Defining Quality In Patents reference of appropriate sections to read for And Patent Portfolios each group. He lists the By Larry M. Goldstein groups: 1. Patent Attorneys Publisher: Larry Goldstein (July 5, 2013) and Patent Agents— ISBN-10: 0989554104 ISBN-13: 978-0989554107 for guidelines to understand whether a particular patent is ust the name of the book gave me the impression good and provides Jthat the mystique of a patent’s value would be un- real cases in which veiled in the chapters and that I would be left with a specific actions cre- better understanding of the true nature of the valuation ated valuable patents. conundrum for patents. But, this book proposes not an unveiling of the valuation road for patents, but rather 2. Engineers and the book grapples with the question, “Is a patent any Entrepreneurs—those who want to know if the good?” This is something that all LES members ask, application would result in a good patent. and this book begins to shed light on the quality issue 3. Corporate Executives, etc., engaged in pat- of patents. It is a very good reference book, although ent commerce—those who need to understand a it may be a little heavy on claim construction and in- patent’s value before deciding what to do with it. terpretation for those with interests regarding patents 4. Investment Bankers and Advisors—those who that tend toward other aspects. need to understand how the patent impacts the We should caution the reader at this point and state value of a company. a few limitations of the book. First the book deals only Larry’s preface also contains a set of definitions that with what are called “utility patents.” Second, as Larry are fairly accurate and used by the IP business licensing states, “Patent professionals divide the world into two community as a starting point for many who are not very general kinds of technologies; ‘Information & Com- familiar with the more esoteric issues of good versus munications’ or ICT and ‘biotechnology, chemical, and how good a patent may or may not be. He states, “A pharmaceutical’ or BCP patents.” This book focuses on patent is good if it has ‘good claims,’ meaning that the ICT patents. Third, for our global LES readers, this book claims are well written and have ‘good support’ in the is focused only on U.S. patents, but as Larry states, written description.” “The definition of a good patent and the principles of “The name of the game is the claim,” is a famous high-quality patents discussed apply to every country quote from Giles Rich, formerly Chief Judge appellate that has utility patents.” court of the U.S. for patent decisions, which is certainly Larry said in his opening preface, “I have worked applicable here. on behalf of dozens of clients, and they always ask me Larry uses a set of four concentric circles to illustrate the same question: ‘How do I know if my patent’s any a definitional hierarchy of patent concept. good?’… But in all the years that I have been analyzing patents, no one has ever asked me, ‘How do I know • The outermost circle represents all patents— if I have a crummy, lousy, worthless patent?’” As he the world of existing patents: good, bad and ugly. suggests, patent owners hope they have something of • The next inner circle represents good patents— value, and are averse to consider the possibility that it includes only patents with good claims and they might have junk. Thus, he states, “I am writing good definitions. this book to help you answer the essential question, • The next inner circle represents valuable ‘Is my patent any good?’” Larry does not attempt to patents—it includes those good patents that answer the question, “How good is my patent?” which are infringed and have not been destroyed he contends is more a question of financial value. by external events. Larry goes on to list four groups who will find • The innermost circle represents very valuable

18 Licensing Executives Society International LES Global News—Reviews

patents—those patents which have passed factors, and “financial,” which focuses on quantitative through a full market and financial analyses factors. He further categorizes fundamental evaluation of the infringement(s). into “expert” and “proxy” assessments. While Larry Larry states, “This book is, in essence, an explana- does touch on the financial evaluation of patents, the tion of the concepts just noted. Discussions include: main focus of the book is fundamental evaluation. What is a good patent claim? What is good support for Chapter 2 finishes up with a discussion of “Points of the claims? What is broad scope of claim coverage? and Novelty,” which has to do with the specific innovation What are external events that destroy patent value?” that is new and creates value. The measurements of a good patent, which he calls As stated above, Chapters 3 through 7 provide discus- “gateways to validation,” are: sions on “good” patents segregated according to the 1. Court Victory: The patent won a victory in court, five gateways. Chapter 3 deals with patents that were which means that court litigation resulted in a sig- successfully enforced via litigation in court. There is nificant verdict or settlement for the patent’s owner. a brief introduction to the processes associated with patent litigation, which is then followed by discussions 2. ITC Victory: The patent won a victory in an ad- of four illustrative court cases. The cases selected dem- ministrative proceeding such as that of the United States International Trade Commission (“ITC”), onstrate “lessons learned,” which provide guidance on and the ITC issued an injunction preventing the patent structure, claim construction, language choices infringer from importing the infringing product into and other elements that may prove important when it the United States. comes time to enforce a patent. 3. Sale: The patent was sold for a substantial amount Chapter 4 provides similar discussion and examples of money. related to successful patent litigation via the Inter- national Trade Commission. There is first a descrip- 4. Essential to a Technical Standard: The patent tion of the ITC litigation process, complete with a was accepted as a member of a patent pool with a discussion of key differences between the ITC and wide market. court processes. This is followed by illustrative cases 5. Seminal Patent: Patents which by their subject, and more lessons learned. This chapter also provides their priority date, and extremely heavy “forward insights gained from prosecution mistakes and claim citations” received, are groundbreaking or “seminal” invalidations or scope limitations. patents. Chapter 5 changes the perspective by examining The book is organized into three main parts. Part 1— “good” patents determined as such via the sales prices Basic Information about Patents, Part II—Case Histories they command. In addition to discussing why patents that Illustrate Good Patents, and Part III—Conclusion. have attracted so much attention recently, this chapter A very nice ending to the preface is a table of Reading investigates examples of recent patent sales, both as Recommendations for the folks who will find this book a stand-alone patent transaction and as an individual interesting, highlighting each group with his sugges- patent sold as part of a larger portfolio of patents. tions for chapters to read and in what order. Quite a Chapter 6 explores the concept of “essential” patents nice touch! He also provides before Part 1, Chapter 1, in patent pools. The discussion surrounds how patents a few pages of Chapter Summaries to get a better idea are determined to be essential to the pool and offers of the coming chapters. several case studies of patents that were found to be Chapter 1 offers a succinct overview of what patents essential and subsequently admitted to their respec- are, including discussions on the various types of pat- tive pools. The lessons learned in this chapter include ents and important patent elements. It also provides a general pros and cons in addition to specific claim detailed description of the patent statute (Title 35 of construction guidance. the U.S. Code) and typical claim construction, and a Chapter 7 deals with seminal patents, which are brief description of the patenting process. This chapter defined as those having a relatively early priority date, provides a foundation for better understanding the rest many forward citations, important technology and a of the book’s contents. significant market. The discussion focuses primarily on Chapter 2 explores the concept of evaluating patents. the importance of non-self forward citations. In addition Larry describes the two main categories for evaluating patents: “fundamental,” which focuses on qualitative True Patent Value, continued on Page 20 March 2014 19 LES Global News—Reviews

Book Review | By Ken McKay Fundamentals Of United States Intellectual Property Law–Copyright, Patent And Trademark By Sheldon W. Halpern, Sean B. Seymore and is an active teaching profes- Kenneth L. Port sional at law schools in the United States and, therefore, Publisher: Kluwer Law International; 4th Revised one would expect a scholarly edition (November 12, 2012) ISBN-10: 9041145672, approach to the subject mat- ISBN-13: 978-9041145673 ter covered and this book does not disappoint. s the title indicates, this book does not attempt to deal There is just the right Awith all areas of intellectual property, but rather focuses amount of attention to the only on the three principal areas of Intellectual Property: different aspects of Copy- Copyright, Patent and Trademark. As it is a fourth edition, right, Patent and Trademark it clearly and concisely deals with the current status of the law. The book explains the law as to Patent, Copyright and Trademark in the United history of the origin and legal States with special attention to new and evolving law as basis of each area of intel- it affects the above distinct areas of Intellectual Property lectual property law as well law. In particular, the book deals in a detailed and readily as the scope and origins of trademark law in the United understandable manner with the changes and effects of States, which differs significantly from the origins and legal recent patent law revisions brought about by the America basis of patent and copyright law. This historical and legal Invents Act of 2011. perspective is followed by an analysis of the current state The book is a well organized and thorough analysis of all of law in each of the disciplines. aspects of U.S. patent, trademark and copyright law and This book is a valuable reference authority to assist both the available common law rights under each of the three the professional and the lay person as well as scholars and protections and the available registered protections. students of Intellectual Property law. The book is informa- The brief introduction indicates that each of the authors tive, but also a pleasure to read and review. ■

True Patent Value, continued from Page 19 In Memoriam to lessons learned from the case studies that are specific to particular patents, this chapter also provides a les- Thomas G. Ryder sons learned discussion surrounding patent portfolios. (1932-2013) Finally, Chapter 8 provides a summary of the lessons learned in the previous chapters. It accomplishes this e were saddened to hear by asking and answering 48 questions covering the Wthat Tom Ryder, a long basic characteristics of a good patent, what makes a time LES (USA & Canada) mem- patent’s claims valuable, what is good support for the ber and contributor, passed claims, and good patent portfolio characteristics. The away on November 15, 2013. book concludes with a fairly comprehensive glossary Tom served as the Editor of les Nouvelles from 2001 and an example of an issued patent. to 2005. He was an LES Trustee in 1997-1998, chaired In conclusion, Brian N. Kearsey, Founder of the W- the LESI Membership Directory Committee in 1992- CDMA patent pool (London) states, “TRUE PATENT 1997, and was active in the LES Online Committee VALUE provides a systematic and objective framework from 1993-1997, and the LES Software Licensing for assessing patent quality and value. The method of Committee from 1985-1988. Tom had a long career analysis will be extremely useful to entrepreneurs, en- as a Patent Attorney with Air Products and Chemicals. gineers, business managers, corporate executives, and After retirement, he had a second career as a consul- analysts of high-tech companies. Logically structured tant. Our sympathies are extended to his wife Patricia and well presented, the book explains major ideas in a and his family. ■ clear and user-friendly way.” ■ 20 Licensing Executives Society International The LESANZ Conference Committee reminds LES members to come to Australia to attend our 2014 Conference at the Hyatt Regency, in very sunny and warm Perth on Thursday 20th— Saturday 22nd March 2014, with pre-conference Pitch events starting Wednesday 19th. This event also coincides with LESANZ’s 40th Anniversary celebrations and Gala dinner! Our theme is Ideas. Create. Prosperity, appealing to the innovation and commercialisation community, from the originators of innovation to IP praticioners, Tech Transfer specialisist and Business Managers dealing with all levels of intellectual property in their businesses. Our conference program has national and international experts and thought leaders covering four major topics of: success, collaboration, productivity and mega- science. See www.lesanzconference.org.au Next steps: • Registration is Open and Early Bird closes on 1st February, 2014 • Take a well-earned rest in one of the warmest places in March in Australia; including wineries and beaches, and the best riches of pearls and diamonds. • It’s not too late to review sponsorship and exhibition opportunities. Hyatt Regency, Perth If you have any queries about the Conference arrangements, please don't hesitate to get in touch by emailing lesanz@ tcc.co.nz. We look forward to welcoming you to Perth for what prom- ises to be an engaging and exciting Conference. Stephen Carroll Conference Convenor

We are pleased to announce the publication of . . . Guide to Intangible Asset Valuation by Robert F. Reilly and Robert P. Schweihs

This 700-page book, published in 2013 by the American Institute of Certified Public Accountants, explores the disciplines of intangible asset analysis, economic damages, and transfer price analysis. Guide to Intangible Asset Valuation examines the economic attributes and the economic influences that create, monetize, and transfer the value of intangible assets and intellectual property. Illustrative examples are provided throughout the book, and detailed examples are presented for each generally accepted intangible asset valuation approach and method.

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Robert Reilly and Bob Schweihs are managing directors of Willamette Management Associates, an intangible Willamette Management Associates asset and intellectual property analysis, business www.willamette.com valuation, forensic analysis, and financial opinion firm.

March 2014 21 LES Global News—LESI Delegates

Officers Delegates President Yvonne Chua Andean Community Germany Scandinavia President-Elect Arnaud Michel Jose Luis Barzallo Ingo Bruckner Morten Balle Esteban Riofrio Heinz Goddar Jonas Gulliksson Past-President Kevin Nachtrab Arab Countries Peter Hess Leif Nielson Vice-President Mark Horsburgh Mohammed Al-Ansari Gunter Isenbruck Singapore Vice-President Kenneth McKay Nabil Salame Jochen Schäfer Yu Sarn Chiew ® Argentina Vice-President Fiona Nicolson Guido von Scheffer Audrey Yap Gustavo Giay Hungary Fernando Noetinger South Africa Vice-President Christian Osterrieth Michael Lantos Secretary François Painchaud Australia & New Zealand Zelda Snyman Albert Ferraloro Katalin Szamosi Pieter Venter Treasurer Jim Sobieraj Mark Horsburgh India Spain & Portugal Counsel Michael Lechter Philip Heuzenroeder Rahul Verdak Jose Migual Lissen Counsel Audrey Yap Tim Jones Vishwanathan Sheshan Antonio Tavira Austria Israel Switzerland Thomas Bereuter Dalit Sagiv Regula Altmann Neil Wilkof les Nouvelles Editorial Review Board Rainer Kraft Raymond Reuteler Benelux Italy Martin Schneider Chair: Rodney DeBoos, Melbourne, Australia Achim Krebs Giovanni Grippiotti Jean Christophe Troussel Turkey Lex van Wijk, Amersfoort, Netherlands Mattia Dalla Costa Omer Hiziroglu Lex van Wijk Mario Traverso Heinz Goddar, Munich, Germany Brazil Murat Idal Norm Jacobs, Boca Raton, Florida, U.S.A. Cândida Ribeiro Caffé Japan Katsumi Harashima USA & Canada Sun-Ryung Kim, Seoul, Korea Juliana Viegas Ned Barlas Masato Kobayashi, Tokyo, Japan Britain & Ireland Ichiro Nakatomi Makoto Ogino Allen Baum Kenneth D. McKay, Toronto, Canada Hayley French Pam Cox Fiona Nicolson Junko Sugimura Thomas Bereuter, Vienna, Austria Yorikatsu Hohokabe Ted Cross Jennifer Pierce Mike Dansky Eduardo C.A. de Mello e Souza, Rio de Janeiro, Brazil Mark Wilson Korea Tom Filarski Chile Wendy (Hyosun) Choi Larry Plonsker, Editor Ron Grudziecki 10580 Northgreen Dr., Wellington, FL 33449 Felipe Claro Jeong-Joong (JJ) Kim Fernando Garcia Bob Gruetzmacher Tel: +1-561-432-8814 E-mail: [email protected] Malaysia Shawn Jacka China Pauline Khor Carla J. Blackman, Design Interface Inc. Anita Leung M Rashid Khan Law Yoo Foo Gary Keller Design & Production Christopher Shaowei Mexico Yibin Feng Michael Lasinski Abraham Alegria Russell Levine Chinese Taipei Gloria Isla les Nouvelles Paul Hsu Keith Lutsch Volume XLIX Number 1 Richard Thurston Philippines Simmone Misra (ISSN 0270-174X) Czech Republic Leslie Anne Cruz Tanya Moore les Nouvelles is published quarterly by the Licensing Vojtech Chloupek Ferdinand Negre Dwight Olson Executives Society International (LESI). LESI is an associa- Denisa Svecova Poland John Paul tion of 32 National and Regional Societies, each composed France Marek Lazewski Janet Pioli of individual members who are engaged in the profession Alfred Chaouat Alicja Rogozinska Paul Roberts of licensing and other aspects of transferring or profiting Andre-Pascal Chauvin Russia Art Rose from intellectual property. Subscription to the journal is Emmanuel Gougé Margarita Divina Tony Venturino Arnaud Michel included in the membership dues paid by all members. Natalia Karpova Jeff Whittle Subscription for the print publication is available to non- Society Officers members for US$200/year. Please contact the Editor for further details. Chapter President Secretary Andean Community Estaban RIOFRIO Carolina VENEGAS GAVIRIA The articles published in les Nouvelles reflect the views Arab Countries Talal ABU-GHAZALEH Nabil Salamé of the authors and not of the Society as an association or Argentina Gustavo P. GIAY Veronica CANESE its officers. Material printed in the journal is covered by Australia & New Zealand Tim JONES Jeff BERGMAN copyright. No parts of this publication may be reproduced, Austria Alexander Cizek Sabine FEHRINGER displayed or transmitted in any form, without prior per- Benelux Jean-Christophe TROUSSEL Achim KREBS mission from the Editor or Board of LESI. Brazil Rodolfo MARTINEZ Y PELL Theresa G. Curi ABRANCHES Britain & Ireland Jennifer PIERCE John ROE A peer review and evaluation system is used to maintain Chile Rodrigo LEON Juan Cristóbal GUMUCIO the scholarly nature of the material published in this China-Hong Kong Anita LEUNG Rosita LI journal. All articles submitted for publication are reviewed China Yu PING Yibin FENG and evaluated by members of the Editorial Review Board Chinese Taipei Paul HSU David SU (ERB). The ERB members are chosen for their expertise in Czech Republic Milos HARABA Denisa SVECOVA the fields of licensing and intellectual property. All evalu- France Emmanuel GOUGÉ Marc BETHENOD ations are reviewed in a double-blind fashion to remove Germany Frank L. ZACHARIAS Peter K. HESS Michael LANTOS Katalin DERZSI any bias in the results. The final decision on publication Hungary India Raj HIRWANI Sunil KRISHNA rests with the editor. Israel Hananel KVATINSKY Dalit SAGIV A guideline for authors can be found on our Web site at Italy Roberto DINI Corrado Borsano the following address: www.lesi.org/lesnouvelles/advertise. Japan Katsumi HARASHIMA Kiyotaka WATANABE Hyoseon CHOI asp#submission Korea Jeong-Joong KIM Malaysia Brian LAW Michelle LOI CHOI JOKE Copyright ©2014 Licensing Executives Society International. Mexico Hector CHAGOYA Carlos Trujillo Philippines Leslie CRUZ May CANIBA-LLONA DEADLINES FOR les Nouvelles: Copy for publication Poland Alicja ROGOZINSKA Jakub MRDZOWSKI in les Nouvelles should be received by the Editor-in-Chief Russia Sergey DOROFEEV Velery MEDVEDEV Scandinavia Kaisa FAHLLUND Per ERICSSON as far as possible in advance of the final deadlines, Janu- Singapore Sheena JACOB Suresh SACHI ary 1, April 1, July 1 and October 1. Articles for the South Africa Zelda SNYMAN Darren MARGO white pages are reviewed by the LES Editorial Review Spain & Portugal Jose Luis de MIGUEL Don Jose Miguel LISSÉN Board, and they are published as soon as possible after Switzerland Regula ALTMAN-JOHL Stefan KOHLER acceptance. All materials are to be submitted electroni- Turkey Omer Hiziroglu Murat IDAL cally in either MS Word or Text Only format. USA & Canada Russell LEVINE Paul ROBERTS

22 Licensing Executives Society International LES Global News—LESI Delegates

LESI Management Committees Licensing And Intellectual Chairs & Co-Chairs Property Organizations Meetings Audit Peter Hess Awards Heinz Goddar For more information on LESI Meetings, go to www.lesi.org Thierry Sueur Communications Ned Barlas 2014 2015 Education Jeff Whittle Rob McInnes March 20–22 April 10–12 LES ANZ 2014 Conference LESI Management & Endowment Dwight Olson Perth, Australia Delegates’ Meeting (IMDM) Art Rose March 25–27 Brussels, Belgium External Relations Patrick O’Reilley LES (USA & Canada) April 12–15 Sun Kim Mid-Year Meeting LESI Annual Conference Investment Yorikatsu Hohokabe New York, New York USA Brussels, Belgium Jonas Gulliksson April 7-8 April 26 Wisam Hirzalla Certified Patent Valuation Around the World with LES IP Maintenance Ron Grudziecki Analyst (CPVA) WIPO’s World IP Legal François Painchaud Training Course Observance Day Junichi Yamazaki Dubai, United Arab Emirates October 25-28 Long-Range Planning Russell Levine April 26 LES (USA & Canada) Meetings Fiona Nicholson Around the World with LES 2015 Annual Meeting WIPO’s World IP Brussels, Belgium Membership Alan Lewis Observance Day Arnaud Michel May 16–18 Nominations Jim Malackowski LESI Management & Delegates’ Meeting (IMDM) LESI Industry, Professional & Moscow, Russia Regional Committees May 18–21 Industry LESI Annual Conference Chemicals, Energy, Moscow, Russia Environmental & Materials Rashid Kahn October 5–8 Achim Krebs LES (USA & Canada) Annual Meeting Consumer Products Christopher Shaowei San Francisco, California USA Andreas Winkler November 5-6 High Tech John Paul LES Asia Pacific Regional Life Sciences Pamela Cox Conference 2014 Seoul, Korea Professional Copyright Licensing Michael Lechter Dispute Resolution Tom Filarski Industry/University International Past-Presidents Government Transactions Claire Driscoll Patent & Tech Licensing Pauline Khor 1974 J. Gay 1988 D. Ryan 2001 E. Shalloway Trademarks Martin Schneider 1975 M. Finnegan 1989 K. Payne 2002 T. Sueur IP Valuation Dwight Olson 1976 B. Hedberg 1990 J. Portier 2003 M. Jager 1977 M. Okano 1991 F. Noetinger 2004 J. Gulliksson Regional 1978 D. Smith 1992 A. Mifune 2005 W. Manfroy Americas Marcela Trigo de Souza 1979 J. Gaudin 1993 L. Evans 2006 P. Chrocziel Africa and Middle East Mohammed Al-Ansari 1980 J. Stonier 1994 O. Axster 2007 R. Grudziecki Kevin Dam 1981 S. Heijn 1995 N. Jacobs 2008 C. Fukuda Asia Pacific Audrey Yap 1982 W. Poms 1996 J. Brown 2009 A. Liberman Junko Sugimura 1983 H. Hodding 1997 S. Layton Jr. 2010 P. O’Reilley European Bruno Vandermeulen 1984 F. Pombo 1998 R. DeBoos 2011 A. Lewis Ad Hoc Committees 1985 M. Ariga 1999 P. Mandros 2012 J. Malackowski Business Forums Bill Elkington 1986 L. Mackey 2000 H. Goddar 2013 K. Nachtrab Global Technology 1987 P. Hug Impact Forum Hector Chagoya Martin Schneider Young Members Congress Tilman Mueller-Stoy IP Strategy Subramaniam Vutha

March 2014 23 LES Global News—Advertisers

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24 Licensing Executives Society International