Journal of the Licensing Executives Society International Commercializing Future Technologies
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JUNE 2020 les Nouvelles PROTECTING & JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL COMMERCIALIZING FUTURE TECHNOLOGIES THE FUTURE IS NOW! Advancing the Business of Intellectual Property Globally Special Issue In Cooperation With The European Patent Office The LES 2020 Annual Meeting is focused on KEYNOTE SPEAKER protecting and commercializing technologies that were once the future and are now Dr. Daria Mochly-Rosen LES NOUVELLES JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL omnipresent. Join us for two full days Professor, Stanford University of networking, shared knowledge, best and founder and director of practices, and deal advice you can put The SPARK Program in action. October 18-20, 2020 Loews Philadelphia, 1200 Market St, Philadelphia, PA* PROGRAM TOPICS INCLUDE: • Commercializing Big Data and Machine • Negotiating Liability and Indemnification in Learning Networks an Era of Robotic and Computer-Assisted • Design Protection on Emerging Technologies Medicine, Autos and Product Design • Forces Majeur — Commercializing • Emerging Technologies Poised to Change Technologies in an Era of Trade Wars, the Energy Industry Nationalization, Regional Conflicts, and • Understanding and Exploiting Secondary Climate Change Markets for High Tech, Life Sciences and • Addressing (Un)foreseeable Problems Other Technologies in Commercializing Nanosensors and Nanoparticles Don’t miss this exciting opportunity to learn how to handle IP and licensing issues around new technologies. REGISTER NOW AND SAVE $300! SIGN UP TODAY AT LESMEETINGS.ORG/AM20 * As of the date of this publication, the 2020 LES Annual Meeting is still scheduled for October 18-20, 2020 in Philadelphia, PA. We continue to monitor the COVID-19 situation carefully and will take appropriate measures as needed. Watch our website and social media channels for updates. Expand your brand and increase your exposure with hundreds of IP and licensing professionals. Sponsor or exhibit at the 2020 LES Annual Meeting. Contact [email protected] for details. Volume LV No. 2 www.lesi.org June 2020 Patent translation and filing deadlines? Dealing with remote working, tighter budgets and looming deadlines all adds to your workload. Our LESI online filing platform, inovia, helps our partners streamline their IP services and ease BUSINESS their administrative burdens. BRIEFINGS With inovia you can: 2020 › reduce risk › cut costs › file with a single instruction LESI Business Briefings Available For Download Watch a demo or Find out more LESI has developed three business briefings for the IP Licensing community and for high- growth, innovative business that offer practical advice to businesses looking to monetize their intellectual property. Written by LESI members and experts from around the world, e: [email protected] the three briefings are available for download below. w: www.rws.com Even as intangible assets grow ever-more important to businesses, research has re- vealed that almost 50% of small and medium enterprises (SMEs) do not consider IP to be a valuable investment. With COVID-19 throwing the value of IP into sharp relief, typified by the growing number of businesses pivoting to quickly apply their expertise to devel- oping ventilators, the Briefings fill a crucial gap in the market—to advise high-growth businesses on critical IP considerations to protect their business as they strive to meet new business needs. Thank you! Danke! To all of our Berlin sponsors, especially those included For more information, contact the LESI Office [email protected]. below. We look forward to gathering with you soon. Managing Your Intellectual The Value of License Your Property (IP) Intangible Assets Valuable Assets FREE Free to Members, Non-Members $25 USD Download these LESI Business Briefings at: www.lesi.org/businessbriefings Special Issue Foreword In Cooperation With Small and medium-sized enterprises are key users of the European IP system, creating The European new technologies, jobs and growth. This special issue of les Nouvelles demonstrates how SMEs are using patents and other IPRs to commercialize their inventions with increas- Patent Office ingly innovative IP strategies. It offers valuable insights into the innovation ecosystem and highlights the crucial role played by patents in promoting new technologies. Past experience shows that investing in R&D and patent protection helps SMEs and industry to emerge from crises faster and stronger. Faced with an uncertain economic outlook, it is essential that we help SMEs to harness IP’s tremendous untapped potential and drive positive growth. António Campinos, President, European Patent Office In times of crisis, innovation is more important than before, as new solutions will be needed to solve the problems the world faces. Many of these innovations are created by SMEs. It is therefore important to ensure that SMEs understand how to use intellectual property to facilitate commercialization of often essential technologies and innovations, and to attract partners and investment to scale up their businesses rapidly. For this reason, I laud the publication of this special issue of les Nouvelles in cooperation with the European Patent Office focusing on the strategic use of IP by SMEs for commercialization of their innovations and technologies. Audrey Yap, President, LES International les Nouvelles—June 2020 Contents Introduction: Guest Editor’s Note: High-Growth Technology Business BY THOMAS BEREUTER, YANN MÉNIÈRE AND ILJA RUDYK — Page 93 1. People As Enablers: The Role Of The Human Factor In Intellectual Asset Management Of Technology BY THOMAS BEREUTER, ADÉLA DVOŘÁKOVÁ, JUERGEN GRANER, BOWMAN HEIDEN AND RUUD PETERS — Page 94 2. Transactions Powered By Intellectual Assets: A Decision-Maker’s Perspective BY JUERGEN GRANER — Page 108 3. IP Enforcement Strategies For SMEs BY BRUNO VANDERMEULEN — Page 114 4. Why Technology Start-Ups Should Be Paying More Attention To Patents BY WILLEM BULTHUIS — Page 120 5. From A Spin-Out To International Player: A Case Study BY CHRISTIAN HACKL AND THOMAS BEREUTER — Page 124 6. The Virtual Reality And Hard Data Of Successful University Start-Ups That May Succeed…Or Not! BY MADELEIN M. KLEYN — Page 131 7. IP And Open Innovation: Managing Technology Push And Pull BY BOWMAN HEIDEN AND RUUD PETERS — Page 138 8. Integration Of IP Into The “Classical” Stage-Gate Model BY CHRISTIAN HACKL AND SANDRINE GUILLERMIN — Page 143 9. Succeeding With Market Facilitators: How Buyers And Sellers Meet BY BASTIAN JULY AND ILJA RUDYK— Page 148 10. How To Market And License Your Technology BY THOMAS BEREUTER, BASTIAN JULY AND GENE QUINN — Page 152 11. Market Success And Challenges Facing European SMEs: Results From EPO’s Patent Commercialization Scoreboard BY THOMAS BEREUTER, YANN MÉNIÈRE AND ILJA RUDYK — Page 156 12. Partnering For Succeeding At Technology Commercialization: A Negotiation Master Class Case Study BY THOMAS BEREUTER, WILLIAM BIRD AND MARTIN SCHNEIDER — Page 165 13. The Making Of The High-Growth Technology Business Conference 2019: Reengineering Conference Delivery To Maximize Impact BY THOMAS BEREUTER, YU SARN CHIEW, JUERGEN GRANER AND ILJA RUDYK — Page 169 June 2020 LES International Officers President Audrey Yap Vice-President Jose-Miguel Lissen President-Elect John Paul Vice-President Christopher Shaowei Past-President Fiona Nicolson Secretary Pamela Cox Treasurer Mike Lasinski Vice-President Tatiana Campello ® Legal Counsel Russell Levine and Mattia Dalla Costa Vice-President Sergey Dorofeev Executive Director Dana Robert Colarulli Delegates Society Officers Andean Community Japan Chapter President Secretary Enrique Berckholtz Chikako Hashimoto Andean Community Renzo SCAVIA Enrique BERCKHOLTZ Renzo Leonello Scavia Kenichi Nagasawa Arab Countries Talal ABU-GHAZALEH Majd KHADDASH Arab Countries Makoto Ogino Nabil Salame Argentina Gustavo P. GIAY Ignacio BERETERVIDE Junko Sugimura Australia & New Zealand Talal Tawfiq Abu-Ghazaleh Hiroki Saito Duncan FERGUSON Michael COSSETTO Austria Argentina Korea Rainer HERZIG Thomas ADOCKER Gustavo Giay Hyoseon Choi Benelux Achim KREBS Jurriaan JANSEN Verónica Canese Youngtack Shim Brazil Karina Haidar MÜLLER Cedric SIKANDAR Australia & New Zealand Malaysia Britain & Ireland Simon CHALKLEY Colin HUNSLEY Michael Cossetto Pauline Khor Chile Francisca RODRIGUEZ Andrea LOBOS Duncan Ferguson Brian Law Yoo Foo China-Hong Kong Charmaine KOO Michael LIN Mark Pullen China Zhongqi ZHOU Aimin HUO Austria Mexico Abraham Alegria Chinese Taipei Vincent SHIH James HOU Karin Hofmann Czech Republic & Slovakia Andreas Pföstl Philippines Petra de BRANTES(Korejzová) Denisa ŠVECOVÁ France Benelux Bienvenido A. Marquez III Charlotta LJUNGDAHL Anne-Céline TRUCHOT-BOTHNER William (Bill) Bird Bayani Loste Germany Udo MEYER Stephanie PAUTKE Achim Krebs Poland Hungary István MOLNÁR ZsófiaKEREPESI Brazil Alicja Rogozinska India Richa PANDEY Lakshika JOSHI Thereza Gonçalves Curi Abranches Jakub Mrozowski Israel Hananel KVATINSKY Dalit SAGIV Paula Mena Barreto Italy Russia Mattia DALLA COSTA Alessia FERRARO Japan Britain & Ireland Natalia Karpova Hiroki SAITO Masaki HATANO Patrick Cantrill Korea Kwang Jun KIM Jeehye HAN Alexey Vakhnin Simon Chalkley Malaysia Anita Kaur GEREWAL Aisya Abu BAKAR Hayley French Scandinavia Mexico Chile Claudio ULLOA-ESCOBEDO Mariana GONZÁLEZ-VARGAS Andrea Lobos Sonja London Philippines Bienvenido A. MARQUEZ III Reena MITRA-VENTANILLA Francesca Rodriguez Olli Pekonen Poland Alicja ROGOZINSKA Jakub MROZOWSKI China Per Ericsson Russia Sergey DOROFEEV Alexey VAKHNIN Singapore