Program
Subject to change
Click on items below to see details or download the PDF schedule
Saturday October 14, 2023
Monday October 16, 2023
Open from 7AM
Sponsored by Leydig, Voit & Mayer Ltd
Karthika Perumal, LES USA & Canada President
Moderator: Brian O’Shaughnessy, Dinsmore
Speaker: Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director, USPTO
| As the private sector moves into outer space, the limitations of IP regimes based on geographical borders become ever more apparent. Whether outer space is the site of invention or an act of infringement, or it’s the development and use of technologies peculiar to space travel, traditional approaches to IP and licensing are lacking. The manner in which the space industry is addressing these challenges is instructive to those dealing with more earthly IP and licensing issues. Director Vidal has led the way in shining a light on the future of IP and licensing in space, and is eager to share her thoughts and hear from stakeholders about how to promote innovation through effective, practical innovations in IP protection in this exciting new realm. |
Speakers: Dave Green, GitHub
Josh Dennis, StoneTurn
| Generative AI is likely to touch all of us in the creation of IP, use of our IP in training sets, it will impact how we work and affect us through novel tools and experiences that we may not even have imagined. The Panelists will address generative AI’s status, its future, its legal implications, some of which is in current litigation, and how it will impact our IP transactions, with special attention to stage of AI concerned with ingesting data (training). |
Speakers: Karen Temple, University of Toronto
Scott Williams, Adeia
Louise Levien, Louise Levien Consulting
Matthew McNeill, Rite-Hite
| This workshop will discuss recent court decisions and how the impact the way we draft and negotiate patent license agreements. |
Speaker: Adam Falconi
| Over the last few decades, blockbuster drugs have trended from small molecules to biologics, and now cell and gene therapies are taking the spotlight and promising to usher in a new era of personalized medicine aiming at addressing previously untreatable conditions and diseases. Cell and gene therapies now make up some of the most prominent drugs in biopharmaceutical company pipelines across the industry, and annual sales growth for these therapies are projected to be between 15-30% over the next decade. Although clinically promising, cell and gene therapies are very different from small molecules and biologics. These idiosyncrasies necessitate different strategies and agreement language for the structuring and negotiation of licenses for these therapies and their associated technologies. For example, cell and gene therapies often have many constituent parts, such as vectors, promoters, and cell lines, which usually require an in-license from a third party. This requires a licensee to carefully consider royalty stacking provisions and their economics in order to make sure that there is a feasible clinical and economical pathway for the therapy. Cell and gene therapies are also some of the most expensive therapies in the world, sometimes having costs in the millions of dollars, and have unique development paths. This requires both licensee and licensor to carefully consider the economic structures of their license, particularly milestones, and potentially deviating from “typical” language. Even determining what the “licensed product” will be in a cell or gene therapy license is not always clear, given that these therapies often require other technologies in order to be useful and/or active participation in an associated patient program which may or may not require the use of a patient’s own cells or genetic material. Our panel, composed of industry leaders with extensive experience working on cell and gene therapy licensing deals from both the in-license and out-license perspective, will discuss current market trends for the licensing of cell and gene therapies, the challenges and pitfalls of licensing these cutting-edge technologies, and strategies and language that you can use to improve your cell and gene therapy license agreements. This panel is for anyone who is interested in the cell and gene therapy space, current trends in the life sciences industry, or addressing challenging license drafting issues. |
Speakers: Sam Wiley, Lot Network
Elise Neils, General Electric
David Haigh, Brand Finance
| This exciting panel discussion explores the top trends in brand valuation for 2023 and beyond. The panel, made up of leading thinkers in brand finance, valuation, and law will discuss the major themes affecting brand valuation, such as the pending expiration of important copyrights, the growing importance of brand as “soft power,” and developments in brand litigation and enforcement. Attendees will leave possessing key insight into how to make sound investments in brand-building activities that can drive long-term value for companies. |
Speaker: Drew Sills, Adeia
Mitchell Rosenfeld, Stout
Michael Friedman, Hilco
Dennis Duncan, Nokia
Alex Debski, Sisvel
This panel will explore SEP FRAND negotiations and rates from the perspectives of a diverse group of experienced stakeholders. The objective is to provide the audience transparency on a topic that is often opaque. We expect a lively discussion stemming from the differing views and experiences of the panelists, which will include representatives of operating company licensees, operating company licensors, NPE licensors, and licensing strategy advisors. The panel will cover some combination of the following topics:
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NETWORKING BREAK & EXHIBITION
Speakers: Yuanyou “Sunny” Yang, Frost Brown Todd
Dick Thurston, RLT Global Consulting LLC
Paul Stewart, PASCO Ventures LLC
Brian P. O’Shaughnessy, Dinsmore
Phil Datlow, Boehringer Ingelheim
| Brought to you by the same team that presented the standing-room-only 2022 LES Annual Meeting session titled “Shall vs. Will: Terms of Obligation”, this hands-on interactive session will focus on helping licensing professionals who are serious about improving the quality of each licensing contract they negotiate. Three particular portions of a license that nobody likes to deal with are: 1) Representations & Warranties; 2) Indemnities; and 3) Ownership of Improvements. These three problematic areas are often viewed as ‘boilerplate’ provisions that can be signed without reviewing, yet glossing over these contract portions can result in significant legal and financial liabilities for a firm that fails to understand potential risks. We’ll quickly “tee up” the background and a few horror stories from these three areas, then give “best practice” tips and suggested language that you can take home and review with your own counsel for inclusion in your current and future licensing deals. |
Speaker: Charles Macedo, Amster, Rothstein & Ebenstein LLP
Ben Lazar, Thumbtack
Matan Arazi, Aimcast
Nima Badizadegan, Espresso AI
Bob Pearson, Next Practice Group LLP
Speakers: Eggerton Campbell, NIH
Steven Ferguson, NIH
Barry Datlof, DHA MRDC
George Xixis, University of Massachusetts Chan Medical School
Speaker: Frank Amini, Shackelford, Bowen, McKinley & Norton, LLP
John Abramic, Steptoe & Johnson LLP
DEALS OF DISTINCTION & AWARDS & BUSINESS LUNCH
Moderator: Will Cottrell, RTX
Speakers: Andrei Iancu, Partner at Sullivan & Cromwell LLP
Walter Copan, Vice President for Research and Technology Transfer, Colorado School of Mines
Join us on October 16th for a captivating fireside chat with Andrei Iancu, former Director of the United States Patent and Trademark Office, and Walter Copan, former Under Secretary of Commerce for Standards and Technology. In this exclusive conversation, these thought leaders will provide new insight on the Renewing American Innovation project, revisiting our earlier conversation and shedding new light on what it will take for the United States to continue its technological and innovation leadership. They will also address the increasingly important role of both standards and intellectual property, and will explore how LES’s growing portfolio of consensus-based standards in intellectual property and intellectual capital management fit in the landscape of American innovation. Whether you were part of our previous conversation or are joining us for the first time, this follow-on fireside chat, moderated by the LES Standards board Chair Will Cottrell, promises to be an enlightening and insightful event for both licensing professional and other curious minds. Reserve your seat now and be part of the discussion. |
Speakers: Julia Barnes-Weise, GHIAA
Chan Park, Medicines Patent Pool
Lauren Sullivan, Bill & Melinda Gates Foundation
Emma Wheatley, CEPI
| The challenge of achieving global access to healthcare innovations is not a new one, but it has been thrown into the spotlight by the COVID-19 pandemic. Join us for a panel discussion examining approaches to technology licensing and partnering technologies that can to increase the global impact of healthcare innovations. The panel will discuss how licensing professionals and their companies can work with global health organizations to expand access to medical products in lower-income markets, without diminishing commercial opportunities. You will hear practical guidance on agreement terms and real-world examples of funding and implementing global partnerships, as well as metrics for measuring the success of those partnerships beyond revenue generation. |
Speakers: Jack Lu, IPMAP
Veronica Chu, Huang Partners
Steven Geiszler, Huawei
Wei Shi, Xiaomi
| Know the adversary and know yourself, In a hundred battles you will never be in peril. -The Art of War, Sun Tzu The numbers speak for themselves: China accounted for nearly 40% of patents granted worldwide. Chinese companies including Huawei, ZTE and Xiaomi hold about 40% of 5G patent families. In 2022, Huawei was ranked top 7 by the number of utility patents granted by the USPTO, and Xiaomi was among the major companies with the highest annual growth rates in US patents granted. Chinese companies have also been active in patent transaction market. While they are still buying patents, they have started to monetize their patents through selling and licensing. When negotiating with a Chinese patent buyer or seller, a foreign party will have to resolve the issues that any cross-border transaction would usually encounter. More importantly, there are many challenges specific to Chinese parties that foreign parties would have to address, especially under the current economic and trade relationship between China and the rest of the world. This panel brings together three IP veterans who have extensive experiences in this regard. Two of the panelists are the top IP executives from two of the largest patent owners in China, which are also among the most active players in patent transaction market. The third panelist is one of the earliest cross-border patent transaction experts specializing in brokering patent deals between Chinese and foreign parties, who has closed deals with nearly 10,000 patents over the past 14 years. They will discuss key issues and share their insights in negotiations involving major types of technologies and patents such as wireless communication and SEPs. |
Speakers: Heather Antoine, Stubbs Alderton
Vincent Bergeron, ROBIC
Speakers: Caroline Stivers, Kentucky Commercialization Ventures
Kayla Meisner, Kentucky Commercialization Ventures
Lisa Mueller, Casimir Jones
Derrick Brent, USPTO
| Promoting the importance of Diversity, Equity, and Inclusion (DEI) has become a popular discussion topic in the workplace today. Law is one of America’s least diverse professions, with only 37% women and only 1.7% of all registered patent attorneys and agents being racially diverse women. While both the American population and business interests are becoming more diverse, the field of IP has not followed suit. This panel will discuss why diversifying the field of IP and licensing is important, why representation matters in IP and licensing positions, and give practical advise on implementing programs aimed at engaging more women and underrepresented groups in the field. Additional Proposed Panelists: – Katherine Brown, Intellectual Property Officer, University of Louisville (or Matthew Upton, Senior Associate Director of IP Development, University of Kentucky) – Derrick Brent, Deputy Director, USPTO – Elaine Spector, Patent Attorney, Harrity & Harrity Sources: – 2022 National Lawyers Population Survey, American Bar Association – Diversity in Patent Law: A Data Analysis of Diversity in the Patent Practice by Technology Background and Region, Landslide, Vol. 13, No. 1, American Bar Association |
COFFEE BREAK/NETWORKING & EXHIBITION
Speakers: Nicki Kennedy, Kilpatrick Townsend
Ada Nielsen, Peregrine Maven
John Paul, Finnegan Henderson
| The format of this presentation is 10-15 minutes of introduction to the topic and the remainder will be spent in round tables. Each table will discuss a term on the term sheet and go through concerns/workarounds. This session is a more intimate, follow-on session to the popular session at the San Francisco Annual Meeting that discussed term sheets. The sample term sheet is below: This term sheet is to facilitate discussion only and is not intended to be legally binding on either party. A party may withdraw from negotiation at any time upon notice to other party. Any agreement between the parties is subject to negotiation and execution of an appropriate, definitive contract document that is approved by the senior management and/or board of directors of each party and signed by officers of both parties. Name of potential licensor (or licensee) and contact info: _______________________________________ Name of team members and contact info: Technology to be used in (name of product and/or product line): _____________________________________ Important dates and deadlines (e.g. A.manufacturing start: ____________________________________________________ B.press release: ____________________________________________________ C.Has development: ____________________________________________________ D.Manufacturing: ____________________________________________________ E.Distribution: ____________________________________________________ already commenced in advance of the agreement?): 1. Subject matter a)use specification: ____________________________________________________ b)technical description: ____________________________________________________ c)patent numbers: ____________________________________________________ d)name of a work: ____________________________________________________ e)trademark, etc.:____________________________________________________ f)Are any standards applicable?: YES o NO o g)Ownership ____________________________________________________ a)check ownership: ____________________________________________________ 3. Related agreements a)development:YES o NO o b)consulting: YES o NO o c)training: YES o NO o d)purchase: YES o NO o e)investment: YES o NO o f)service, etc.:YES o NO o 4. Development a)Is the technology completed? YES o NO o b)Is it fully functional? YES o NO o c)If not, i.who will complete development?_______________________ |
Speakers: David Rikkers,
Expedited Climb Capital LLC
Will Cottrell, Raytheon
John Kolakowski, Nokia
| The panel will focus on topics of practical significance to the changing IP dealmaking landscape and preparing IP and licensing professionals to handle new developments in legal, technological, and business practices they’ll face in the next few years through the lens of LES Standards. And will highlight how LES is leading the way in Dealmaking Trends in the Evolving Innovation Economy through the ANSI-accredited LES Standards Development Organization. Three LES Standards Board members are presently planning the panel content and full roster of speakers. The session will focus on practical ways in which the Standards matter, as well as the current process and opportunities available to everyone in the IP dealmaking space. The focus areas for every Standard were selected by leading experts with decades of experience. And each Standard is a result of a consensus drafting process by representative committees of experts on the topic of the Standard. Learn more about how these directly on point Standards can improve your work, benefit the profession and make the IP dealmaking landscape more efficient. And for those interested in learning more about and helping shape their profession, opportunities for engagement. |
Speakers: Katharine Ku, Wilson Sonsini
Rick Brandon, University of Michigan
Galya Blachman, 5AM Ventures
Miranda Biven, Wilson Sonsini
| Venture capitalists and universities got together for over 1-1/2 years and hashed out a template License Agreement that, if adopted by more universities and investors, could greatly speed up negotiations. The template agreement allows for negotiations around issues of particular importance to the parties but uses standard definitions and traditional compromises to make the process more efficient and effective. This is just the beginning of a deal-making trend that you need to know about! |
Speakers: Charles Valauskas, Valauskas Corder
Mariella Massaro, Berggren Oy
Han Sun, U Chicago
Sonja London, TactoTek
Since the beginning of 2022 there has been a great deal of discussion about the basics of the new European patent system which, after years of delay, is scheduled to become a reality on 1 June 2023. One extremely important aspect of the new system – the Unitary Patent and Unified Patent Court – that has received insufficient attention is the effect that this will have on the dynamics between licensors and licensees and between patent co-owners. Indeed, under the new system the interests of licensors and licensees will not be as aligned as they are under the current system and, thus, it’s time to reevaluate and renegotiate certain strategies related to patent prosecution and enforcement. Likewise, co-owners will face additional issues in the management of co-owned patent rights which will be governed by specific provisions of the UPC Agreement or (European) national law. Licensors, licensees, and co-owners should take some comfort in the knowledge that such issues can be effectively and efficiently addressed in properly drafted agreements. The proposed panel that will tackle this important and neglected topic includes people with a diverse range of backgrounds and experiences: a US attorney with a great deal of licensing experience as our moderator and speakers from a US university, a Certified Licensing Professional from Europe, and a licensing executive from an innovative European company. The speakers will take a practical approach to these issues from their respective points of view. |
Speaker: Kevin Schubert, Mckool Smith
Keith Walker, Nagra
Kim Chotkowski, Access Advance
| This panel will discuss how patent owners can maximize the value of licenses to an entire supply chain through strategic licensing negotiations with upstream component suppliers. After the Federal Circuit’s recent decision in California Institute of Technology v. Broadcom, component suppliers may face higher reasonable royalty demands in licensing negotiations. (See recent IAM article written by the moderator, “Patent damages precedent makes waves in component suppliers’ negotiations,” available at https://www.iam-media.com/article/patent-damages-precedent-makes-waves-in-component-suppliers-negotiations). The Broadcom decision and its application in recent district courts indicate that in patent litigation, reasonable royalty damages should account for the entire value of a patented invention’s use in the marketplace, not merely its use by an individual infringer. As a result, component suppliers may face royalty rates that account for the full value an infringing component contributes throughout a supply chain. How should licensing professionals address Broadcom in negotiations between patent owners and component suppliers? This panel will discuss Broadcom strategies for licensing negotiations by outlining the relevant underlying legal principles and then examining a hypothetical case study to demonstrate how to model the financial terms of a licensing offer to frame patent owners’ and potential licensees’ corresponding risk exposure to drive settlement and avoid litigation. The panel of experienced patent litigators and licensing professionals will provide attendees a diverse range of perspectives on this topic. [Note: In addition to Carl Bilicska, this panel will include additional panelists from the patent licensing industry who have not yet confirmed availability to participate but have expressed interest in participating as panelists.] |
Moderator: Brian O’Shaughnessy, Dinsmore
Speaker: Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director, USPTO
| As the private sector moves into outer space, the limitations of IP regimes based on geographical borders become ever more apparent. Whether outer space is the site of invention or an act of infringement, or it’s the development and use of technologies peculiar to space travel, traditional approaches to IP and licensing are lacking. The manner in which the space industry is addressing these challenges is instructive to those dealing with more earthly IP and licensing issues. Director Vidal has led the way in shining a light on the future of IP and licensing in space, and is eager to share her thoughts and hear from stakeholders about how to promote innovation through effective, practical innovations in IP protection in this exciting new realm. |
Moderator: Brian O’Shaughnessy, Dinsmore
Steve Wood, Velawood
Bridget Smith, Relativity Space
Christina Austin, BAE Systems
| Following a fireside chat with Director Vidal, a panel of IP experts with experience in government, academia, and industry will discuss the practical implications and their strategic approaches under today’s global IP regime, and share their thoughts as to how the current regime might better serve industry and innovation in space. |
Moderator: Adrian Cyhan, Stubbs Alderton & Markiles, LLP
| Apple and Broadcom have filed an appeal to the Supreme Court of the Federal Circuit’s decision in the Apple v. CalTech case, which vacated a $1.1B verdict for CalTech, while confirming the validity of the relevant patents. Join our group of panelists in discussing the District Court and Federal Circuit opinions and the potential impact on patent value and strategy and other recent IP cases involving universities. |
Moderator: Kannan Krishnaswami, Pacific Northwest National Labs
Moderator: Joseph Yang, PatentEsque Law group LLP
| I have extensively studied court decisions about disputes involving licensing “rules of thumb” or “boilerplate.” It turns out that there can be substantial risk in using these. There are many cases where courts ignored or found exceptions to what was intended. Or the drafter simply used them incorrectly. Either way, the result was an unpleasant surprise (often involving the loss of rights). Similar to Russell Levine’s annual “Top 10” talk, this would be a single speaker presentation (based on deep research, which I’ve already done) rather than a panel format (which is more suitable for comparing a broad range of personal experiences). Unlike Russell’s talk (which covers a broad range of topics that came up in the last 12 months), this would focus on a specific theme (the risks of blindly copying / reusing supposedly “standard” or “tried and true” language without thinking about the consequences) and not be limited to the last 12 months. |
Speaker: Steven Geiszler, Huawei
| It is preferable that the panelists which have diverse occupations with different backgrounds and experiences can join in the panel discussions to share insights, success and lessons with the audience and help the brand owners to improve their strategy in brand protection in China. By covering the topics such as Changes in IP Practice of Life Science in China, Licensing Developments in China, IP Valuation in China – Increasing Damages Awarded by Chinese Courts and Best Practice and Strategy of Trademark Enforcement in China, we hope that the panel discusssions may keep the audience updated on the current status and trends of IP and licensing practice in China and help their IP deals in China. |
Moderator: Michael Graif, Mintz
Moderator: Simon Bradbury, Appleyard Lees
| The European Unitary Patent system (UP) and Unified Patent Court (UPC) came online earlier this year after many years in the making and a number of false starts. Whilst some welcomed the news, others have been far more wary. You have probably been bombarded with wordy leaflets and articles from your advisors about the new system. From opt-outs to opt-ins, local divisions to central divisions and balancing the concerns over central revocation with the benefit of broader geographical coverage it can be confusing and difficult to know what to do for the best. In this panel session we will look at the main issues facing IP and licensing professionals and will discuss the various strategies which can be used to ensure that your patent portfolio remains strong and attractive for licensing and spin-out opportunities. We will also look at specific issues around licensing, ownership and discuss whether any current or previous agreements need to be revisited in light of the new system. Lastly, we will provide you with helpful tips that you can take away and start to implement in your licensing strategy so that you can continue to maximise the value from your patent portfolio and use the Unitary Patent system to your advantage. The session will be in a panel style discussion with participants from different sectors giving different perspectives (University In-House Counsel, Company In-House Counsel, Outside European Counsel (me) and Outside US Counsel). Once approved, I will provide details of panel members. |
Moderator: Merri Moken, Brown Rudnick
Moderator: Kevin Tamm, Bracewell LLP
Moderator: Karen Temple, University of Toronto
Moderators: Bob Held, Held IP
Arpi Siyahian, Nutech Ventures
Tuesday October 17, 2023
sponsored by
Ann Cannoni, Incoming LES USA/Canada President
Speakers: Ken Sonnenfeld, Ballard Spahr
Michael B. Johannesen, Jaguar Gene Therapy, LLC
Alyssa Klapper, DRI Healthcare
Katrine Thor Andersen, Bayer Healthcare
Ihor Boszko, Hospital for Sick Children
Katie Ellias, JDRF T1D Fund
| The panel will bring together speakers from a philanthropic venture fund/foundation, technology transfer office of an academic institution, a research and drug development company, and a private equity investment fund. The panel will explore the economic, scientific, social and even personal interests the parties have in funding and carrying out translational research. From funding of early stage research at an academic institution to drug development and commercialization at a biotechnology company, the panel will address the roles of funding from a disease-focused philanthropic venture fund and private equity investment. How transactions between the funders and research organizations can support drug development and also benefit the various stakeholders. The panel will consider successful strategies for structuring transactions between the parties that will lead to therapeutic development and optimal economic benefits for all. |
Speakers: Jayde Wood, Gowling WLG
Gillian Fenton, GSK
Jessica O’Connell, Covington
Laura Gomez, Gowling WLG
| The life sciences industry has been among the most active sectors for licensing activities and transactions in recent years. Cutting-edge technological developments are transforming food, drugs, and cosmetics. Life sciences companies are subject to a wide range of regulatory requirements. This panel will discuss how regulatory landscape may impact deal making. In particular, the session will look at some unique regulatory issues in the U.S. and Canada, including the new Modernization of Cosmetics Regulation Act of 2022 (MoCRA) that was signed into law on December 29th, 2022. |
Speakers: Jason Gish, TLG Law LLC
Ariel Soiffer, Wilmer Hale
Nsikak Akpakpan, Accenture Applied Intelligence
Maryam Saleh, Illinois Institute of Technology
| Artificial intelligence (AI) is becoming increasingly pervasive in all aspects of life, and it’s important to understand both the opportunities and risks associated with this technology. The panel will discuss a range of topics related to AI, including different types of AI systems and how they work, challenges in developing AI systems, and different applications of AI systems. Panelists will also present on what it means to use AI responsibly, risks associated with using AI (including bias) and best practices in managing these risks. Further, implications for licensing of AI technologies will be considered, including what can be done to manage risks associated with using and licensing output of AI systems, and how to negotiate and manage transactions in which AI will be provided as a service. (This program description was prepared with the assistance of ChatGPT.) |
Speakers: William Jones, Robins Kaplan, NS
Carl Bilicska, IPValue
Anne Burkhardt, University of Illinois Chicago
| This panel will discuss how patent owners can maximize the value of licenses to an entire supply chain through strategic licensing negotiations with upstream component suppliers. After the Federal Circuit’s recent decision in California Institute of Technology v. Broadcom, component suppliers may face higher reasonable royalty demands in licensing negotiations. (See recent IAM article written by the moderator, “Patent damages precedent makes waves in component suppliers’ negotiations,” available at https://www.iam-media.com/article/patent-damages-precedent-makes-waves-in-component-suppliers-negotiations). The Broadcom decision and its application in recent district courts indicate that in patent litigation, reasonable royalty damages should account for the entire value of a patented invention’s use in the marketplace, not merely its use by an individual infringer. As a result, component suppliers may face royalty rates that account for the full value an infringing component contributes throughout a supply chain. How should licensing professionals address Broadcom in negotiations between patent owners and component suppliers? This panel will discuss Broadcom strategies for licensing negotiations by outlining the relevant underlying legal principles and then examining a hypothetical case study to demonstrate how to model the financial terms of a licensing offer to frame patent owners’ and potential licensees’ corresponding risk exposure to drive settlement and avoid litigation. The panel of experienced patent litigators and licensing professionals will provide attendees a diverse range of perspectives on this topic. [Note: In addition to Carl Bilicska, this panel will include additional panelists from the patent licensing industry who have not yet confirmed availability to participate but have expressed interest in participating as panelists.] |
Moderator: Pamela Cox, Partner and Chair, IP Transactions, Marshall, Gerstein & Borun LLP
Speakers: Heather Walsh, Executive Director, Head of New Business Opportunities, Astellas Pharma Inc.
Nancy Sullivan, CEO and Managing Director, Illinois Ventures, LLC
Saumil S. Mehta, General Counsel, Clearcover, Inc.
Michelle Booden Ph.D., Director, Pacific BD&L Merck Research Laboratories
LUNCH & EXHIBITION
Speakers: Roberto Dini, Metroconsult
Andrei Iancu, Sullivan & Cromwell LLP
Carter Eltzroth, DVB Project
He Jing, GenLaw
| The IP ecosystem is more and more often affected by geo-political influences. Not only Anti-Suit Injunctions (ASIs) that emerged as a tool used by national courts to defend the interests of their national industries, but also changes within governments or other political events have a major impact on the IP eco-system. In the US, when a new President is elected, the board of USPTO, DOJ and NIST may also change. Due to the Russian-Ukranian conflict, many big corporations like Mc Donald’s and Coca-Cola have withdrawn from the Russian market and their Russian trademarks are now owned by Russians. The panel will discuss, even if laws do not officially change, how these events have a big impact on the regulatory authorities and on how laws are interpreted. |
Speakers: Julie Watson, Marshall Gerstein & Borun, LLP
Sian Godwin, Sandoz Inc.
Sean McCooe, McCooe & Associates
Marie Kerbeshian, University of Iowa Research Foundation
Andrew Tingey, Wellspring EMEA Ltd.
| Dealmaking has changed significantly over the decades, and along with it so have the demands on licensing professionals. The panel will discuss how the practical skills needed for success in licensing have changed over time, and what further changes may be on the horizon. The discussion will bring in views from business, university, and legal sectors as well as insights from talent recruiter in licensing industry. Topics addressed include which skills matter most, now and then, the biggest impediments to professional success, how skill requirements vary by sector, the role for industry certifications, and effective strategies for licensing professionals to flex their skills with the industry. |
Speakers: Karthika Perumal, Womble Bond Dickinson LLP
| We are working on putting a panel together from the pharma and the chemical industries to discuss how patent prosecutors and litigators view these standards and how to advise innovators in moving forward. |
Speakers: Margaux Hall, Ropes & Gray
Colin James, Takeda
David McIntosh, Ropes & Gray
Lisa Dhar, Northwestern University
Daniel A. Lev, Intellia Therapeutics, Inc.
The Inflation Reduction Act of 2022 (the IRA or the Act) is poised to reshape Medicare pricing, the reimbursement of drugs, commercial practices, and the drug development landscape in the biopharmaceutical industry. Life sciences deal makers need to understand the Act’s intricacies and implications in order to successfully navigate this changing environment. This workshop will provide a brief overview of the IRA’s drug price negotiation program and follow that overview with a discussion that analyzes the impacts of the Act on licensing transactions from the perspective of global pharmaceutical companies (typically licensees), biotech companies and academic institutions (typically licensors), and venture capitalists. The aim of the workshop will be to provide attorneys and other deal makers with knowledge of both IRA drug pricing issues and the contractual levers available to help them find solutions and close licensing deals.
COFFEE BREAK/NETWORKING & EXHIBITION
Speakers: Sean Sheridan, Charles River Associates
Heather Walsh, Astellas
Jonathan Kern, AbbVie
Cole Johnson, Dimension Inx
George Summerfield, K&L Gates
| Merger and acquisition activity in the biopharmaceutical industry declined dramatically on both a volume and value basis in 2022. However, biopharmaceutical licensing and collaboration deals have fared better with overall values increasing slightly over the prior year. Given current economic and regulatory uncertainty, biopharma companies appear to be placing greater emphasis on licensing partnerships as opposed to acquisitions. Notably, the portion of life science partnership deals relating to preclinical assets has been increasing steadily over the past several years. These preclinical assets are often platform technologies including everything from cell and gene therapies to digital assets and devices. The complexity of these promising new technologies can lead to larger and more complex intellectual property portfolios consisting of not just multiple patents but also trade secrets and know-how. This panel will discuss approaches for partnering around increasingly complex assets at various stages of development. The panel will consist of 4 panelists and a moderator: •Sean Sheridan, VP at Charles River Associates, moderator •In-house counsel at pharma company (Adam Conway, Division Counsel, Abbvie) •BD professional in digital/device space (Heather Walsh, Executive Director, Rx+ Business Accelerator at Astellas Pharma) •Outside counsel with relevant life science IP transaction experience (potentially from Cooley) •BD professional at life sciences start up (Cole Johnson, Director of Strategic Growth at Dimension Inx) or, alternatively, an academic technology transfer professional |
Speakers: Stephen Barone, Leydig
Michelle Chitambar, University of Illinois
Arjan Quist, Northwestern University
Gerald Wilson, Autonomic Materials
| University-industry collaboration is a powerful tool for leveraging resources and expertise to support innovative solutions to global issues and commerce. Maximizing the value of such collaborations, however, requires diligence and attention to manage and align the different perspectives and legal interest of the parties. This session will provide a practical overview of the substantive legal issues, strategies, and common pitfalls around launching and managing successful university-industry collaborations via mechanisms that include startups, sponsored research, licensing, and industry consortia. A panel of legal experts with complementary backgrounds will lead this discussion, casting a wide net around topics ranging from matching industry-university participants to scoping statements of work, managing information exchange, collaborating on intellectual property and licensing matters, and addressing financial terms and compliance. Audience participation is encouraged, so come with your questions and war stories as this will be an interactive session! Takeaways that will be highlighted include – 1.Harmonizing common sticking point deal terms with industry-university participants, policies and interests. 2.Aligning license and business terms to maximize commercial opportunities. 3.Practical approaches to address background and foreground IP rights. 4.Best practices to meet industry-university expectations and avoid breach. 5.Approaches for resolving disputes and potential for fallout. |
Speakers: Mitchell Rosen, Stoneturn
Gina Johnson, The Ridge
Steven Jedlinksi, Holland & Knight
The session will provide an overview of design patent damages, including recent updates in case law. Design patent damages remedies will be compared and contrasted to available remedies in utility patent damages litigation. It is anticipated that at least one IP attorney will participate on the panel. Additionally, the speaker is seeking an additional panelist from industry whose work has involved design patents. |
Speakers: Shelly Irvine, Ocean Tomo
Marianne Frydenlund, Avanci
Kent Baker, u-blox AG
Tim Pohlmann, IPlytics
Teo Taponen, InterDigital
| By 2025 over 75 billion devices will be connected. These IoT devices span every major industry including manufacturing, logistics, utilities, medical devices and healthcare, not to mention consumer products we use every day. Given the growth and sheer breadth of industries and sectors that fall under the IoT umbrella, this is a market that we as a licensing community need to focus on now. Our panel will bring together implementers and patent holders in the IoT space, as well as experts who are engaged in and understand the industry economics and trends, in what will be an engaging and informative talk. As a licensing community, taking best practices from licensing in the mobile device/telecom space while recognizing and learning from past mistakes and adding a little creativity/flexibility will help us get in front of this new and exciting opportunity. We will discuss potential licensing models and their role in licensing in the IoT space and possible variations of traditional licensing models. For example, would a “one stop shop” model like patent pools or patent platforms work for certain IoT verticals that use multiple connectivity technologies (e.g., 5G, Wi-Fi, mesh protocols, LPWAN, RFID) and/or “menu” licensing (e.g., certain segments of cellular like NB-IoT)? Is there a role for independent forums to determine licensing rates and structure, maybe on an industry by industry basis? Are licensing negotiation groups a solution to allow licensees to coordinate or is this anticompetitive? Transparency is always an issue in licensing, but in the IoT space it’s even more important. How can we as licensing professionals introduce more transparency in the process-on an industry or sector level can we engage potential implementers and patent holders at an earlier point for candid discussion around industry economics. Involve businesspeople/technical/engineers in the mix? Use of simple licensing terms and/or rate cards? Look to companies that track detailed data and market intelligence on patents that may relate to the IoT space for help? We will discuss what implementers need/want from patent holders and vice-versa. Sorting this out sooner rather than later will lower transaction costs and a reduce litigation. Our panel members who operate at different levels of the production chain for IoT devices may discuss both where in the chain licensing could occur (or does it matter from an economic perspective) as well as evolving issues of indemnification. |
COFFEE BREAK/NETWORKING & EXHIBITION
Speaker: Russell Levine, Kirkland & Ellis LLP
| This workshop will discuss recent court decisions and how the impact the way we draft and negotiate patent license agreements. |
Speaker: Marc Malandro, Chan Zuckerberg Initiative
Arden Yang, Allen Institute
Mike Perham, HHMI Janelia Research Campus
| Marc Maladro, Vice President at CZI, Mike Perham, Director of Innovations at HHMI’s Janelia Research campus, and an executive from the Allen Institute in Seattle will discuss the increasingly important role that non-governmental funding plays in bioscience and computational research, how these institutions balance openness to collaboration and dissemination of basic science technologies, and other priorities to their institutes. Privately-funded institutes like these have more flexibility in their technology management and licensing programs, but also missions that may be unique to a founder’s vision. They also increasingly fund top researchers producing fundamental discoveries and technologies that spread through the non-profit and industrial scientific enterprise. We will also highlight the introduction of CZI’s Chicago Biohub that links the university of Chicago, Northwestern University, and the University of Illinois in a collaborative organization to develop molecular tools. |
Speakers: Brian Buss, CBIZ Forensic Consulting Group
Brian Feucht, Unique Wire
Keith Blankenship, Da Vinci’s Notebook LLC
Rishie Narula, Google
| Brand Assets can be the most valuable intangible asset at many businesses. Today, successful businesses rely on brand recognition, reputation, and customer loyalty to drive sales growth and profitability. While terms such as Brand Equity, Brand Recognition, Loyalty and Reputation are often used, the data needed to develop these measures can be difficult to obtain, manage and analyze. The panel will introduce and describe data collection and analysis tools that provide brand owners with greater insight into the strength of their brands. With these data tools, brand owners and managers can understand their brand measurements and leverage brand assets to increase sales, profits and valuation. |
sponsored by Qualcomm
Wednesday October 18, 2023
8:00 -5:00PM
View course details here
