Subject to change
Click on items below to see details or download the PDF schedule
Select a tag below to view relevant sessions.
Saturday October 14, 2023
Professional Development Course – Mechanics of a License Program 9:00 - 4:00 PM
This event takes place offsite at Crowell and Moring.
Kindly sponsored by
Sunday October 15, 2023
Professional Development Course – Due Diligence 8:00 – 5:00 PM
Due Diligence is the research conducted prior to engaging in a business transaction. This course will provide guidance on how to develop and implement a due diligence strategy for a deal involving intellectual property (IP). It will discuss the What, When, Where, Who and How to perform due diligence depending on the deal and its importance to your organization.
Modules will cover aspects of technical due diligence (e.g., technical readiness), legal due diligence (e.g., ownership, remaining legal life of IP assets, freedom to operate), and Commercial and financial due diligence (e.g., market size, market growth, pricing).
Professional Development Course – Managing IP Value in Startups and Early Stage Ventures 11:00 – 6:00 PM
IP Assets are the foundational building blocks of startups in today’s global economy, and understanding how to grow the value of these assets is critical to startup success. This class was specifically designed to provide tools, models and practical advice on how to manage and grow the value of IP assets as strategic business assets in startups and other early stage ventures. As startups grow into Unicorns (pre-exit valuation of over $1 billion) faster than ever, it is critical to make sure they have the right IP foundation to support their value, enter new markets and achieve a successful exit. Through a combination of class discussion, case studies, interactive group assignments and analysis of current events, we will explore topics including:
- The startup lifecycle and valuation: from funding to exit
- The intersection of IP valuation and startup valuation
- Creating an IP portfolio that is aligned with startup valuation growth
- Using big data analytics and pricing databases in making IP decisions
- Leveraging IP assets for funding, growth and exit
- The investor’s perspective on IP value: Debt v. Equity Funding
- IP valuation considerations in exit: Mergers & Acquisitions
Target Audience: entrepreneurs, VC and corporate venture investors, legal advisors, inventors, transactions lawyers, licensing professionals, university tech transfer, and others involved in creating and commercializing IP in startups or in other corporate/academia early stage situations.
IP Owners Reception 5:30 - 6:15 PM
Drinks Reception open to all IP Owners.
New Members/Attendees Reception 6:00 - 6:30 PM
Drinks Reception open to all new LES members and new Annual Meeting attendees.
LES ANNUAL MEETING WELCOME RECEPTION 6:30 - 8:30 PM
Drinks and canapes will be served. Open to all Annual Meeting attendees!
YMC Cocktail Reception 9:00 PM
This event is being held at Tao (five block walk from the meeting hotel) and will immediately follow the LES Annual Meeting Welcome Reception.
Monday October 16, 2023
Committee Meetings 7:00 - 8:00 AM
FIRESIDE CHAT – IP in Space and Associated Licensing Issues. 8:30- 9:15 AM
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.
FIRESIDE CHAT – Foundations of Change: Evolution of American Innovation and the Role of Intellectual Property Standards. 9:15 - 10:00 AM
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.
COFFEE BREAK/NETWORKING & EXHIBITION 10:00 – 10:15 AM
Workshop – IP in Space. 10:15- 11:15 AM
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.
Workshop – Strategic and IP concerns with ChatGPT and OpenAI. 10:15 - 11:15 PM
The “Strategic and IP concerns with ChatGPT and OpenAI” panel at the conference is poised to comprehensively examine the Generative AI landscape, starting with OpenAI’s well-publicized products like ChatGPT. Esteemed speakers will provide an insightful exploration of its operational intricacies while identifying key areas of concern that prominently feature Intellectual Property (IP) issues arising from its novel capabilities. Amidst this backdrop, the panel will underscore the abundant opportunities that Generative AI avails for the development of innovative products and solutions. A particularly intriguing segment will spotlight pioneering startups that have boldly stepped up to confront these challenges, with a distinct focus on addressing IP-related concerns. The panel seeks to illuminate the dynamic interplay between cutting-edge technology and innovative business strategies by showcasing these entrepreneurial endeavors. It will vividly illustrate how Generative AI can be both a catalyst for novel creations and a means to navigate complex IP landscapes, thereby reshaping the technological and business frontier.
Workshop – Top Mistakes to Avoid When Licensing. 10:15 - 11:15 AM
Are you new to licensing? Knowing what not to do key to getting a long-term deal that protects IP and generates revenue. Get a step or two ahead in your deal making by learning from experienced LES members’ and avoid your own costly mistakes. You’ll feel confident negotiating fair and reasonable terms, reducing and shifting risks, and creating clear and enforceable license agreements where both parties win.
Kindly sponsored by
Workshop – Trends in Brand Valuation – 2023 and Beyond. 10:15 - 11:15 AM
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.
Workshop – The Effects of Heightened Enablement, Written Description and Patent Eligibility Standards on the Licensing and Commercialization of Life Science Inventions. 10:15 - 11:15 PM
The panelists will discuss the following guidelines during the panel discussion:
Strategies for maximizing life science commercialization in view of such heightened standards
IP protection strategies
- More precise claim drafting?
- More focus on trade secrets and/or data exclusivity?
- Focus more on know how/trade secrets?
- How to best protect a license agreement if any of the licensed patents are invalidated
- How to protect commercialized products from infringers who may feel inclined to challenge key patents in view of such heightened standards
Kindly sponsored by
Workshop – The Great Debate: FRAND Ask Rates and Counteroffers. 11:15 - 12:15 PM
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:
• FRAND ask rates vs. agreed upon rates
– Size of the delta and how to efficiently and effectively bridge it in negotiations• Privately agreed rates vs. court imposed rates
– How and why they differ
– The significance/weight of court-imposed rates in private negotiations• Variance in FRAND ask rates
– Explore the variance in ask rates among licensors of a given standard, and whether such variance is predicted by characteristics of the licensor – e.g. entity size, portfolio size, portfolio origin (internal vs. acquired), entity type (NPE vs. operator), licensing program funding source (external vs. internal), etc.
•FRAND rate setting methodologies and frameworks
– Benefits and drawbacks of declared patent counts as a value apportionment methodology
– Practical alternatives or adjustments to patent count-based calculations
•FRAND negotiations process
– Licensors – how to prepare and structure the initial approach and ask
– Licensees – how to prepare and structure counteroffers
– Balancing precedent benchmarks – licensor’s precedents on the same patents vs. licensee’s precedents within the same standard
Workshop – The Human Impact of the AI Revolution. 11:15 - 12:15 AM
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).
Workshop – Art of Negotiating & Monetizing Rare Pediatric Disease Priority Voucher Terms into a License Agreement. 11:15 - 12:15 PM
The speakers will briefly describe their experiences with negotiating PRV terms in license agreements, and how PRvs factor into their research programs.
The speakers will then delve into the nuts and bolts of some successful strategies each has used to negotiate reasonable and mutually acceptable revenue sharing terms for Priority Review Vouchers (PRVs) in agreements, particularly exclusive license agreements. We will also discuss ways of determining what each party contributed to the clinical development of the drug of interest that may be eligible for a PRV in the future and carefully thinking about “unique” market considerations such as extremely small patient populations, or disproportionally affects poor and marginalized populations.
Workshop – Design Patent Damages. 11:15 - 12:15 PM
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.
The session is directed towards newer practitioners or experienced practitioners with limited exposure to design patent litigation. The speakers will explain the differences between design and utility patents and available damages remedies, and answer the following questions:i.What is the distinction between a design patent and an article of manufacture?
ii.Understanding the Supreme Court’s two-part test to determining design patent damages.
iii.Availability of damages for utility and design patents on the same article of manufacture.
iv.The availability of profit disgorgement as a remedy for design patent infringement.
DEALS OF DISTINCTION AWARDS & BUSINESS LUNCH 12:15 – 1:45 PM
Workshop – Licensing and Funding Healthcare Innovations for Global Impact 2:30 - 3:30 PM
Join us for a panel discussion examining approaches to technology partnering with global health organizations to widen market channels and increase access to medical products in underserved markets. The panel will discuss how funding and licensing collaborations between non-profit, multilateral, and industry partners can achieve meaningful and measurable improvements in equitable, global access, without diminishing commercial opportunities. You will hear practical guidance on access-oriented agreement terms, as well as real-world examples of implementing global access partnerships, and metrics for measuring their success beyond revenue generation.
Workshop – 2022 LES Physical Sciences (formerly CEEM) Royalty Rates & Deal Terms Survey 2:30 – 3:30 PM
Come and hear the results of the 2022 LES Physical Sciences (formerly CEEM) Royalty Rates & Deal Terms Survey at a workshop hosted by the coordinators of the survey.
This survey has not been run since 2010 and the data generated from the 2022 survey will be added to historical data from past surveys to provide LES members with not only an update on the current trends in the market, but also a retrospective look at how licensing practices have changed over the years. Physical Sciences includes: Environmental Sciences, Chemicals, Physics, Earth Sciences, Manufacturing, Energy, Materials, and other physical sciences or engineering areas that do not fit in the High Tech or Life Sciences sectors. The survey reports help explain how licensing deals are structured and why, and they also show the rationale behind the licensing of parties and what specific licensing features are chosen and used. This information provides a valuable benchmarking tool that IP and licensing professionals depend on to deliver value to their organizations. Use of the survey information also extends to lawyers, corporate finance and investment professionals, and beyond.
Workshop – Negotiating with the Patent Sellers or Buyers from China: Knowing Yourselves and Your Counterparties is the Key to Successful Deals. 2:30 - 3:330 PM
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.
Workshop – Pipelining IP Professionals – The Importance of Bringing Diverse Individuals into Innovation Ecosystem Careers. 2:30 - 3:30 PM
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.
– 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 2:45 – 3:15 PM
Workshop – Negotiating from a Sample Term Sheet. 3:45 - 4:45 PM
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: ____________________________________________________
already commenced in advance of the agreement?):
1. Subject matter
a)use specification: ____________________________________________________
b)technical description: ____________________________________________________
c)patent numbers: ____________________________________________________
d)name of a work: ____________________________________________________
f)Are any standards applicable?: YES o NO o
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
a)Is the technology completed? YES o NO o
b)Is it fully functional? YES o NO o
i.who will complete development?_______________________
Workshop – Trends in Patent Damages and Valuation. 3:45 - 4:45 PM
This panel will discuss trends in patent damages and valuations that patent owners and licensees should be aware of to maximize value for their organizations.
The speakers have been involved in some of the most notable patent programs and litigation in the last few years, both in the U.S. and in various countries overseas, and will bring unique perspectives and offer valuable practice tips. The panel will discuss trends, and offer practice tips, in i) global IP enforcement including how to build an effective global IP portfolio and how recent changes in damages law should be considered in building a global IP portfolio, ii) what currently is keeping licensing deals from getting done and how to cut through the red tape, and iii) an identification of the most impactful recent court decisions and how they are affecting patent damages, valuation, and deal flow.
Workshop – Can it be Done? Making Life Sciences Start-up Transactions Easier and Faster. 3:45 - 4:45 PM
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!
Workshop – Modifying License and Other Collaborative Agreements in Light of the New European Patent System. 3:45 - 4:45 PM
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.
Workshop – Innovation Lift from LES Standards. 3:45 - 4:45 PM
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.
Roundtable 1 – IP Finance: Credit, Royalties and Lit Funding, Oh My! 4:45 -5:30 PM
Join a discussion of IP finance and hear from people that have represented rights owners, funds and insurers in various types of transactions. IP finance takes various forms, including litigation funding, royalty acquisitions, IP-backed credit and insurance. We will provide rights owners new to the space with an understanding of the different types and their benefits, what financing partners look for, and how to approach the market. For those already familiar with IP financing, we will discuss current trends and the state of the market. IP finance is an active, growing source of capital; come learn how you may be able to leverage your IP!
Roundtable 2 – Apple v. CalTech and Other Recent Significant IP Cases Involving Universities. 4:45 - 5:30 PM
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.
Roundtable 3 – Funding and Accelerating Commercialization of Federally Funded Technologies through Federal Tech Transfer Programs and “Patient” Venture Capital. 4:45 - 5:30 PM
Roundtable 4 – It was Supposed to be Armor, but became Shrapnel! Deadly Mistakes from Misusing Boilerplate and Rules of Thumb. 4:45 - 5:30 PM
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.
Roundtable 5 – China IP & Licensing. 4:45 - 5:30 PM
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.
Roundtable 7 – A Unified Europe: Strategies Utilising The New UP and UPC. 4:45 - 5:30 PM
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).
Roundtable 9 – When Uncle Sam Is Your Co-inventor! 4.45 - 5.30 PM
Discussion on Licensing Jointly Owned Inventions with the VA.
Roundtable 11 – How to Become an LES Instructor. 4:45 - 5:30 PM
Do you enjoy teaching and sharing your experiences with the next generation of IP licensing professionals?
Then why not join the LES Education Committee?
Our instructors teach a wide range of topics related to IP from Licensing, Agreements, Valuation to Due Diligence and Deal Negotiation. We have an active committee that meets once a month to review past and upcoming courses, including instructor and attendee experience. We also assess our curriculum and determine what new courses to develop to meet the needs of our members and non-members.
Most of our courses are now taught online, but in-person courses are also taught here at the Annual Meeting as well as locally at LES Chapters across the US and Canada.
Come join this Roundtable to learn How to Become an LES Instructor.
Roundtable 12 – LES 2024 Planning Meeting. 4:45 - 5:30 PM
The 2024 LES Annual Meeting is scheduled for October 20-23 at the beautiful Sheraton New Orleans. Come join Arpi Siyahian and Bob Held as the co-chairs to discuss the proposed content and other planning details. If you would like to participate on the planning team please send us an email at email@example.com
LES ANNUAL MEETING NETWORKING RECEPTION 6:30 - 9:00 PM
Join us at Pinstripes (River East Plaza, 435 E Illinois St) from 6:30pm for drinks and a hot food buffet.
Socialize with colleagues and network with new contacts in a relaxed atmosphere. Enjoy the entertainment on offer in the bowling alley and bocce courts!
Kindly Sponsored by
Tuesday October 17, 2023
Belonging In Licensing Breakfast 8:00 - 9:00 AM
Numerous studies have shown that the innovation ecosystem, which we all know leads to the assets LES members license, develop, and otherwise make real, does not reflect the demographic makeup of society. Women and racial minorities are not participating in patenting, entrepreneurship, and even patent law at rates equivalent to their participation in science and technology. We also know that as a business or as an economy, we need all potential inventions, and also that diverse and inclusive teams lead to robust and useful inventions.
So what can we, as licensing professionals, do to encourage an innovation ecosystem and processes that are accessible to all of our potential innovators? At the Belonging in Licensing Breakfast, we will present some relevant data about who is participating in the innovation ecosystem. We will then have a guided, open discussion with panelists working to make all parts of the innovation ecosystem more accessible to encourage diverse participation. Topics will include cross cultural communication, increasing diversity in patent law, encouraging women academics to be active innovators, and entrepreneurship education that is relevant to all. This discussion will allow us to end with concrete suggestions for actions, as well as ideas of resources, that will help us all implement the important and productive work of reaching all innovators in our organizations, being better communicators and negotiators, and expanding our world of innovation.
Kindly sponsored by WellSpring
Workshop – The Research Finance Web: Foundation, University, Private Equity, Drug Discovery Entanglements. 9:15 - 10:15 AM
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.
Workshop – Artificial Intelligence (AI) Applications and Implications: Recent Developments, Opportunities and Mitigating Risks. 9:15 - 10:15 AM
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.)
Workshop – Food, Drugs and Cosmetics – how regulatory landscape impacts deal making. 9:15 - 10:15 AM
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.
Workshop – How Patent Damages Rulings in Caltech v. Broadcom May Shift Leverage and Outcomes in Licensing Negotiations. 9:15 - 10:15 AM
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.
PRESIDENTS AWARD & FRANK BARNES AWARD 10:15 - 10:45 AM
PLENARY PANEL – Dealmaking Trends 10:45 - 11:45 AM
The esteemed panel will focus on deal trends in their respective industries and share what they are seeing including these themes:
- Deal volume
- What is driving deal value?
- Scouting for what is investible now
- Substantive changes or trends being observed in who is doing the deals
- Sticking points caused by data and technology in deals
- What is causing investing confusion?
- Legal/regulatory landscape changes
- The growing emphasis on trade secrets
LUNCH & EXHIBITION 11:45 – 1:30 PM
Life Sciences Sector Meeting 12:30 - 1:30 PM
Pharma Partnering Reputation Survey and Life Sciences Sector Meeting
Ryan Coe, Partner of the Triangle Insights Group, will present findings from the most recent Pharma Partnering Reputation Survey, highlighting most favored partners across the pharma landscape. Gayatri Varma, Sector Chair, will also provide updates on sector activities, and lead into sector networking.
High Technology Sector Meeting 12:30 - 1:30 PM
The High Technology Sector will meet to provide updates on sector activities including achievements over the year, planning for the upcoming year, and sector networking.
Physical Science Sector Meeting 12:30 - 1:30 PM
Physical Science Sector Meeting and Royalty Rate Survey Discussion
The Physical Science Sector will meet to hear a deeper dive into the results of the Physical Sciences Royalty Rates and Deal Terms Survey from Ann Cannoni and Nicki Kennedy, provide updates on sector activities from Shayne Phillips, and lead into sector networking.
IUGI Sector Meeting 12:30 -1:30 PM
Business of Brands Sector Meeting 12:30 - 1:30 PM
The Business of Brands Sector (formerly the Consumer Products Sector) will meet to discuss the Sector’s revised focus on the importance and value of brands.
Workshop – How the Different Policy Orientations Influence the Patent and Litigation Eco- System. 1:30 -2:30 PM
Innovation is risky: the inventor takes on many risks: The technology of his invention may fail. The technology may not be commercially successful. It may be overtaken by a better innovation.
In the face of these uncertainties, the inventor should be entitled to enjoy a stable legal environment. There should be little risk that the legal rights associated with the inventor’s patent; its exploitation; and its enforcement are subject to frequent, abrupt change. The inventor should benefit from well settled rules applied by neutral courts and by the patent office and other neutral expert government agencies.
But now it seems that patent stability is lost: patent rules and policy are influenced by election returns and turnover at regulatory agencies. And impacted by political concerns about national security, industrial policy and national sovereignty, In some territories counterfeiting and other forms of IPR piracy have reappeared.
The panel will explore these issues and – if possible – propose solutions!
Workshop – From One-Man Band to Orchestra Conductor: The Evolving Role of the Licensing Professional in the Innovation Economy 1:30 - 2:30 PM
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.
Workshop – Viewing the Inflation Reduction Act (“IRA”) Through a Transactional Lens. 1:30 - 2:30 PM
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.
Kindly sponsored by
Workshop – Searching the Specification for Satisfaction Game Show. 1:30- 2:30 PM
Pharma and the chemical industries panel will discuss how patent prosecutors and litigators view these standards and how to advise innovators in moving forward.
COFFEE BREAK/NETWORKING & EXHIBITION 2:30 – 3:00 PM
Workshop – Negotiating Successful Biopharma Partnerships. 3:00 - 4:00 PM
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.
Workshop – Leveraging University – Industry Collaboration in the Innovation Economy. 3:00 - 4:00 PM
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.
Workshop – Models for SEP Licensing in IoT. 3:00 - 4:00 PM
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.
This panel 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 business people/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.
Workshop – Problematic Provisions: 3 Parts of a License that Nobody Likes to Deal With. 3:00 -4.00PM
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.
Workshop – Top 10 Court Decisions of the Year Affecting Licensing. 4:00 - 5:00 PM
This workshop identifies the Top 10 court decisions over the past year that affect licensing. This workshop explores the implications of each case on how we draft and negotiate patent license agreements. We will highlight the issues these cases raise and make suggestions for ways to address those issues when drafting and negotiating agreements.
Workshop – CZI, HHMI, and the Allen Institute and the Future of Biotech. 4:00 - 5:00 PM
Marc Maladro, Vice President at CZI, Mike Perham, Director of Innovations at HHMI’s Janelia Research campus, and Arden Yang 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.
Workshop – Data for Brand Analysis. 4:00 - 5:00 PM
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.
Topics to be discussed:
- ISO Standards: Evaluation & Valuation
- Utilizing OSINT and Digital Forensics to Evaluate Brand Assets
- Brand Equity and Brand Strength Measures
- Financial Analysis Tools for Brands
Workshop – How to Expedite Patent Transactions (buy/sell) 4:00 - 5:00 PM
The objective of this workshop is to help large and small patent owners to monetize and/or right size their patent portfolios thru patent sales or acquisitions. The session will focus on “dos and don’ts” of executing such transactions and provide.
The IP transactions market has gained considerable attention in recent years. All indicators point towards increased activity in this area. The goal of most buyers is to create or enhance an existing IP portfolio while most sellers seek to improve their financial position or cash out a failed business or cleaving of a business division. While many aspects of buying/selling IP are similar to those of a regular property transaction, there are several things patent buyers and sellers can do to expedite, exalt and enhance the experience of each party.
This session will highlight several “dos and don’ts” that both buyers and sellers can and should implement to execute a smooth and a successful transaction. The workshop will provide practical tips on how to expeditiously close patent deals.
LES ANNUAL MEETING CLOSING RECEPTION, ANNOUNCEMENTS AND THANKS. 5:00 – 7:00 PM
Wednesday October 18, 2023
Professional Development Course – CLP Exam Review 8:00 – 5:00 PM
Having the Certified Licensing Professional (CLP) credential in intellectual property licensing and commercialization is a valuable career asset. A CLP designation:
Signifies your experience and qualifications to your clients, colleagues and potential employers;
Shows that you understand and use the latest industry practices; and
Demonstrates that you take your licensing career seriously.
The CLP Exam has been modified and reformatted. Are you planning on taking the CLP Exam this year? If so, prepare yourself with help from LES experts! LES is the leading association for intellectual capital management, technology, and business development professionals to achieve professional and personal success. Over 90% of those who take the LES CLP Exam Review Course pass the CLP exam!
During the course, our expert CLP-certified instructors will review and discuss:
Principles and concepts from each of the reconfigured five established domains tested on the CLP Exam; and
Sample questions from the approved CLP Sample Exam.
After the course, you will have access to your CLP course instructors, where you can get answers to your specific questions from these LES experts.
For more information on the CLP Exam, and to view a copy of the CLP Candidate Handbook, visit Certified Licensing Professionals, Inc.