Winds of Change LES 2023 Annual Meeting

Tag: Patents

Location: Belmont
Time: 10:15 – 11:15 AM

Session description:

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?

Licensing strategies

  • Focus more on know how/trade secrets?
  • How to best protect a license agreement if any of the licensed patents are invalidated

Commercialization strategies

  • How to protect commercialized products from infringers who may feel inclined to challenge key patents in view of such heightened standards

Kindly sponsored by

Location: Armitage
Time: 2:30 – 3:330 PM

Session description:

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.

Location: Addison
Time: 3:45 – 4:45 PM

Session description:

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.

Location: Ballroom
Time: 8:30- 9:15 AM

Session description:

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.

Location: Ballroom
Time: 10:15- 11:15 AM

Session description:

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.

Location: Ballroom
Time: 4:45 – 5:30 PM

Session description:

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.

Location: Ballroom
Time: 4:45 – 5:30 PM

Session description:

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).

Location: Armitage
Time: 9:15 – 10:15 AM

Session description:

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.

Location: Ballroom
Time: 1:30 -2:30 PM

Session description:

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!

Location: Armitage
Time: 1:30- 2:30 PM

Session description:

Join us at a game show styled presentation on written description and enablement issues for U.S. patents and what innovators and defendants can do in this everchanging patent environment. Exciting prizes to be won – Game on!!

Location: Belmont
Time: 11:15 – 12:15 PM

Session description:

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.

Location: Armitage
Time: 4:00 – 5:00 PM

Session description:

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.