Subject to change
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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.
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.
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.
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.
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.
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.
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).
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.
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!
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.
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