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Highlights Meetings New Members Societies’ News Reviews LES March 2013 Vol. XLVIII No. 1 ADVANCING THE BUSINESS OF INTELLECTUAL PROPERTY GLOBALLY G LOBAL NEWS By Gary N. Keller and John C. Paul Showcase Of Activities From 2012 Around The World (ATW) With LES International 2012 ATW, continued on Page 3 World IP Day 2012 experts from LES Arab Countries: (right to left): Ali Jazairy (WIPO), Gary Keller (Xomix), Andreas Winkler (Boehmert), Heinz Goddar (Boehmert), Omer Hiziroglu (Inovent), Mohammad Shariff (U. Putra) and Raja Saliba (Sughrue). E ach year on April 26th, chapters of the Licensing Ex- ecutives Society around the world hold events under the umbrella of “LES Around The World (ATW).” These events stem from the creation of World IP Day by the World Intellectual Property Organization (WIPO) which chose April 26th, the day on which the WIPO Convention came into force in 1970. The goal of LES ATW is to increase general understand- ing of what IP really means and offers an opportunity each year to join with others around the globe, to high- light, discuss and demonstrate how intellectual property helps shape our world. Across the globe events are held that bring together intellectual property stakeholders, experts, and novices from within the LES organization and in partnership with other organizations and outsiders. While the overall objective and vision is common, the ap- proach taken by these chapters is varied ranging from special entertainment events and networking, business plan and innovation compe- titions, intellectual property seminars, conferences and educational events. The objective of this overview of LES ATW 2012 is to provide a summary of the kinds of activities that are being conducted, some of the out- comes reported, and to provide a resource and refer- ence for future events. LES ATW is a unique event in its outreach to include members and non-members from affiliated organizations and those interested in intellectual property, these events are open to anyone. During 2010 & 2011, LES hosted more than sixty (60) Around the World (ATW) with LESI events, with over 2,000 participants in several countries and local areas throughout the U.S. and Canada. Tom Filarski, Past President of LES states, “Connecting and collaborating LES Arab Countries World IP Day 2012, “Patents: from Idea to Com- mercialization” forum, Saudi Arabia (350 participants).

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Page 1: LESGN3

Highlights Meetings New MembersSocieties’ News Reviews

LESMar

ch 2

013

Vol.

XLV

III N

o. 1

A D V A N C I N G T H E B U S I N E S S O F I N T E L L E C T U A L P R O P E R T Y G L O B A L L Y

GLOBAL NEWS

By Gary N. Keller and John C. Paul

Showcase Of Activities From 2012 Around The World (ATW) With LES International

2012 ATW, continued on Page 3

World IP Day 2012 experts from LES Arab Countries: (right to left): Ali Jazairy (WIPO), Gary Keller (Xomix), Andreas Winkler (Boehmert), Heinz Goddar (Boehmert), Omer Hiziroglu (Inovent), Mohammad Shariff (U. Putra) and Raja Saliba (Sughrue).

Each year on April 26th, chapters of the Licensing Ex-ecutives Society around the world hold events under

the umbrella of “LES Around The World (ATW).” These events stem from the creation of World IP Day by the World Intellectual Property Organization (WIPO) which chose April 26th, the day on which the WIPO Convention came into force in 1970.

The goal of LES ATW is to increase general understand-ing of what IP really means and offers an opportunity each year to join with others around the globe, to high-light, discuss and demonstrate how intellectual property helps shape our world. Across the globe events are held that bring together intellectual property stakeholders, experts, and novices from within the LES organization and in partnership with other organizations and outsiders.

While the overall objective and vision is common, the ap-proach taken by these chapters

is varied ranging from special entertainment events and networking, business plan and innovation compe-titions, intellectual property seminars, conferences and educational events. The objective of this overview of LES ATW 2012 is to provide a summary of the kinds of activities that are being conducted, some of the out-comes reported, and to provide a resource and refer-ence for future events.

LES ATW is a unique event in its outreach to include members and non-members from affiliated organizations and those interested in intellectual property, these events are open to anyone. During 2010 & 2011, LES hosted more than sixty (60) Around the World (ATW) with LESI

events, with over 2,000 participants in several countries and local areas throughout the U.S. and Canada. Tom Filarski, Past President of LES states, “Connecting and collaborating

LES Arab Countries World IP Day 2012, “Patents: from Idea to Com-mercialization” forum, Saudi Arabia (350 participants).

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2 Licensing Executives Society International

LES Global News—Highlights

Quick Links:

www.lesi.org

www.lesi.org/les-nouvelles

www.lesi.org/les-societies

www.les-europe.org

www.les-asiapacific.org

We request contributions from all soci-eties and individuals about important events, changes in the law in your coun-try or region, conferences, annual meet-ings, board changes and the like from your society. You can submit articles or announcements to the editor or use the form on the website at the following address: www.lesi.org/les-societies/les-global-news/submission-form.Deadlines: January 15, April 15, July 15 and October 15

Editor: Larry Plonsker, 10580 Northgreen Dr. Wellington, FL 33449 • Email: [email protected]

Call For Content

Changes And Challenges Of Turning 40 On The Road To Rio and BeyondBy Kevin Nachtrab, President, LES International

In this, the 40th year of the founding of LES International, it is fitting that we will be convening our Annual Convention in Rio de Janeiro,

Brazil on 7-10 April 2013 under the theme “Changes and Challenges: Commercializing Innovation in a Changing World.”

The challenges posed in this age of austerity and increasingly-rapidly changing communications and business, means that the old axiom, “adapt or die,” has never been more relevant. To this end, 2013 sees LESI innovatively adapting itself and the way it does business to help carry LES forward into its next forty years and beyond: “Commercial-izing” its innovations, if you will. And, as the theme of our Annual Conference suggests, LESI believes that by actually “commercializing” these innovations we will be able to rise to the challenges that LESI and all other professional organizations are facing today in order to continue to bring the maximum value possible to LESI Members worldwide and the various LES Member Societies of which they are members in this Changing World.

For one, LESI is streamlining its organization and administration in a manner that will enable us to better address the needs of our members both now and for years to come. We are moving to a virtual office: More matters will be handled electronically. Year 2013 also sees the first full year of Chris Katopis as our new Executive Director. Chris will be over-seeing the LESI administration as LESI transitions to a virtual office and into its new year.

We are adapting the means and developing vehicles for delivering educational and other content to members in ways that are more mean-ingful to them at lower costs. LESI is increasing its online content and moving to develop webinars and other electronic educational materials which can be accessed easily and economically by those members who, due to challenging economic times, find themselves unable to travel the often long distances required to attend Annual Meetings. To this end, the LESI Industrial Professional and Regional Committees are all experi-

Inside LES Global News

Highlights & Legal Updates –Pages 1-7

Meetings & Delegates–Pages 22, 24-28

New Members & Leadership–Pages 21 and 23

Society News –Pages 11-20

Book & Movie Reviews

Copyright © 2013Licensing Executives Society International

National Presidents Council–Page 8-10

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March 2013 3

LES Global News—Highlights

menting with webinars of various formats, to examine which format is the most effective globally. LES Global News has already been moved into an entirely electronic format since last year, permitting members to access it on their “desktop” when and where they want. This ap-proach will permit members to access those educational offerings of their choice without the necessity, and at-tendant costs, of travel.

Further, we are adapting our approach to indeed de-liver more for less and make LESI an even better value proposition for its members worldwide. An example is that the long range Planning Committee has started an aggressive Knowledge Capture and Management Pro-gram. Other examples include the continuing efforts to tag and otherwise make les Nouvelles articles more ac-cessible and searchable.

But, by no means, does this suggest that we will lose the skill or stop providing the opportunity to provide each member with quality professional education and “f2f” contact time and atmosphere, so essential for building those all-important professional and personal networks, which are the hallmark of LESI and the li-censing profession.

Indeed, for that, one need look no further than the LESI website for a listing of the still copious LES Meetings and Events that are being held around the world by both LESI and its Member Societies, which feature and facilitate networking in the relaxed busi-ness atmosphere to facilitate business contacts and dealmaking.

And perhaps no meeting will exemplify this princi-ple more than our upcoming Annual Conference in Rio. With keynote addresses by the Honorable Randall R. Rader, Chief Judge of the United States Court of Appeals for the Federal Circuit, and the Hon. Luiz Fux, Justice Minister of the Brazilian Supreme Feder-al Court, 32 workshops and special appearances by Microsoft IP leaders, the conference offers attendees an impressive line-up of individuals who are not just thought leaders but also implementers.

The conference will boast a social program unlike anything that could be offered outside of Rio. The Con-ference will be held at Rio’s newest 5 Star hotel, the

Windsor Atlantica in Copacabana. The opening recep-tion will also take place at the Windsor Atlantic, where attendees will be serenaded by the soft rhythms of Brazilian Bossa Nova and Chorinho of Maestro Delfin Moreira and his band with a panoramic view of Copa-cabana beach at dusk. The conference dinner will be held on the Clube Caiçaras, an island inside the Ro-drigo de Freitas Lagoon with unparalleled views of the city by night. And being Rio, …well, you just know that we’ll have to samba some.

For those who cannot make it to Rio, 23-25 June will see the LES Pan European Conference in the idyl-lic, peaceful surroundings of the Swiss Alps, at the very same conference center in Davos, Switzerland, that houses the World Economic Forum’s annual “Power Summit.”

Based on the theme “The Spirit of Licensing,” the Pan European Conference will present a program that ex-plores the “Blue” and “Green” economies. Keynote and opening speaker will be Gunter Pauli, reporter to the Club of Rome, with his book discussing the “Blue Economy“ with the “Green Car” being the subject of a second key-note address. Key panels will feature members of the WEF Global Action Council on IP discussing the global chal-lenges for the IP system and licensing, including the blue and green aspects of a sustainable economy and how IP portfolios should be managed (“Is the time ripe for manag-ing IP rights in a profit & loss organisation“)?

These events and many more that will be held by the 32 LES Member Societies worldwide show that LES members remain committed to providing an environ-ment that facilitates engagement with colleagues old and new and in getting business done.

So there you have it: LESI using innovation for ad-dressing the changes and challenges it faces as it turns 40 on the road to Rio, …to Davos and…beyond.

Let me close by inviting all members to come to the Annual Conference in Rio de Janeiro, to Davos and to other LES events to meet and get to better know your colleagues and peers, to start knowing LES better and to help us celebrate our first forty years as well as to toast the start of our next forty years of licensing, net-working, education and mentoring. ■

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LES Global News—Highlights

4 Licensing Executives Society International

LES ATW, continued from Page 1

with professional colleagues across industries and among allied groups is critical for fostering the innovation that is needed to fuel economic growth around the world. Our Around the World with LESI events will provide opportunities for profes-sional connections that will help to bring new products and services into the marketplace, and ultimately, into the hands of consumers for the ben-efit of all.”

In 2012, LES held over forty-six (46) events, an increase of over 50 percent from the annual average of the past two years. These events in-cluded networking receptions, con-ferences, educational programs, speaker and panel events, essay competitions study grants, business plan presentations, and IP games. These events engaged a wide spec-trum of attendees including IP thought leaders, government offi-cials, policy makers, business profes-sionals, IP lawyers, licensing profes-sionals, graduate students, and teenagers. Following is a summary of the activities by international LES Societies and the Chapters of LES (USA/Canada) to gain an insight into LES ATW events of 2012 and as a resource in planning for LES 2013.

LES Arab Countries held a “Pat-ents: from Idea to Commercializa-tion” Forum. This conference was sponsored by King Abdulaziz City for Science and Technology (KACST). The 3-day conference, with 350 par-ticipants, featured WIPO and LESI speakers on intellectual property, in-novation and commercialization.

LES Argentina held with Universi-dad Austral a half-day seminar to dis-cuss “What IP do non-lawyers need?” including two panels of speakers on this topic.

LES Australia New Zealand ran an essay competition and coordinat-ed LES ATW with other events in early May as this coincides with LES ANZAC day. Rosemary Lenaghan was the winning author of the essay titled, “Commercialising Innovation to Save the World!” which has been submitted to les Nouvelles for pub-lishing in the next edition.

LES Austria held “World IP Day—Erfindervergütung,” an overview on employees’ remuneration for inven-tions, including an overview on the legal basis in Austria and Germany. The event included industry sector speakers followed by a panel discus-sion on employee inventor’s remu-

neration in the different branches of trade and industrial sectors and by an Austrian research promotion organization.

LES Benelux held a free evening seminar on the European Commis-sion’s latest initiative to boost re-search, innovation and competitive-ness in Europe—Horizon 2020, which will replace Framework Pro-gram 7 (FP7), followed by a network-ing cocktail reception.

LES Brazil hosted a reception with the Brazilian IP Association and the Brazilian IP Agents Association.

LES Britain and Ireland held an “Introduction to Biologics” meeting followed by a reception.

LES Chile attended the inaugura-tion of the new Chile Patent and Trademark Office Headquarters. The event included the receipt of certifi-cates by students who participated in a workshop to teach them intel-lectual property through the design and development of video games. The video link is, http://www.youtube.com/watch?v=sqKrbDQMEz0&feature=relmfu.

LES Czech Republic held a one-day workshop, “News in Interna-tional Patent Protection,” (USA,

EPO, PCT, Russia/CIS) to-gether with the Czech In-dustrial Property Office and Czech Union of Inven-tors and Rationalizers at the Industrial Property Of-fice in Prague. The work-shop focused on IPR devel-opment in various parts of the world (Europe, USA, Russia/CIS) and included speakers from the Industrial Property Office presenting on “EU-Russia Technology Transfer Specifics in the LES Czech Republic—Mr. Milos

Hraba speaking about technol-ogy transfer to Russia.

LES Czech Republic—Mr. Emil Jeneral from the Czech IPO discuss-es the European Patent Convention.

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LES Global News—Highlights

LES ATW, continued on Page 6

Field of Pharmaceutical Industry.”LES France held a conference

around innovation with inventors whose inventions have become suc-cessful on the market, and business with international panelists from RPX and IPXI followed by a cock-tail reception.

LES Hungary held a half day con-ference in conjunction with the Hun-garian Intellectual Property (HIPO), with four presentations including key talks and panels on “Competition Law and Intellectual Property,” “Na-tional Symbols in the Trademark Law,” and “Unusual and Special Solu-tions for the Proposed “Unified” Eu-ropean Patent System.”

LES Israel held an event on “Fa-mous Trademarks Licensing.”

LES Italy concluded a 2012 Study Grant to the author of the best un-published audiovisual production, fo-cusing on the protection and eco-nomic enhancement of Intellectual Property rights.

LES Japan held a workshop on government, university and industry transactions in downtown Tokyo. This included talks on university-in-dustry relations, incubations of uni-

versity technologies and experienced in industry, venture capital and aca-demia, followed by a reception.

LES Philippines hosted a half-day forum on leveraging technology, “Le-veraging Cutting-Edge Technology to Control Legal Costs and Drive Client Value.” The forum included talks by industry executives on key technolo-gy issues including cloud computing, growing the ICT industry: network traffic trends and infrastructure in-vestments, integration of tablet tech-nology in the classroom, and leverag-ing technology for bench.

LES Scandinavia held mini semi-nars. One in Tampere, Finland fo-cused on visionary innovators—indi-viduals whose ingenuity and artistry have broken molds, opened new ho-rizons and made a lasting impact. The second held in Stavenger, Norway, centered on learning experience through interesting presentations and case studies, and an opportunity to discuss “hot” issues such as IP valua-tion, intellectual asset management, and investor relations.

LES Singapore held a combined event, “Innofest,” with the National University of Singapore’s industry li-

aison office and included a licensing workshop run in conjunction with AUTM’s meeting in Singapore as well as supporting a WIPO workshop for an ASEAN delegation.

LES Spain and Portugal held two conferences in the headquarters of the Spanish Patent and Trademarks Office, Madrid, on 26 April 2012. The themes were “Science as Busi-ness: the Need to Obtain IPR” and “IP Databases” followed by a recep-tion at the Spanish Patent and Trade-marks Office.

LES (USA & Canada) had LES ATW events at 22 LES Chapters in North America including Arizona, Calgary, California, Colorado, Flori-da, Illinois, Massachusetts, Michi-gan, Montreal, New Jersey, New York, North Carolina, Oregon, Otta-wa, Pennsylvania, Quebec, Seattle, Texas, Vancouver, Washington State, Washington D.C. and Wisconsin. Fol-lowing is a summary of the LES ATW 2012 activities of the chapters.

The Arizona Chapter held a talk, “Living With the IP licensing Deal: the Good, the Bad, the Very Bad,” on living with the IP licensing deal,

LES Chicago Chapter—Elevator pitch by a business school student.

LES Chicago Chapter—2012 ATW group photo.

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LES Global News—Highlights

LES ATW, continued from Page 5

sharing stories of lP licensing suc-cess realized by ASU’s industry part-ners and investors. The event was webcast and held at the offices of Snell & Wilmer.

The Boston Chapter held a net-working event including drinks, food and socializing at the Cam-bridge Brewing Company.

The Charlotte Chapter held a networking lunch for IP and busi-ness professionals.

The Chicago Chapter held a so-cial networking event at the offices of Levenfeld-Pearlstein. The event fea-tured three minute elevator pitches from local graduate student teams pre-senting their business plans submitted to the LES Foundation Graduate Stu-dent Business Plan competition.

The Florida Chapter held an evening seminar, “Intellectual Prop-erty Management Strategies—Knowledge and Insight Working Well,” at the University of Miami Life Science and Technology Park.

The Houston Chapter held an Around the World with LES Celebra-tion where attendees learned about branding in the wine industry while enjoying wine and hors d’oeuvres at RDG and Bar Annie.

The Inland Northwest Chapter held a panel discussion on “Careers that Change the World” at Gonzaga University School of Law followed by a networking reception at the offices of Lee & Hays.

The Michigan Chapter held a luncheon speaker event on the topics of “Patents by Numbers” and “Value Creation in Technology Commercialization” at Brinks Hofer Gilson and Lione.

The Montreal Chapter held the “IP & Licensing Basics: A One-Day Review Around the World” at Centre

CDP Capital followed by a reception for IP Celebration Cocktail at Hotel W.

The New Jersey & Philadelphia Chapter held a Grand Networking Reception at the Basking Ridge Coun-try Club featuring the newly created “LES Insights e-News Quiz Game,” an audience participation question-and-answer game in which the win-ners received terrific prizes and the chance to boast on how much they knew about the great news stories that LES delivers weekly.

The New York City Chapter held an event on “Medical Devices—New Rules, New Opportunities” at Pryor Cashman, LLP. A distinguished panel of experts explored the macro trends and current conditions in the medi-cal device industry from the perspec-tive of start-ups and large, well-estab-lished manufacturers. The discussion focused on deal structures / business development activities, differing reg-ulatory paths of international vs. U.S. approvals of devices, as well as new IP considerations resulting from re-cent legal developments.

The Ottawa Chapter held an eve-ning event that featured a panel dis-cussion on “Striking a New Balance: Copyright Exceptions under Bill C-11” at Gowling Lafleur Henderson LLP. The panel provided views regarding copyright exceptions under Bill C-11, including: fair dealing exceptions; ed-ucational exceptions; and non-com-mercial and personal exceptions.

The Québec City Chapter held a networking event that included li-censing success stories at Norton Rose Canada S.E.N.C.R.L., s.r.l.

The San Diego Chapter held an evening networking event with LES, SDIPLA and SDCBA Intellectual Prop-erty Law Section members at the San Diego Marriott La Jolla.

The Seattle Chapter held an eve-ning event focused on the America Invents Act reforms and the U.S. pat-ent system, “Effects of Patent Reform on Licensing and Acquisitions,” at Bracewell & Giuliani LLP. The discus-sion explored how numerous chang-es to the U.S. patent system may impact valuation, licensing and acqui-sition of patents, and some techniques to consider when addressing various risks that these changes may bring, including from the licensor/licensee and buyer/seller perspectives.

The Toronto Chapter held a presentation of “The Ron & Don Show”: discussing the “Top 10” IP cases from the past year at The Duke of Westminster.

The Vancouver Chapter held a networking reception in the Wine Room at Steamworks Brewing Co.

The Washington D.C. Chapter held a seminar, “Visionary Innova-tors and Intellectual Property,” at the United States Patent and Trademark Office. The morning speakers ad-dressed issues including the impor-tance of technological innovation and visionaries, as well as the social balance and value of intellectual property in society. The talks includ-ed the history of technology, intellec-tual property law and the American patent system, “Promoting Innova-tion from Sewing Machines to Smart-phones,” and “Philosophy, The Pat-ent Law, and Innovation.” The afternoon included talks by thought leaders and IP organizational leaders on key aspects of innovation.

The Wisconsin Chapter held a talk, “Recent Damages Decisions—What is the Effect,” discussing re-cent court decisions from the past couple of years and the effect they have on patent damages. It was held at the University Club. ■

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LES Global News—Highlights

Business And NGO Collaboration Key To The 2013 GTIF Geneva, Switzerland

By Jim Malackowski and Samantha Kattalia

More than 75 professionals from over 50 international organizations, in-

cluding the World Intellectual Property Or-ganization (WIPO), the World Trade Orga-nization (WTO), and the Bill & Melinda Gates Foundation, gathered at WIPO’s Headquarters in Geneva, Switzerland from January 20-22 to participate during the Second Annual LESI Global Technology Impact Forum (GTIF).

Under the theme “Business and NGO Collaboration for IP Driven Economic Development,” the conference featured seven panels with topics ranging from ‘Innova-tion Economics’ to ‘Markets for Humanitarian Tech Transfer,’ all of which converged to create powerful and constructive dialogue regarding the use of intellectual property for the betterment of mankind.

Economists from the USPTO, WTO, and Ecole Poly-technique Federal De Lausanne provided statistics to sup-port the role of intellectual property in sustaining long-term economic growth and recovery post financial crisis. During an early session on global IP policy development, WIPO Director General Francis Gurry emphasized the need for public/private partnerships in creating collabora-tive solutions to global challenges in innovation, public health, and socio-economic development. This theme of collaboration continued throughout the conference, vali-dating GTIF’s role in bringing together key players from government agencies, corporations, non-profits, and NGOs to address ways in which resources can be collec-tively leveraged to create the most impact.

On the second day, the conversation turned to hu-manitarian initiatives and access to needed technologies as follow-up to the inaugural Invent for Humanity™ Technology Transfer Exchange Fair held concurrent with GTIF 2012. This second half of the conference highlighted specific efforts made by corporations, social enterprises, and non-profits to improve living standards in some of the world’s poorest regions.

Two of the featured organizations, the USPTO and Solar Sister, were honored dur-ing the first-ever GTIF Awards Ceremony due to their exemplary commitment to fostering economic development through technology

deployment. Edward Elliot received The LESI National IP and Technology Transfer Policy

Award on behalf of the U.S Patent and Trademark Office for its Patents for Humanity Program, which encour-ages the use of patented technology to address humanitar-ian challenges through an expedited patent application to those individuals or organizations that do the most to ad-dress global challenges. The program has received over 80 applications since it was launched by USPTO Director Da-vid Kappos in February 2012. Solar Sister, a social enter-prise working to eradicate energy poverty by providing women with the resources and support necessary to start their own solar product based micro-businesses, received the Outstanding Humanitarian Technology Transfer Ini-tiative Award for its work in Uganda. Solar Sister was also a featured campaign during GTIF 2012.

Building from the 2012 Forum, audience members also revised the LESI resolution on IP Business Princi-ples, a list of 10 principles directing the best practices needed to address the future economy and the fair pro-tection of innovation. The final list is scheduled to be published later this year.

With two successful events complete, LESI GTIF continues to be the single most influential meeting of premier non-profit and non-government organizations dedicated to the business of IP globally. While discus-sion is the first step to initiate change, LESI aims to inspire real action in the delivery of life-altering appro-priate technologies and economic opportunities to the developing world through the use of IP. Plans are al-ready in the works for GTIF 2014, which is scheduled to occur next January. ■

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LES Global News—Presidents Council

National Presidents Council (NCP)By François Painchaud

The Value Of LES International As Perceived By Member Societies

LES International provides a num-

ber of services to, and undertakes a number of roles for, regional member societies. A group of 25 presidents and board members gath-ered in Geneva for a full-day workshop ahead of the Global Technology Impact Forum, in order to review which of these activities are most valued by the member societies. The group developed proposals for new services that LESI might provide, and, given financial limi-tations, considered the merits of these new services when compared to provi-sion of existing activities.

Jim Malackowksi, Immediate Past-President of LESI and Chris Katopis, Ex-ecutive Director, started the event by providing some perspectives on the role of the National Presidents Council and the strategic challenges that face the or-ganisation. The workshop required ac-tive and participative engagement from the delegates, and senior figures in LESI were busy throughout the day writing on flip charts, sticking notes on walls, and generating ideas in small groups against tight timelines. In order to force some selection of priorities, participants were asked to score different ideas for new services, and the group selected three key proposals. • Providing means of identifying organi-

sations with specific technology needs

By Mark Wilson

It has now been one full calendar year since the National Presidents Council

(NPC) was first created in Delmar, Califor-nia. From this initial meeting, the National Presidents Council has met four times, each time with a full working session. Much valuable information from current as well as past presidents of many of our National and Regional LES Societies was collected, and all the information gathered from these four meetings is now available on the website of lesi.org at: http://lesi.org/about-lesi/national-presidents-council/. There you will be able to find all NPC information and the Best Practices Guide along with the report of the various meetings held up to now.

I invite everyone to go to the site and read the reports of those meetings. There is much to learn on the National Societies them-selves and on views to make LESI a better Society. For example, you will learn of many “Best Practices” developed by National Societies that could easily be reproduced in your own National or Regional Society. One such Best Practice from LES Korea is fea-tured on page 9 of this issue.

You can also read more, for example in the report from the To-ronto NPC meeting; you learn how the National Presidents view LESI: as a “franchise,” as a “corporation” or as a “product” and how it has to deal with “diversity.”

The goal of the NPC is to help further the mission of the LESI which consists of:

• Functioning as a non-profit professional society encouraging high professional standards among individuals engaged in the transfer and licensing of technology and industrial or intellectual property rights;• Assisting its members in improving their skills and techniques in licensing through self-education, the conduct of special studies and research, the sponsorship of educational meetings, the publi-cation of statistics, reports, articles and other material, and the exchange of ideas related to domestic and foreign licensing;• Informing the public, international bodies, governmental bod-ies, and the business community concerning the economic signifi-cance of licensing and the high professional standards of those engaged in the licensing profession;• Making available to its members the latest, most accurate, in-formation on licensing. ■

Introduction Meeting Summary

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March 2013 9

The LES Korea Organization Of Officers

LES Global News—Presidents Council

and offers, or individuals with specific expertise.

–Although the LESI Directory pro-vides a means of finding useful con-tacts, delegates felt that it would be beneficial if LESI could provide en-hanced tools in this space. The group concluded that greater and more sys-tematic use could be made of existing LESI tools and social media approach-es, and considered the idea of gener-ating a listing or publication of lead-ing company licensing contacts.

• Raising the profile of LESI and marketing the organisation to “the external world.”

–Some country societies have enjoyed considerable success in raising the pro-file of LESI through the use of market-ing and PR agencies, and the need for LESI “to engage with the world” was recognised. Delegates considered that sustained and professional effort is re-quired to achieve meaningful results from such activities.

• Enabling the sharing of best practice within the LESI community, so that in-sights and new approaches from one country society can be made available to other groups.

–The group was very keen that services to members be improved by the sharing of ideas, insight and new initiatives across country societies. Many Presi-dents expressed enthusiasm for utilis-ing the international nature of LESI in this fashion, and a number of simple and pragmatic actions were agreed dur-ing the course of the day.

As a change of tone from the forward-looking content of much of the day, the group spent time in the afternoon discuss-ing current LESI budget matters with the LESI President, Kevin Nachtrab, and with senior Board members. As the final part of

LES KoreaBest Practices—A Licensing ClinicHistory

Founded in 1976 with 13 members, LES Korea has been providing professional norm for technology transfer, licensing skills and tac-

tics, education and information related to licensing and commercial-ization of technology to grow as the top notch organization of tech-transfer experts practically contributing to the commercialization and licensing of the technology developed by local institutes and universities.

LES Korea hosted international seminars in 1995, 1997 and 1998, and the LESI Annual Conference in 2006.

Licensing Clinic1. Purpose of the Licensing Clinic

• To provide seminars on different topics on licensing strategy.• To address and help resolve concerns and issues by the participants.• To promote network among the participants.

2. Current Situation of Work• Constitution and Operation of Licensing Clinic Committee –Managing Directors: Catherine Eunkyeong Lee, Jason Y. Pahng –Regular Committee Meetings: Monthly

Meeting Summary, continued on Page 10 Best Practices, continued on Page 10

PresidentMr. Jeongjoong KIM

(Mr. JJ KIM) AuditorMr. Seongkoo KANG

General SecretariatMr. Seongkoo KANG

General Assembly

Board of Directors

Vice PresidentMr. Jordan Y. KIM

NetworkCommittee

Secretary for Network

Vice PresidentMr. Sangjin CHA

BusinessCommittee

Secretary for Business

Ms. Yuyeon PARK

Vice PresidentMs. Rana LEE

EducationCommittee

Secretary for Education

Mr. Jijoon ROHMr. Sewon KIM

President (Interim)

PublishingCommittee

Secretary for Publishing

Ms. Catherine Eunkyeong LEEMr. Jason Y. PAHNG

Best Practices

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10 Licensing Executives Society International

LES Global News—Presidents Council

the session, and in a return to the workshop format, participants were asked to conduct an exercise to make clear which LESI services they valued most. The Presidents were asked to rank a set of alterna-tive service offers from LESI, and asked, “Which package of services would you most (and least) like to receive?” The results from this ex-ercise, which was a simplified form of a marketing approach that is known as conjoint analysis, will be considered by LESI’s senior leader-ship. The session closed with some thoughts on approaches that large firms typically employ for strategy development and brief consider-ation of the “strategy road map-ping” technique as a potential topic for a future Presidents’ workshop.

Although the event allowed time for debate of the factors for and against different proposals, in line with LESI’s usual considered and thoughtful practice, the day was notable for its industrially-oriented workshop-style format and for the use of forced scoring and ranking approaches, which allowed the group to set clear priorities. The Presidents agreed to meet again and made clear the collective de-sire that the National Presidents Council should continue. Dele-gates found the sharing of practic-es among country Societies to be particularly helpful, and comment-ed on the beneficial aspects of de-veloping deeper personal contacts with current Presidents in other territories. ■

3. Licensing Clinic Activity• Time: Licensing Clinic to be held on the third Wednesday at 7:30 AM of every other month.• Venue: Conference Room of BAE KIM & LEE LLC• Participants: Open to both members and non-members interested in the licensing field.

• Seminar Presenters: Editorial board will be formed to select the topics and seminar presenters.

–A special seminar to be planned occasionally to invite foreign licensing experts to give a presentation.

• Fee: KRW 20,000 per participant.

4. Licensing Clinic Operational Strategy• Form a pool of experienced professionals in the licensing field.

• Presentation of important cases in the licensing field, analysis of licensing strategy, discussion of key issues.

• Presentation of seminars and study sessions from topics chosen among the articles in les Nouvelles. ■

Meeting Summary, continued from Page 9

2013 Event Schedule

Date Presenters TopicsMar. 20, 2013 Jason Y. PAHNG To Determine Fair Li-

cense Terms: No Need For Rules of Thumb Anymore

May 22, 2013 Catherine Eunkyeong LEE

Assigning Rights in Future Inventions: The U.S. Supreme Court’s Decision In Board Of Trustees Of The Leland Stanford Junior Univer-sity v. Roche Molecular Systems, Inc.

July 10, 2013 Jeongjoong KIM12 The 25 % Rule Re-visited and A New Investment-Based Method For Determin-ing FRAND Licensing Royalties

Sept. 25, 2013 Sewon KIM Component-Based Software, Patents & Open Source: A Guide Through The Bermuda Triangle Thibault Bouvier

Nov. 20, 2013 TBA

Best Practices, continued from Page 9

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LES Global News—Society News

Riding on the success of the 2010 Licence Negotia-tion Simulation, a sequel, “Patent Licence and Ac-

quisition Negotiation—A Simulated Case Study,” was launched on December 11, 2012. The event was jointly organized by the Licensing Executives Society China Hong Kong Sub-Chapter and the Hong Kong Trade De-velopment Council with support by LES Japan. Over 90 executives attended the case study and learned how to maximize the value of their organisations through a simulated case study—the negotiation of patent rights between two companies.

The seminar also featured a presentation of the Ja-pan Award by LES Japan President, Katsumi Harashima to Stephanie and Cece Pong, both associate degree students at Hong Kong Community College. The Pong sisters shared with the audience details about the business plan on “RFID equipped Umbrella Dryer”

Patent Licence And Acquisition Negotiation —A Simulated Case Study

that has brought them honor in the “First LES Asian Student Business Plan Competition” held in Tokyo in early September 2012.

The case study and the award presentation were fol-lowed by a forum discussion chaired by LESC-HK Pres-ident, Alice Ngan. The audience participated enthusi-astically in the discussion with LESI President, Kevin Nachtrab, Assistant Secretary–General of the Hong Kong International Arbitration Centre, Dennis Cai and LES Japan executives, Toru Kobayashi, Hideyuki Ogata and Makoto Ogino.

“The series of programs are meant to advance global intel-lectual property management and exploitation practice, as well as assist the development of international business net-work,” according to Kevin, who also expressed his hope for more broad-based participation in the LESI events by stakeholders from various regions. ■

Panel participants and executives at the licence negotia-tion forum, from left: Toru Kobayashi-LES Japan, Katsumi Harashima-President of LES Japan, Kevin Nachtrab-Pres-ident of LES International, Ralph Chow-Director, Product Promotions, Hong Kong Trade Development Council, Alice Ngan-President of LES China-Hong Kong, Hideyuki Ogata-LES Japan, Makoto Ogino-LES Japan, Dennis Cai-Assistant Secretary–General, Hong Kong International Arbitration Centre, Joanne Hon-LES China-Hong Kong.

The LES forum discussion was chaired by LESC-HK President, Alice Ngan. The audi-ence participated enthusiastically in the discussion with LESI President, Kevin Nach-trab, Assistant Secretary–General of the Hong Kong International Arbitration Cen-tre, Dennis Cai and LES Japan executives, Toru Kobayashi, Hideyuki Ogata and Makoto Ogino.

LES Japan President, Katsumi Harashima, pre-sented Stephanie and Cece Pong, Asian Business Plan Competition finalist from Hong Kong Com-munity College, with the LES Japan Award.

LES China and LES Japan

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12 Licensing Executives Society International

LES Turkey

The aim of this study is to reveal the potential of the Turkish Pharmaceuticals Industry in means of

the innovation life sciences field. Turkey’s economy fosters in recent years resulting in significant growth in many industries including pharma, and it may be the correct time to evolve into a research and devel-opment country, but who will pave the way?

According to Business Monitor International (BMI), since 2009, Turkey’s pharmaceutical industry has been beset by government-imposed price controls. In December 2010, a new decree was published in the official gazette, outlining further drug price reduc-tions of 9.5 percent to be imposed in 2011. In doing so the government broke its December 2009 agree-ment not to make significant additional changes for a period of three years. Drugmakers operating in Tur-key are now in a position where pharmaceuticals will have to be sold for 30-50 percent less than the lowest European prices.

Drug development has many phases and it takes ap-proximately 10-12 years for a new molecule to come into market while thousands of them die on the way to development. First, a molecule is discovered and it becomes a drug candidate, then pre-clinical studies are completed, and if everything goes well, First-In-Man trials starts. After this stage, so called “clinical trials” begin. Clinical trials are categorized as Phase-1 (usually on the healthy volunteers to determine dos-ing,~20-30 subjects), Phase-II (on patient volun-teers,~500 subjects), Phase-III (on a large number of patient volunteers~1.000-2.000 subjects). After Phase-III, a pharmaceutical company may apply for a New Drug Application (NDA), a vehicle through which drug sponsors formally propose that the FDA (Food and Drug Administration) approve a new phar-maceutical for sale and marketing in the U.S. Phase-IV and Post-Marketing studies are conducted to col-lect more information on treatment risks, benefits, and optimal use after a drug is marketed.

Hidden Intellectual Assets In Turkish Pharmaceuticals Industry

Turkey has built its legal infrastructure in the clini-cal trials field in 1993 and has been involved in more than 1,000 international phase studies until 2012, and improved its knowledge and capacity in the field. Turkey has high-qualified investigators as well as a huge clinical research staff society. Since 1993, clini-cal research working practices developed in accor-dance with ICH-GCP (International Conference on Harmonization- Good Clinical Practices).

This shift will someday end in molecule discovery if well managed, and hidden intellectual assets of Tur-key may be revealed. Key Country Facts: Population (millions) 75.7GDP per capita, PPP (current international $) 13,885.0GDP (U.S. $ billions) 614.6

Turkey is among the rapidly developing countries. It has the advantage of a young population who are aware of what is going on all around the world by us-ing information technologies effectively; and it has a high potential with its cultural and economical struc-ture that forces one to think outside the box in a creative way.

In addition, the lack of platforms which would car-ry out the management and assessment of the cur-rent assets drives these assets to be hidden.

One of the most prevalent intellectual asset field in Turkey is probably the life sciences. This is simply be-cause there are more than 140 universities, 71 medi-cal schools and over 100 science schools which may govern many intellectual assets. However, in the re-port prepared by INSEAD (The Global Innovation In-dex 2011) Accelerating Growth and Development (GII) which covers 125 countries, key rankings of Tur-key listed below do not show the same expectation.

Global Innovation Index: 34.1: Rank:65 University/Industry collaboration on R&D: Rank:75

By Sule Mene and Arda Karaduman

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PCT published patents with at least one foreign inventor: Rank 72Patent applications filed at the national office: Rank: 42The gap between these data and what is expected

could be reasoned due to hidden intellectual assets. The main question is why these intellectual assests remain hidden. Although there are many “skilled researcher” as-sets in Turkey, they probably do not match with people who know what to do next. This shows that there is a need for different conditions other than “skilled worker” for intellectual assets to come to life.

When the sub-industries that form the life sciences are observed, Turkey has one of the biggest pharmaceutical industries and considering that (Turkish Pharma Indus-try) TPI is Europe’s 6th, world’s 14th, and CEE’s 2nd largest pharma market in 2011 having a size of around 11 billion USD, it has more than 2,000 high qualified people employed in this industrial area. Despite this mas-sive workforce specialized in the pharma industry, the Turkish Pharma Industry is still weak in terms of devel-oping pharmaceutical Technologies and/or R&D in the world. It is necessary to investigate the reason for this. It is mainly because “there’s no National Pharmaceutical Industry Strategy Development policy set-up yet.” On the other hand, the reality is that, countries will shape their future by technology or innovation.

There has to be a correct strategy to utilize the hidden intellectual assets in the life sciences industry; specifi-cally in pharma industry through academy/industry part-nership programs, governmental grant-in-aid support to clinical trials, economists, and stimulus packages tax breaks, for instance.

Governments have a critical role in setting the right environment and policies. Companies have to increase their innovation activities and universities need to create environments for innovation for researchers.

On top of that, a country’s success in international R&D is well depended on such an IP-safe reputation.

After patent legislation had been introduced in 1995, Turkey had been a party of WTO’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement in 1996 and then in 1999, patent protection law was available for drugs. However, this patent protection law was not provid-ing temporary protection for drug candidates that were under R&D. For this reason, until 2005, the Ministry of Health accepted applications of generic versions of pat-

Congratulations Felipe On Your New Leadership Role In IP

Our very own Felipe Claro, Na-tional President of LES Chile, is

now the Vice President of AIPPI, In-ternational Association for the Pro-tection of Intellectual Property. Under Mr. Claro’s LES Chile lead-ership, our Society has exerted sig-nificant influence in the drafting of proposed legislation to amend the

current law of trademarks and patents in Chile. Felipe is a Partner at Claro & Cia and is ranked as a Leading Lawyer by Chambers & Partners and frequently speaks at intellectual property events. Congratulations Felipe on your new leadership role in IP.

ented original drugs. After this date, in EU, laws that brought data protection for six years arose for the products that were licenced after 2004. As seen from this scheme, Turkey is introduced to “Intellectual Property Law” many years after the USA and settle-ment is still ongoing.

Our proposal at this stage of development is to create awareness among the researchers, inventors, and aca-demics who are supposed to be the IP owners but can-not manage due to lack of knowledge. This could be done by increasing the number of interfaces in the life sciences industry, such as associations, funds, and pri-vate seed funds, and convince them to provide continu-ous training. For sure, professional constancy is the job for associated private companies and experts, but there should be the first step to pave the way for the hidden assets to match with the professionals.

The improvement in the Intellectual Property area and increased awareness that will bring trust will enable the emergence of hidden intellectual assets rapidly. ■

AuthorsDr. Sule Mene, CEO, Mene Research, Co-Chair, Life Sci-ences Committee, LES Turkey, [email protected]

Arda Karaduman, Bus. Dev. Associate, Eczacibasi-Monrol, Vice-Chair, Life Sciences Committee , LESI, [email protected]

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14 Licensing Executives Society International

LES Malaysia

An intimate and cosy dinner event was held at Cafe Barbera in Bangsar on 8 November

2012 to celebrate the Licensing Executives So-ciety Malaysia’s 20th anniversary. The event held in celebration of this milestone was at-tended by approximately 40 guests. The venue was decorated with floral centerpieces that re-flected the colors and emblem of the society.

In her speech, Janet Toh, the President of LESM did not only praise the active work of the past presidents of LESM and informed everyone present of the events organised throughout the year, but also assured the guests present that LESM would not be resting on its laurels. It would continue to make itself more visi-

ble especially through the organisation of the LES Asia Pacific conference in 2015.

In addition to the president of LESM, the guests were treated to a speech by the first pres-ident of LESM, Mr. Liew Shou Kong, who gave an account of how he was roped into being the first president of the society.

Finally, the current president of LESM handed each of the past presidents a me-dallion in appreciation of their past contribu-tions to the society.

LES Malaysia Celebrates Its 20th Year Anniversary

Janet Toh, President of LESM, presenting her speech.

President of LESM presenting apprecia-tion gifts to the past presidents.

Performance by local celebri-ty Juwita Suwito.

The guests were treated to a speech by the first president of LESM, Mr. Liew Shou Kong, who gave an account of how he was roped into being the first president of the society.

Throughout the dinner, guests were given the opportunity to catch up with each other while enjoying savory appetizers such as mushroom bruschetta, mushroom soup, pizzas and chicken wings. Guests were also given a few options for their main course before ending with desserts and coffee.

The night ended with great entertainment from local celeb-rity Juwita Suwito and her band. Juwita and her band enter-tained the guests with a new single from her album as well as popular songs like “Stand by Me,” to remind the guests to stand by their president! Juwita even sang a song about spa-ghetti to the tune of “My Bonnie.” ■

Past presidents who attended the anniversary event.

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LES Philippines And LES Japan Conduct Joint Meeting

LES Philippines

LES Philippines was host to sever-al delegates from LES Japan who

visited the Philippines from 18-20 November 2012. Upon their arrival, the delegates from LES Japan, led by their President, Mr. Katsumi Ha-rashima, and the officers of LES Phil-ippines had dinner with the Director General of the Intellectual Property Office of the Philippines (IPO-PHL), Mr. Ricardo Blancaflor, at the Dusit Thani Hotel.

From November 19-20, the dele-gates from LES Japan touched base with various Philippine government agencies such as, the IPO-PHL, De-partment of Justice (DOJ), Bureau of Customs (BOC), National Bureau of Investigation (NBI), and the Supreme Court (SC) to learn more about the Philippine intellectual property and li-censing framework.

The visit of the delegates from LES Japan culminated in the “LESP-LESJ Joint Meeting” attended by members of LES Philippines and the delegates from LES Japan, which was held on the night of the 20th of November 2012, at the Dusit Thani Hotel.Other Activities During the Last Quarter of 2012

Aside from the “LESP and LESJ Joint Meeting,” LES Philippines was further kept busy during the last quarter of 2012 with other activities.

In celebration of IPR Week, the LES Philippines held a roundtable discussion entitled “Quo vadis?—Are the Filipino Performing Artists Second-Class Citizens in their Own Country, Compared to their Foreign Counterparts?” The forum was graced by Ms. Mitch Valdez of the Performers Rights Society of the Philippines (PRSP), Mr. Noel Caban-gun of Filipino Society of Compos-ers, Authors and Publishers, Inc. (FILSCAP), Mr. John Lesaca of Aso-sasyon ng Musikong Pilipino Foun-dation, Inc. (AMP), and Mr. Howard “Long Tall” Medina of Steve O’ Neal Productions, all key stakeholders in the performance arts industry, who thoroughly discussed the issues sur-rounding the displacement of Filipi-no performers by the considerable influx of foreign acts in the past three years.

Also, as part of its Memorandum of Agreement with PCHRD-DOST for the implementation of the proj-ect, “Intellectual Property and Tech-nology Management Learning Se-ries,” LES Philippines conducted three (3) capacity building seminars for the regional health research sys-tems on IP and Technology manage-ment. The first was held on 14 No-vember 2012 at the Grand Prince Hotel in Cebu City. The President

and President-elect of LES Philippines, Mr. Ferdinand M. Negre and Ms. Les-lie Anne T. Cruz, respectively, were the speakers during the said seminar. The second seminar was held on No-vember 23, 2012 at Casa Nena, St. Therese of Lisieux Hall, Holy Angel University, Angeles City. The third seminar was held on 28 November 2012 at the Mindanao Training and Resource Center, Waling-Waling Hall, DMSFI, Bajada, Davao City. Mr. Negre and LES Philippines members, Ms. Di-vine Pedron and Mr. Oliver Baclay, served as resource speakers at the last two seminars.

Lastly, the LES Philippines capped off the year with its annual Christmas Party held on 6 December 2012 at the Sycip Law Office. The night of merriment began with opening re-marks from the IPO-PHL Director General, Mr. Blancaflor. The attend-ees had a hearty dinner and enjoyed several games organized by the Pres-ident-elect, Ms. Leslie Anne T. Cruz, and the Meetings Committee Chair, Ms. Polka Gan-Ronggavilla. LES Phil-ippines members also tried their luck on the Pot of Gold, minor raffle prizes and the grand prizes, which were two original paintings donated by Mr. Ramon S. Esguerra (member of the LES Philippines Council of Advisers). The night ended with the traditional gift exchange. ■

Officers, directors and members of the LES Philippines and the delegates from LES Japan during the “LESP-LESJ Joint Meeting.”

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16 Licensing Executives Society International

LES Czech Republic

T he regular autumn LES Czech Republic Conference was held in the Clarion Ho-

tel Prague on the 28th November, 2012. The conference topic, “Current IP Legisla-tion and Case-Law in Europe,” was dedi-cated to the current situation and the re-cent changes in the IP legislation in selected European countries.

We invited the speakers from EU coun-tries, namely Czech Republic, Slovakia, Poland, Hungary, Germany, Denmark, but also from Russia. All speakers covered the last substantial changes in the IP leg-islation, touched on the situation in IP transactions, technology transfer, subli-censing and clarified the specifics of IP rights assignment in their countries. An interesting part of all presentations were the practical examples of particular case-law decisions. Many reputable speakers and participants from abroad took part in the conference.

There was a possibility for mutual fa-miliarization and discussion of experi-ence during the conference and pre-con-ference dinner, for which the speakers were invited to the Prague Tower restau-rant. The conference brought a much needed overview of foreign practice for local patent attorneys and for company IP lawyers as well. Foreign speakers and par-ticipants could also take part in the sight-seeing tour in Prague, one of the most beautiful European cities.

The conference was highly appreciated by all participants and speakers from both professional and organizational points of view. LES Czech Republic intends to pre-pare more events focused on cooperation and experience exchange in the near fu-ture, especially together with LES chap-ters from neighboring countries. ■

LES Czech Republic ConferenceCurrent IP Legislation And Case-Law In Europe

Correction of patented claims is one of the most effective ways to protect a pat-

ent from validity challenges by potential li-censees or accused infringers. Prior to a 2008 Supreme Court decision (July 10, 2008), the Japanese Patent Office maintained a principle of denying allowability of multiple corrected

claims as a whole if at least one unallowable claim was in-cluded. This practice was partially modified by the court deci-sion and totally changed by the patent act revision made in 2011, which became effective on April 1, 2012. Pre-2011 Patent Act Revision—Different Treatments Between Two Types of Correction Procedures

There are two types of procedures for correcting patented claims. Patentees can request a Trial for Correction to volun-tarily resolve validity questions or strengthen an assertion of validity against an invalidity argument by the defendant in an infringement litigation procedure. On the other hand, if a Trial for Nullification is requested, the patentee is not allowed to request a Trial for Correction, and instead is required to file a Petition for Correction.

Based on precedents, e.g., a 1980 Supreme Court Decision (May 1, 1980), the 2008 Supreme Court Decision (July 10, 2008) and a 2009 IP High Court Decision (November 19, 2009), it has been understood that whereas allowability of correction of multiple patented claims should be indivisibly examined in a Trial for Correction, allowability of correction for narrowing multiple patented claims that are individually challenged in a Trial for Nullification should be examined for individual claims.

Prior to the 2011 revision, it was still not clear whether all questions relating to the correction of multiple patented claims were resolved by the court decisions. Additionally,

Correction Of Multiple Claims Can Be Individually Requested— 2011 Patent Act RevisionBy Mitsuo Kariya*

LES Japan

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there were criticisms of the inconsistent treatments between the two procedures, which commonly re-late to correction of patented claims. Unified Treatment—2011 Patent Act Revision

According to the revised patent act, correction of each of multiple patented claims can be individually requested in a Trial for Correction as well as in a Petition for Correction (Articles 126 and 134-2). However a group of an independent claim and its dependent claims is treated indivisibly, and if allow-ability of correction of at least one claim in the group is denied, allowability of correction of all claims in the group is denied. This treatment is intended to prevent a complicated situation where a reference to originally patented claims becomes necessary when correction of some claims is allowable and correction of others is unallowable. Supposing that a patent includes two patented claims, e.g., Claim 1 (configuration “A”) and Claim 2 which was depen-dent on Claim 1 (further comprising configuration “B”), and it is requested that corrections be made to amend them to Claim 1’ (configuration “a”) and Claim 2’, which is dependent on Claim 1’ (further comprising configuration “b”), if the correction of Claim 1 to Claim 1’ is allowed and the correction of Claim 2 to Claim 2’ is rejected, the claims subse-quent to the proceeding for correction will result in Claim 1’ (configuration “a”) and Claim 2 dependent on the uncorrected Claim 1. Thus, a reference to Claim 1’ in the corrected patent publication and a reference to Claim 2 in the original patent publica-tion become necessary.

When a patentee requests corrections on multiple patented claims including dependent claims either in a Trial for Correction or in a Petition for Correc-tion, it is permitted to rewrite the dependent claims to independent form so that the patentee can re-quest individual examination of corrections of mul-tiple patented claims.Correction of Patented Claims Became More User-Friendly

According to this revision, it became clear that

patentees can protect their patents from validity challenges by avoiding the disadvantageous situation where multiple claims were indivisibly treated un-der the previous practice.

When corrections of patented claims are allowed either in a Trial for Correction or in a Petition for Correction, the corrected claims become effective retroactive to the filing date. Potential licensees or accused infringers are liable for past damages as long as they infringed the corrected claims regard-less of existence of patent marking or receipt of a cease-and-desist notice.

It is recommended that dependent claims be re-written to independent form when a request for a Trial for Correction or a Petition for Correction is filed, in order to avoid rejection as a whole if the patentee is not confident on allowability of all the requested corrections for a group of claims includ-ing dependent claims. It is allowable to include multiple independent claims for one category. The official fee for a Trial for Correction, the official fee for a Petition for Correction and the annual fees are determined simply by the number of claims.

There are other revised provisions relating to Correction. Prior to the 2011 patent act revision, patentees had an opportunity to correct claims even after issuance of a trial decision to nullify the patent, by requesting a Trial for Correction within 90 days from filing of a suit to rescind the trial de-cision. This opportunity is no longer available, as a result of the 2011 patent act revision; however, in-stead, the Board of Appeal issues advance notice of a decision and a final opportunity to correct claims will be given to the patentee (Article 164-2).

It should be noted that there are transitional mea-sures relating to the 2011 patent act revision, which for the sake of simplicity are not discussed here. ■

Author*Mitsuo Kariya, Licensing Director and Executive Coun-selor at GE Japan Corporation, Patent Attorney

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18 Licensing Executives Society International

On September 3 and 4, LES Asia Pacific Regional Conference

was held in Tokyo and I participated in the Plenary Session titled “Mobile Computing (including IP Issues of Smart Phones)” with Mr. Jeong-Joong Kim of LG Innotek Co., Ltd. in Korea and Ms. Tatiana Moore of Microsoft Corporation in the U.S.

This article focuses on a patent pool, which is one of key points of my presentation. I added some back-ground history and issues relevant to the patent pool in this article.

In my presentation, I referred to a difference between consumer electronics industries and mobile phone industries with regard to the patent pool.

In digital network products, it is necessary to use multiple standard technologies. When discussions were held in 1993 to create a standard for MPEG2 video codec technologies, participants made a proposal to create a patent pool for MPEG2 standard.

The concept of the patent pool was proposed to allow manufacturers a comfort zone and enjoy patent rights on a level playing field to avoid a ne-cessity of obtaining individual licens-es from numerous patent holders,

Discussions On Patent Pools From Mobile Computing (Including IP Issues Of Smart Phones) At LES Asia Pacific Regional Conference

By Tetsuyuki Watanabe*

LES Japan

which leads to high cumulative royal-ties together with extensive efforts in negotiating separately with each patent holder.

Based on this proposal, IP Working Group was established and discus-sions were held. As a result of the discussions, a company called MPEG LA acting as a licensing agent for the patent pool was established in 1996. MPEG LA started its licensing activi-ties in 1997 after receiving a Busi-ness Review Letter from the U.S. De-partment of Justice.

Since then, many patent pools have been established, which include com-monly used standards such as codecs, standards for packaging media and standards for TV. Consumer electron-ics products, such as BD/DVD, PC, TV, DSC, and video cameras, cannot be produced without using such standard technologies.

While discussions for many patent pools have been made by companies in the field of consumer electronics, some entities outside the consumer electronics field have participated in some of the patent pools. Their li-censing policies are different from those of companies in consumer electronics industries, and many dis-

cussions were held before such pat-ent pools could be established. Fur-ther, carriers have been participating in patent pools that were recently established to cooperate on stan-dards to be used for mobile phones, and they have their own licensing policies, which are also different from those of companies in elec-tronics industries.

As can be seen from the chart, there is only one patent pool that exclusively covers the standard for the mobile area and numbers of li-censors are small. Further, the es-tablishment of such pools was de-layed mainly by the presence of differences in licensing policies among companies in consumer elec-tronics industries and companies in communications industries, espe-cially in the U.S. and Europe.

While there have been some ob-stacles to creating patent pools among various industries, it is true that the patent pools have contributed to the development of digital network industries and the patent pool is a special char-acteristic of the licensing policy of digital network industry as a so-called “open licensing policy.”

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While patent pools contribute to the development of markets in digi-tal network products, new issues have arisen as a result of the estab-lishment of patent pools.

1. In view of the current severe competition in the worldwide digital network market, many Japanese consumer electronics companies have shown huge deficits in recent financial quar-

Representative List Of Patent Pools As Of August 2012

Standard Products License Agent Main Licensors

VideoCodec

MPEG2 DVD/BD, Game, TV, PC MPEG LAPanasonic, Philips, Sony, Mitsubi-shi, GE, Samsung, Thomson, Total 27

MPEG-4 Visual DVD/BD, Video Camera, DSC PC, Mobile Phone MPEG LA

Panasonic, Philips, Sony, NTT,GE, MS, Samsung, LGE Total 28

MPEG-4 AVC/H.264 DVD/BD, Video Camera, DSC PC, Mobile Phone MPEG LA

Panasonic, Philips, Sony, Toshiba, Apple, MS, Samsung, LGE Total 29

VC-1 BD, PC, Mobile Phone MPEG LA Panasonic, Philips, Sony, MS Total 18

Audio Codec AAC Audio Player, Mobile Phone, PC Via Licensing

Panasonic, Philips, Sony, Dolby, FHG, NTT, NEC Total 13

Package Media

DVD DVD Toshiba(TDLS)

Panasonic, Toshiba, Hitachi, Mit-subishi, Sharp, WB, JVC, Samsung

Blu-ray Disc™ Blu-ray One-BluePanasonic, Philips, Sony, Hitachi, Samsung, HPTotal 15

Mobile W-CDMA Mobile Phone Sipro Panasonic, NTT, FT, KPN Total 11

TV

DVB-T TV, STB S.I.SV.EL. Panasonic, Philips, Sony, FT, KPN

ATSC TV, STB MPEG LA Panasonic, Philips, Zenith, LGE Total 8

ARIB (Japan) TV, Mobile Phone, STB UldagePanasonic, NHK, Sony, Toshiba, Thomson, FT Total 14

CATV (Japan) STB Uldage Same as above

terly reports, and it has become necessary to review whether it is appropriate to continue an “open licensing policy” to survive in the market. 2. While the patent pools have set cheap royalties and contributed to avoid increases in accumulated royalties, a sharp price illusion of products overcomes an advantage of merits of the pool license. Fur-

ther, since it is expected that many important patents included in patent pools that started in the mid and late 1990s will expire within 5 years, it is necessary to discuss a new licensing scheme. ■

Author*Tetsuyuki Watanabe, Senior Councilor, General Manager, Licensing Group, Intel-lectual Property Center, Panasonic Cor-poration, Vice President of LES Japan

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LES Global News—Society News

LES Korea

1. Operating Committee Continues MeetingsAs originally planned, the LES Korea Operating Com-

mittee has held bi-monthly meetings on the 2nd and 4th Tuesday of the month. Usual members attending the meetings are the President, two Vice Presidents, three Secretariats (General, Education and Networking) and the Director of Planning.

2. Co-Sponsoring 2012 Techno-Fair Together with KAUTM

KAUTM (Korea Association of University Technology Transfer Managers) and LES Korea jointly held the 2012 Techno-Fair from October 31 to November 2, 2012 at COEX Exhibition Hall D in Seoul, Korea. There were 57 universities and technology transfer centers participat-ing in the fair. About 8,000 new technologies were dis-played for trade and commercialization.

3. Sponsoring 2012 Grand Prize of IP Management in IT Industries

LES Korea took part in KEA’s (Korea Electronic As-sociations) annual award project. KEA is the associa-tion of companies in information technology related industries. In the award ceremony held on November 1 at the Grand Intercontinental Hotel, three compa-nies and two persons were awarded prizes for their

notable activities in IP management. One of the prizes was entitled the “LES Korea President Award.”

4. New Membership Card CompletedLES Korea members will have a newly designed member-

ship card by the end of this year. This membership card was designed to promote the identity of LES Korea mem-bers and intensify a sense of solidarity among members.

5. LES Korea and KIPA Collaborate in Student Busi-ness Plan Competition

After a lengthy discussion, LES Korea and KIPA (Korea Invention Promotion Association) reached an agreement to select a team for the LES Student Business Plan Compe-tition out of the finalists of KIPA’s University Student In-vention Competition. For this purpose, LES Korea agreed to provide its expertise in examining and mentoring par-ticipants’ inventions and business plans through the eight month long process. The prize winners will be announced every December. The team selected for LES AsiaPacific Student Business Competition will be financially support-ed by KIPA and mentored by LES Korea.6. LES 200 Organizing Committee Launched

To meet the growing demand for the LES 200 course in Korea’s licensing related communities, LES Korea set up a LES 200 Organizing Committee chaired by Ms. Rana Lee (VP of Education). This was decided in the Ad-hoc Operating Committee on November 20. It will be held February 21 and 22, 2013 in Seoul, Korea under the title “Commercializing Technology through the Power of IP Licensing.” ■

Activities Keep Members Engaged

1.

2.

3.

4.

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March 2013 21

LES Global News—Leadership

L ES Czech Republic expresses its deep sorrow at the sudden death of Jarmila Traplova. On 7th December 2012, at age 58, Jarmila passed away after a serious illness.

Jarmila was a very active member of LES Czech Republic. She was elected a president of LES Czech Republic twice, namely from November 2003 until November 2005 and from November 2008 till November 2009. She was hard working and made significant contributions to the activities of LES Czech Republic.

Jarmila was a successful lawyer and respected trademark attorney. During her career, she built up one of the best patent and trademark offices in the Czech Republic. Jarmila was active in several professional organizations. She was also a president of the Czech group of the International League of Competition Law. ■

Jarmila Traplova—LES Czech Republic

T he passing of Bob Goldscheider (1929-2012) will not diminish

the memory of those who knew him. However, we are fortunate in having available videos taken by his son Eric not long before he passed away. For those who are interested in Bob’s contribution to LES and Licensing, Eric has provided links to these videos outlining Bob’s career, which you will find below.

Robert Goldscheider on the origins of the 25% Rule: www.youtube.com/watch?v=vNSUcX6G5dw&feature=player_embedded.

Robert Goldscheider (1929-2012) is widely credited with first articulating the “25 percent rule” as a principle to guide the resolution of li-censing disagreements. The Rule suggests that the licensee pay a royalty rate equivalent to 25 percent of its expected profits for the product that incorporates the IP at issue. Here, in a Febru-ary 2011 recording, he talks about the origins of how he developed that rule based on his experi-ences as a young lawyer working in Geneva, Swit-zerland. He was there from 1957 to 1962, at a time when many international companies were es-tablishing a presence in Switzerland for tax purposes.

Robert Goldscheider talks mid career years: www.youtube.com/watch?v=gZcrmC7wSH8&feature=player_embedded.

Robert Goldscheider talks about the evolution of his career in the period between when he returned from living in Switzerland in 1962 and when his pro-fessional activities started switching over to expert witnessing in 1974.

Robert Goldscheider talks about the twilight of his career: http://www.youtube.com/watch?list=UUn-PWO1lmPnPoOdz1j14nXQ&feature=playerdetailpage&v=uDhC7k8HGiY

This is the third in a series of three videos in which Robert Goldscheider talks about his career. The first covers his time in Geneva, Switzerland and the ori-gins of the 25 percent rule, with which he is associ-ated. The second covers his years at a firm in New York and his transition to working for himself. In this one, he talks about some of his ups and downs as an expert witness in his latter years.

The link to the entire playlist http://www.youtube.com/watch?v=vNSUcX6G5dw&list=PLk2QEmvatUC-b63REc7z2Wgv_4U5nGf3c. ■

By Eric Goldscheider

Robert Goldscheider—Insights Into The Man

In Memoriam:

Page 22: LESGN3

LES Global News—Meetings

DAVOS 2013Spirit of Licensing

LES pan europeanconference 23–25 june

Spirit of LicensingIt is with great pleasure and enthusiasm that LES Switzerland is going to host the LES Pan European Conference 2013 in Davos from 23 to 25 June 2013.

We have the honour to invite LES members and all interested in licensing, technology transfer and industrial property to come together, to exchange views and to experience the “Spirit of Licensing” – a special approach to licensing.

The program will consist of a lively mixture of lectures and workshops with international content and local flavour within a sparkling mountain atmosphere.

www.les-davos2013.org

LES Brazil invites you to join us this Spring in Rio de Janeiro for the 2013

Annual Meeting of LES International, April 7-10, 2013.

This event will be a unique chance to learn about business opportunities, network with local leaders, meet with peers from the Brazilian licensing com-munity, to hear about doing business in Brazil from the people who know and love this country. Plus, get the guided tour and experience firsthand the city that will host both the 2014 World Cup and 2016 Olympic Games.

Whether you are looking to further your knowledge about licensing prac-

tices, get a different perspective, or simply grow your network, we have something for you.

The meeting venue is the Atlânti-ca Windsor. It is a modern five-star hotel, including the latest in terms of technology, safety and comfort, with a fantastic panoramic sight of Copacabana and Leme beaches.

For registration and reservations, contact:Mrs. Claudia AntonaccioRegency Congressos & EventosPhone: + 55 21 25536628E-mail: [email protected]

For more information, visit: http://lesbrasil.org.br/WEBSITE/rio2013/

Ipanema Beach from Arpoador Rocks.

22 Licensing Executives Society International

Page 23: LESGN3

March 2013 23

MAY 14–16 SEATTLE, WA

West Coast: Hub of Innovation KEYNOTE SPEAKER

Ray Hatoyama, Vice Chairman, Sanrio CorporationHear from the leader in global licensing responsible for taking the company’s Hello Kitty brand worldwide.

Expertise from the World’s Most Innovative Companies

• The Gates Foundation, a group focusing on global health through medical and biotech research, discussing its sponsorship and investment in pure research

• National labs PNNL, LBNL, and LLNL, all with a focus on clean energy and critical materials, sharing their strategic areas of investment, IP challenges and opportunities

• Microsoft presenting lessons learned from patent acquisitions

• Software companies such as Adobe and others discussing what’s top of mind for them from an IP perspective

• 343i speaking about its licensing around the Halo franchise

• Rockwell Collins discussing lessons learned from successful JV formation with Chinese partners

Join Us for an Unforgettable Networking Reception at Chihuly Garden and Glass!Chihuly Garden and Glass is one of the most distinctive Seattle experiences. Visually stunning, this unique setting includes an eight gallery Exhibition Hall. Experience an artist’s world as you dine and network with your LES peers and delight in Seattle’s newest exhibition.

Register now at LESSpring.org!

Save $200 through

3/31

LES Global News—New Members

LES Benelux

Allen, John NautaDutilh

Bod, Joris Crucell

De Meutter, Jan CropDesign N.V.

Delputte, Inge Innogenetics

Gunst, Wilfried CNH Belgium N.V.

Hennin, Caroline CropDesign N.V.

Jaeken, Annemie Vereenigde

Kop, John Advanced Tower Systems

Mikus, Oldrich Stamicarbon B.V.

Ooijen, Joost vanDe Brauw Blackstone Westbroek

Roelands, Raf Apitope

Saelens, Claire CropDesign N.V.

Schuurman, Ruud Leiden University R&I Services

Weismann, Audrey The Law Factor

LES Scandinavia

Bach, Jan Bjerrum Jusmedico Advokatanpartsselsk

Fustinoni, Pirke Outotec Oyj

Moulin, Axel Leogriff AS

Ojala, Tiina Sanna Maria Picodeom Ltd Oy

Ormio, Julia Foster Wheeler Energia Oy Group

Steinkjer, Lars Erik Wikborg, Rein & Co.

Vaquer, Jeremie Nokia Corporation

Page 24: LESGN3

24 Licensing Executives Society International

LES Global News—LESI Delegates

®

DelegatesOfficersScandinavia Morten Balle Jonas Gulliksson Leif NielsonSingapore Yu Sarn Chiew Audrey YapSouth Africa Zelda Snyman Pieter VenterSpain & Portugal Jose Migual Lissen Antonio TaviraSwitzerland Regula Altmann Raymond Reuteler Martin SchneiderTurkey Omer Hiziroglu Murat IdalUSA & Canada Ned Barlas Allen Baum Pam Cox Ted Cross Mike Dansky Tom Filarski Ron Grudziecki Bob Gruetzmacher Shawn Jacka M Rashid Khan Gary Keller Michael Lasinski Russell Levine Keith Lutsch Simmone Misra Tanya Moore Dwight Olson John Paul Janet Pioli Paul Roberts Art Rose Tony Venturino Jeff Whittle

Andean Community Luis Guinard Esteban RiofrioArab Countries Mohammed Al-Ansari Nabil Salame Argentina Gustavo Giay Australia & New Zealand Albert Ferraloro Mark Horsburgh Philip Heuzenroeder Tim JonesAustria

Benelux Achim Krebs Jean Christophe Troussel Lex van WijkBrazil Cândida Ribeiro Caffé Juliana ViegasBritain & Ireland Hayley French Fiona Nicolson Jennifer Pierce Mark WilsonChile Felipe Claro Fernando GarciaChina Anita Leung Christopher Shaowei Feng YibinChinese Taipei Paul Hsu Richard Thurston Czech Republic Vojtech Chloupek Denisa SvecovaFrance Alfred Chaouat Andre-Pascal Chauvin Emmanuel Gougé Arnaud Michel

Germany Ingo Bruckner Heinz Goddar Peter Hess Gunter Isenbruck Jochen Schäfer Guido von Scheffer Hungary Michael Lantos Katalin SzamosiIndia Israel Dalit Sagiv Neil WilkofItaly Giovanni Grippiotti Luigi Saglietti Mario Traverso Japan Katsumi Harashima Ichiro Nakatomi Makoto Ogino Junko Sugimura Yorikatsu HohokabeKorea Wendy (Hyosun) Choi Jeong-Joong (JJ) KimMalaysia Mexico Abraham Alegria Philippines Leslie Anne Cruz Ferdinand NegrePoland Marek Lazewski Alicja RogozinskaRussia Margarita Divina Natalia Karpova

DelegatesOfficersPresident Kevin NachtrabPresident-Elect Yvonne ChuaPast-President Jim MalackowskiVice-President Patricia BunyeVice-President Hector Chagoya CortesVice-President Christian Osterreich Vice-President Ken McKaySecretary John WalkerTreasurer James SobierajCounsel François PainchaudCounsel Junichi Yamazaki

les Nouvelles Editorial Review BoardChair: Rodney DeBoos, Melbourne, AustraliaLex van Wijk, Amersfoort, NetherlandsHeinz Goddar, Munich, GermanyNorm Jacobs, Boca Raton, Florida, U.S.A.Sun-Ryung Kim, Seoul, KoreaMasato Kobayashi, Tokyo, JapanKenneth D. McKay, Toronto, CanadaThomas Bereuter, Vienna, Austria

Larry Plonsker, Editor 10580 Northgreen Dr., Wellington, FL 33449 Tel: +1-561-432-8814 E-mail: [email protected] J. Blackman, Design Interface Inc. Design & Production

Andean CommunityArab CountriesArgentinaAustralia & New ZealandAustriaBeneluxBrazilBritain & IrelandChileChina-Hong KongChinaChinese TaipeiCzech RepublicFranceGermanyHungaryIndiaIsraelItalyJapanKoreaMalaysiaMexicoPhilippinesPolandRussiaScandinaviaSingaporeSouth AfricaSpain & PortugalSwitzerlandTurkeyUSA & Canada

Estaban RIOFRIOTalal ABU-GHAZALEHGustavo P. GIAY Mark HORSBURGHAlexander CIZEKJean-Christophe TROUSSELRodolfo MARTINEZ Y PELLMark WILSONFelipe CLAROAlice NGANYu PINGPaul HSUMilos HARABAEmmanuel GOUGÉFrank L. ZACHARIASMichael LANTOSRaj HIRWANIHananel KVATINSKY Roberto DINI Katsumi HARASHIMAJeongjoong KIM Janet TOHHector CHAGOYAFerdinand NEGREAlicja ROGOZINSKASergey DOROFEEVKaisa FAHLLUNDAudrey YAPZelda SNYMANJose Luis de MIGUELMartin SCHNEIDEROmer HIZIROGLUTanya MOORE

Carolina VENEGAS GAVIRIA Nabil SALAMÉVeronica CANESEPhilip HUEZENROEDERSabine FEHRINGERAchim KREBSJosé DIASJohn ROEJuan Cristóbal GUMUCIORebecca LOYibin FENGDavid SUDenisa SVECOVAMarc BETHENODPeter K. HESSKatalin DERZSISunil KRISHNA Dalit SAGIVGian Antonio PANCOTSadaji SUGIYAMASangjin CHACHEAH Chiew Lan Carlos TRUJILLOMay CANIBA-LLORA

Per ERICSSONElissa LIMDarren MARGODon Jose Miguel LISSÉNRalph SCHLOSSERMurat IDALPaul ROBERTS

Society Officers Chapter President Secretary

les NouvellesVolume XLVIII Number 1

(ISSN 0270-174X)

les Nouvelles is published quarterly by the Licensing Executives Society International (LESI). LESI is an associa-tion of 32 National and Regional Societies, each composed of individual members who are engaged in the profession of licensing and other aspects of transferring or profiting from intellectual property. Subscription to the journal is included in the membership dues paid by all members. Subscription for the print publication is available to non-members for US$200/year. Please contact the Editor for further details.

The articles published in les Nouvelles reflect the views of the authors and not of the Society as an association or its officers. Material printed in the journal is covered by copyright. No parts of this publication may be reproduced, displayed or transmitted in any form, without prior per-mission from the Editor or Board of LESI.

A peer review and evaluation system is used to maintain the scholarly nature of the material published in this journal. All articles submitted for publication are reviewed and evaluated by members of the Editorial Review Board (ERB). The ERB members are chosen for their expertise in the fields of licensing and intellectual property. All evalu-ations are reviewed in a double-blind fashion to remove any bias in the results. The final decision on publication rests with the editor.

A guideline for authors can be found on our Web site at the following address: www.lesi.org/lesnouvelles/advertise.asp#submission

Copyright ©2013 Licensing Executives Society International.

DEADLINES FOR les Nouvelles: Copy for publication in les Nouvelles should be received by the Editor-in-Chief as far as possible in advance of the final deadlines, Janu-ary 1, April 1, July 1 and October 1. Articles for the white pages are reviewed by the LES Editorial Review Board, and they are published as soon as possible after acceptance. All materials are to be submitted electroni-cally in either MS Word or Text Only format.

Page 25: LESGN3

March 2013 25

LES Global News—LESI Delegates

Chairs & Co-ChairsAudit Peter Hess Awards Heinz Goddar Thierry Sueur Communications Ned Barlas Education Jeff Whittle Rob McInnes Endowment Dwight Olson Art Rose External Relations Patrick O’Reilley Sun Kim Investment Yorikatsu Hohokabe Jonas Gulliksson Wisam Hirzalla IP Maintenance Ron Grudziecki Legal François Painchaud Junichi Yamazaki Long-Range Planning Russell Levine Meetings Fiona Nicholson Membership Alan Lewis Arnaud Michel Nominations Jim Malackowski

Industry Chemicals, Energy, Environmental & Materials Rashid Kahn Achim Krebs Consumer Products Christopher Shaowei Andreas Winkler High Tech John PaulLife Sciences Pamela Cox

ProfessionalCopyright Licensing Michael Lechter Dispute Resolution Tom Filarski Industry/University Government Transactions Claire Driscoll Patent & Tech Licensing Pauline Khor Trademarks Martin SchneiderValuation Dwight Olson

RegionalAmericas Marcela Trigo de Souza Africa and Middle East Mohammed Al-Ansari Kevin Dam Asia Pacific Audrey Yap Junko SugimuraEuropean Bruno Vandermeulen

Ad Hoc CommitteesBusiness Forums Bill Elkington Global Technology Impact Forum Hector Chagoya Martin Schneider

Young Members Congress Tilman Mueller-StoyIP Strategy Subramaniam Vutha

Licensing And IntellectualProperty Organizations Meetings

For more information on LESI Meetings, go to www.lesi.org

2014May 16–18 LESI Management & Delegates’ Meeting (IMDM) Moscow, RussiaMay 18–21 LESI Annual Conference Moscow, RussiaOctober 5-8 LES (USA & Canada) Annual Meeting San Francisco, California USA2015April 9–11 LESI Management & Delegates’ Meeting (IMDM) Brussels, BelgiumApril 12–15 LESI Annual Conference Brussels, Belgium

2013March 14–16 LES ANZ Annual Conference, Resourcing the Future, Stamford Plaza Brisbane, QLD AustraliaApril 5–7 LESI Management & Delegates’ Meeting (IMDM) Rio de Janeiro, BrazilApril 8–12 LESI Annual Conference Windsor Atlantica Hotel Rio de Janeiro, BrazilApril 26 Around The World With LES Celebrate IP Day with local Society activitiesMay 13–16 LES (USA & Canada) Spring Meeting W Hotel Seattle, Washington

June 23–25 LES International Pan-European Conference Davos, Switzerland

September 22–25 LES (USA & Canada) Annual Meeting Philadelphia, Pennsylvania USA

LESI Management Committees

LESI Industry, Professional & Regional Committees

International Past-Presidents

1974 J. Gay1975 M. Finnegan1976 B. Hedberg1977 M. Okano1978 D. Smith1979 J. Gaudin1980 J. Stonier1981 S. Heijn1982 W. Poms1983 H. Hodding1984 F. Pombo1985 M. Ariga1986 L. Mackey

1987 P. Hug1988 D. Ryan1989 K. Payne1990 J. Portier1991 F. Noetinger1992 A. Mifune1993 L. Evans1994 O. Axster1995 N. Jacobs1996 J. Brown1997 S. Layton Jr.1998 R. DeBoos1999 P. Mandros

2000 H. Goddar2001 E. Shalloway2002 T. Sueur2003 M. Jager2004 J. Gulliksson2005 W. Manfroy2006 P. Chrocziel2007 R. Grudziecki2008 C. Fukuda2009 A. Liberman2010 P. O’Reilley2011 A. Lewis2012 J. Malackowski

Page 26: LESGN3

U.S. TrademarkPractice Seminar

April 8 - 12, 2013A one week seminar which addresses all aspectsof trademark practice before the United StatesPatent and Trademark Office (“USPTO”) and thecourts, including the preparation of trademarkapplications, practice before the Trademark Trialand Appeal Board, licensing, inter partes mattersincluding opposition and cancellationproceedings, and the enforcement of trademarkrights in the federal and state courts.

Summer PatentSeminar

June 5 - 28, 2013This three and a half week seminarcovers all major areas of U.S. patentlaw, beginning with an overview of theU.S. patent system and moving on tomore complex subjects such as patentprosecution, infringement litigation,and interference practice. Includespractical problems and discussion ofrecent cases where applicable.

Advanced Patent& Licensing Seminar

�September 23 - October 4, 2013A two week seminar focusing on advancedtopics in U.S. patent law which includesworkshops and problem solving in order toillustrate the more advanced concepts withregard to prosecution, claim interpretation, andvalidity and infringement issues. Participantslearn how to modify and determine the scopeof a granted U.S. patent, as well as how toaddress significant licensing issues.

© 2013 Birch, Stewart, Kolasch & Birch, LLP. All Rights Reserved.

Visit www.bskb.com for further seminar details.All seminars are held at BSKB’s offices in Metropolitan Washington DC.8110 Gatehouse Road, Suite 100 East • Falls Church, VA 22042 USAp: +1-703-205-8000 • f: +1-703-205-8050 • e: [email protected]

2 0 1 3 S E M I N A R S E R I E S

Page 27: LESGN3

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