Program

As the use of AI continues to proliferate across industries, licensing issues have emerged as a critical area of concern. Recent case law, such as “Authors Guild, Inc. v. Google, Inc.” and “Andersen v. Stability AI et al.,” has brought to light the complex interplay between AI technologies and intellectual property rights. These landmark cases serve as touchstones for our discussion, highlighting the legal and ethical implications of licensing content in AI applications.

Our panelists, experts in AI, intellectual property law, and technology licensing, will explore the evolving landscape of AI licensing challenges. From copyright infringement to data ownership and privacy concerns, we will examine the multifaceted issues facing stakeholders in the AI ecosystem. Join us as we delve into the implications of recent case law and discuss strategies for navigating the complexities of licensing content in AI-based applications.

Collaborative research, whether in the academic context or the industry context, requires dividing up rights to newly developed patents, know-how and data between parties who have each contributed technology, expertise, services, and/or funding.  The challenges and risks of entering into collaborative research increase when the project involves combining proprietary technology of two or more parties.  Learn best practices for allocating ownership of new IP in research agreements, and how the right IP structure can enable collaborative advancement of life sciences therapies.

In this workshop we will present a Top 10 list of considerations to consider when determining IP ownership in a range of life sciences agreements.  During the presentation, we will discuss the ownership structures that best address these key considerations, and the pros and cons of each ownership structure.  We will cover, among other things, complex collaborations, codevelopment, sponsored research, services, manufacturing, material transfer, and evaluation agreements.

Attendees will learn about government rights and requirements embedded in the Bayh-Dole Act, with a focus on the U.S. manufacturing requirement and its implications for complex technologies based on or embodying government funded or owned inventions.  We will explore how to determine if the manufacturing requirement affects a licensee’s decisions on where and how to manufacture products for the U.S. and global markets.  We will also explore the legal grounds and process for seeking a waiver of the U.S. manufacturing requirement, as well as what to expect in a notice of waiver grant.  Lastly, we will address potential grounds for appeal of the denial of a waiver.  Throughout, we will focus on key practice tips and communications with a range of corporate functions.

If your company or organization ever faces patent litigation, this panel discussion is for you.  Most patent suits are settled before they ever get to trial, often by licensing the patents.  But in the adversarial arena of litigation, the parties tend to be especially wary of each other and will want to be particularly careful of what they agree to.  This panel will address the settlement process, license negotiations in the context of litigation, and issues of heightened importance to litigants seeking to resolve their dispute through a license.

Innovation is essential for any successful organization to grow and compete internationally. Without it, businesses risk stagnation, becoming non-competitive, or even failure. Nevertheless, many companies struggle to foster a culture of innovation that can drive growth and lead to new avenues of IP monetization.

This panel will explore the policies and tips companies can use to increase internal IP awareness and generate more invention disclosures, leading to the creation of empowered and productive teams that continuously contribute to their company’s success. Included in the discussion will be inclusive innovation practices and how diversity within your team can increase commercialization. The panel will also discuss the tech transfer perspective and how to foster this innovation culture when collaborating with others.

This panel will discuss various viewpoints on AI and the availability of intellectual property to protect inventions and works created in whole or in part by AI. It will examine whether the U.S. patent and copyright offices have provided appropriate guidance regarding inventorship and authorship. The discussion will consider whether the use of AI to create works of art or inventions is fundamentally different from using other machines for the same purpose and if the copyright office should factor in the creativity of the inputs when determining protectability. Additionally, the panel will explore the evolving legal landscape applicable to AI and the use of GenAI in products companies develop for use internally or in customer-facing applications.  Finally, the panel will cut through the “noise” about AI, dispel common myths, and provide guidance on what to consider in evaluating a GenAI use case and the variables involved.

An increasingly large number of life sciences companies are being spun out of research institutions. This exploding interest in life sciences spinouts has changed the dynamics of these companies, who are no longer necessarily borne out of the same traditional standard template university and hospital license agreements which have been used over the last few decades. Early interest from sophisticated investors and advisors has caused spinout deal dynamics, economics, and license agreement terms to change, and these differences will reverberate from the initial formation of the spinout to a (hopeful) successful exit through a partnership or acquisition transaction.

Our workshop will explore the ins and outs of life sciences spinouts and some of the changes to the spinout ecosystem that have occurred over the last few years. Each of our panellists have experience working in the technology transfer offices of preeminent research institutions and are currently in executive leadership roles at a biotechnology company, a pharmaceutical company, and a leading medical research institution respectively, and will be able to offer different perspectives to the workshop discussion. The panel will be moderated by an attorney who has experience counselling on all aspects of the spinout life cycle, from company formation to exit, and has represented both research institutions and spinout companies on these transactions.

Specifically, the panel will address questions and topics such as:

• What are the key issues to consider and potential pitfalls to avoid when forming, structuring, and scaling a life sciences spinout company?
• What are the key terms of the initial foundational in-license for a life sciences spinout company?
• What issues will continue to be relevant during the life cycle of a life sciences spinout, from its initial in-license and formation, through its growth through successive rounds of financing, and its eventual exit?
• What are key items that prospective pharmaceutical partners (and other investors) look at when investing or partnering with a life sciences spinout company?

This panel is for anyone who is interested in learning about spinout companies, key issues facing the life sciences industry, and addressing challenging licensing and partnering agreement issues.

It has been said that litigation is the least cost effective method of price discovery for a patent license, so why do so many prospective patent licenses end up in litigation?

This panel will briefly discuss the history of licensing and litigation and launch into a candid discussion about how to build and run a successful licensing program and what components are required.

Specific discussion topics:

• Does technology area or size of patent portfolio make a difference
• Single target versus larger program
• Global licenses, global enforcement
• Injunctions as a tool to level the playing field and avoid efficient infringement
• Establishing a discounted expected value for early license traction
• Attributes of a successful licensing program
• The strategic use of litigation for some of the licensing prospects
• The emergence of Best Practices and Standards in licensing

The narrative of patent trolls has impacted the business of patent licensing like no other. Over the last decade, almost all licensing of patents by any entity other than a product manufacturing company has been labeled as a “patent troll”. This narrative has hurt universities, individual inventors, and SMEs hugely. Even the business of litigation finance which has in many ways leveled the playing field for smaller players in patent licensing, has been scrutinized. This panel will cover some of the history of how licensing by any non-practicing entity (NPE) has been seen negatively.

Recent changes in patent law have also substantially impacted the patent licensing business and put US in a precarious position of losing out in the global competitiveness of innovation. How does one go forward with ethical patent licensing without being impacted by public backlash and censure? The experts on the panel will give their perspectives on balancing the business objectives of patent licensing and maintaining a public image.

Artificial Intelligence (AI) is becoming increasingly pervasive in all aspects of life, and it’s important to understand both the opportunities and risks associated with this technology. The panel will discuss a range of topics related to AI, including a high-level overview of AI systems and how they work, IP rights and licensing of inputs and outputs and policy issues in relation to AI. Panelists will also present on what it means to use AI responsibly, risks associated with using AI (including bias) and best practices in managing these risks. Further, implications for licensing of AI technologies will be considered, including what can be done to manage risks associated with using and licensing output of AI systems, and how to negotiate and manage transactions in which AI will be provided as a service. (This program description was prepared with the assistance of ChatGPT.)

Join us for an insightful workshop where we delve into the crucial intersection of licensing, technology transfer, and global health equity, especially in light of the lessons learned from the COVID-19 pandemic. In this session, experts from diverse sectors will share their experiences and perspectives on leveraging licensing and funding agreements to facilitate equitable access to medical technologies in low- and middle-income countries without compromising deal flow.

Through engaging presentations and interactive discussions, attendees will explore:

Innovative Strategies: Learn how voluntary licensing and tech transfer initiatives implemented by global health NGOs are breaking barriers and improving access to essential medical technologies.

University Perspectives: Gain insights into how universities and research institutions are translating scientific breakthroughs into commercially viable products while addressing global health disparities and needs in low- and middle-income countries.

Governmental Perspectives: Understand the role of federal research institutes in facilitating technology transfer and maximizing social impact through licensing agreements.

Funding Mechanisms: Discover funding opportunities and collaborative approaches supported by global health funders to promote equitable access to medical innovations.

Throughout the session, participants will have the opportunity to identify key challenges and best practices in licensing for global health impact, to exchange ideas and experiences with peers and experts from various sectors, and to gain practical guidance on leveraging licensing, funding opportunities, and strategic partnerships to maximize reach and impact in the post-pandemic landscape.

Whether you’re a licensing executive, researcher, policymaker, or global health advocate, this workshop offers valuable insights and actionable strategies to contribute to the advancement of equitable access to life-saving medical technologies worldwide, in a world reshaped by the COVID-19 crisis. Don’t miss this opportunity to be part of the conversation driving positive change in global health innovation and access.

Following Mr Justice Birss’s seminal decision in Unwired Planet v Huawei – in which it was held that the English courts can determine FRAND terms for global SEP portfolio licences and grant “FRAND injunctions” if the implementer does not enter into the global licence – a number of SEP owners included English litigation as part of their SEP enforcement strategy.   However, following the FRAND determinations in InterDigital v Lenovo and Optis v Apple, the tides appear to be turning, with implementers now choosing to commence actions before the English courts asking for FRAND determinations in order to try to challenge rates being offered by SEP owners.  This panel will explore the reasons for this shift, the latest on the jurisdiction of the English courts for such actions, the practical reality of FRAND determinations before the English courts and how English FRAND determinations can form part of a SEP litigation strategy for both SEP owners and implementers.

Too often, the link between the product and brand is not thought through carefully enough. For these reasons, business leaders may be reticent to employ licensing for fear that their assets might get damaged, or their value eroded by third party licensees which may not know how to treat them or lack the inherent desire to do so.

The panel will introduce and describe the challenges brand owners face in making the decision to license their brands and what they can do to not only mitigate such risk, but also to position themselves to guide and influence licensees in strengthening their brands and growing their overall business.

Topics to be discussed:

• The demand for growth.
• Brand licensing as a strategic tool for growth.
• Best practices to mitigate risk.
• Case studies on enduring brand licensing relationships.

As corporations become an increasingly important part of the venture ecosystem, new methodologies must be employed to evaluate investments and underlying IP properly. Join this panel of CVC, venture capital, and IP investment community experts to learn the latest techniques and trends in this burgeoning space.

Learn how AI and Big Data is reshaping how we identify high-intent licensing partners and development partners beyond traditional patent landscaping and manage intellectual property (IP) royalty compliance. Our featured industry experts include ScaleIP, Iprova, and Conner Consulting. This event is perfect for professionals in the technology transfer and IP licensing field, as well as inventors, entrepreneurs, and business leaders seeking innovative solutions that generate profits, uncover commercial partners, and automate compliance using intelligence.

The European Unitary Patent system (UP) and Unified Patent Court (UPC) came online last year after many years in the making and a number of false starts and has now had its first birthday.  In this session, we will discuss the adoption of the UPC vs national court and the UP in Europe and the US 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.

Europe is a significant market for entities from all parts of the world. However, this market is often addressed by agreements that are written with non-EU law in mind, for example, United States, Japanese or Korean law. It is important to keep in mind that European law, including recent court decisions, also can be relevant to agreements between two non-EU parties when there is an effect on the European market or there is some other European component such as an IP right. This applies in particular to IP law (including the new Unitary Patent system, the Unified Patent Court and European Patent Office decisions), as well as, for example, antitrust and data protection law.

This session will provide updates and practical considerations on these and other areas of European law that affect decision-making with respect to European patent prosecution, litigation and licensing.  More particularly, the session will focus on both pitfalls and opportunities associated with European law, especially given the major recent changes in the European legal landscape.

Brand names reflect aggregate experiences of specific products and allow for efficient exchanges of information within marketplaces by conveying specific data associated with value, trust and quality.  These and other data are used to determine the overall value of a brand.  In news, advertising, social media, commentary platforms, etc. the concept of brand value can become contaminated by reputational effects, misperception of messages or very generally, misunderstanding of what brands represent.

All too often components of brand value are influenced by perceived associations which exist independently within markets.  This results in inefficient determinations of brand values.  Consequently, individuals looking to transact on a brand must be able to understand and separate reputational versus brand values.  Brand owners looking to benefit from such associations must understand how quickly such associations can impact a brand by conveying unintended or misunderstood messages.

Cellular Internet of Things (CIoTs) standardization, such as LTE-M and NB-IoTs have been implemented in networks around the globe enabling the connection of vast numbers of devices and machines.  Newer standards, such as reduced capability (Red Cap) next radio (NR) in 3GPP Release 17 promise to enable connectivity of a greater number of devices and machines: enabling more use cases for CIoTs.  Licensing of these CIoTs SEPs within the Global FRAND framework may present new challenges.  To that end, this session explores these challenges by reviewing recent global disputes in various jurisdictions including Brazil, China, Colombia, India, the UK, and US as well as the queue building up in the docket of the new Unified Patent Court.  What are the lessons learnt from the smartphone wars and what drives those litigations?   What new approaches can we use to reduce transaction costs when it comes to FRAND licensing for the world of IoT, and at the same time ensure a fair level of royalty rates?

Join a panel of current and former in-house counsel as they discuss lessons learned from years of experience negotiating and enforcing IP license agreements. Our panelists will share best practices gleaned from their experiences negotiating IP license agreements in a variety of sectors, including telecom, electronics, and oil and gas.  Panelists will also touch on recent legal developments, including In re Cellect, and offer practical advice for improving best practices in view of these developments.

The dawn of space exploration presents unprecedented challenges and opportunities for the domain of Intellectual Property (IP), necessitating a critical examination of how IP rights can be adapted, protected, and enforced beyond Earth’s atmosphere. This paper aims to explore the multifaceted relationship between IP and the burgeoning space industry, underlining the need for innovative legal frameworks, economic strategies, and ethical considerations in this final frontier.

Initially, the paper will delve into the mechanisms for establishing and protecting IP rights in space activities, confronting unique challenges inherent to outer space. It will discuss the potential for international cooperation and the creation of comprehensive frameworks that address jurisdictional and enforcement ambiguities, ensuring that IP rights are respected across borders and voids alike.

Subsequently, the paper will analyze the economic aspects of space IP, highlighting its critical role in the growing space economy. It will examine the valuation methods for space-related IP, current investment trends, and how robust IP regimes can incentivize innovation and investment in space technologies, contributing significantly to the economic viability and growth of space ventures.

The discourse will then extend to the global governance of space IP. It will scrutinize the existing international treaties and agreements, assessing their adequacy in the space age, and propose the role of international organizations like WIPO in forging a globally harmonized space IP law. The paper will explore the challenges and opportunities presented by the need for an inclusive and comprehensive legal framework that aligns with the interests of various stakeholders.

Lastly, the paper addresses the ethical considerations in space IP. It will ponder the moral implications of extending IP rights into space, including the debates surrounding “ownership” of space and its resources, the privatization of celestial bodies, and the equitable and ethical use of IP in an environment that is considered the common heritage of humankind.

This research aims to provide a foundational understanding of space IP’s current landscape and future directions, advocating for a balanced approach that promotes innovation, economic growth, and ethical stewardship in the next era of human and robotic space exploration.

A round table discussion of experts in IP licensing, public policy, trademark enforcement, and strategy, offering diverse perspectives on navigating this complex landscape. Join us as we delve into the intricacies of IP licensing in China, examining legal frameworks, market dynamics, and strategic imperatives. Let’s engage in a dialogue aimed at fostering a deeper understanding of the opportunities and challenges inherent in licensing intellectual property in the People’s Republic of China.

This session is focused on opportunities for new patenting, providing strategies for IP leaders to protect the IP assets that will define the future of their industries. An AI patent strategy can also help IP leaders who find themselves lacking a defined AI business strategy. IP managers need a plan, which should involve identifying patents to develop or acquire, patents to maintain or use to protect core businesses, and patents to monetize through sales or licensing. This session will explore the patent topic and the best practices around trade secret protection.

Your patent program should improve the sales performance of your enterprise. Though persuasion is an important part of sales and marketing, providing salespeople with exclusive solutions genuinely worthy of people’s money helps a lot. Owning a patent makes sense when there is a reasonable probability it will either protect products sold by your enterprise or improve some aspect of selling other products, such as enhancing logistics or customer service.

Each patent in your patent portfolio is the work of a patent drafter, usually a registered patent practitioner. The patent drafter may successfully draft and prosecute a patent application with a singular focus on the one claimed invention—navigating challenges around patent eligibility, novelty, non-obviousness, and enablement—all without that practitioner knowing a thing about sales. But somebody associated with the invention should be mindful of sales and the entire sales process.

The desire for an enterprise to sell solutions should speak to the motivations of inventors and what a person skilled in the art and a person of ordinary skill in the art would know about solutions at the time a patent application was filed. Patent drafters can write words supportive of motivations into a specification, all of which may determine whether the patent application can be successfully prosecuted at the patent office.

Your first step toward aligning your patent program with sales is to understand how technology in your industry is likely to evolve. There are many paths, but most flow toward providing more benefits and fewer drawbacks for end users. To your customers, some of these benefits may be direct, such as a machine that uses less energy than its predecessors. To your customers, some of these benefits may be indirect, such as an inventory logistics system that reduces the cost of carrying inventory and, therefore, the price your enterprise can charge for the machine. Every invention slated for patent protection should have a story about how it will improve sales. From there, you can determine how best to claim the invention, so the motivations behind the invention are clear, and the resulting patent protects a sales advantage.

Robust interest in the advancement and development of individual artificial intelligence technologies means that entities are making large investments. And a question that should accompany those investment decisions is how are they protected? Federal, state, and common law offer a variety of legal frameworks (patent, copyright, trade secret, contract, etc.) but these frameworks purposefully protect different intellectual property rights, and thus the protection of AI investments requires a wholistic approach that applies the legal framework to various aspects of the AI framework.

This session will explore: (1) the potential scope of patent protection and the potential path in this challenging patenting environment to protect AI innovation with patents; (2) applicability and relationship of patent to copyright protection, the relative cost and investment for obtaining and maintaining federal protection and the relative limitations of each; (3) the rising importance of trade secret protection, what does employing reasonable measures mean in practice, and are there best practices for employee management to improve protection strategies; and (4) does a contract help and how should it be used in view of other protection strategies, and are there other contracting language useful for protecting AI assets. Concluding, we explore the role of the employee in the protection plan.

In December 2022, the Government Accountability Office issued a report finding that PTAB management practices were impacting the judicial independence of its APJs.  The report recommended a number of steps that the PTAB should take to improve transparency regarding its oversight of judicial decisions.  This session will explore the following:

• Issues regarding oversight and judicial independence identified by the report, including the recommendations made by the GAO
• Changes made by the PTO in response to the recommendations and how the changes have impacted PTAB practice and affected stakeholders
• Director Review at the PTAB
• The decision of the Merit Systems Protection Board (“MSPB”) finding that PTAB APJ Michael Fitzpatrick was retaliated against for making whistleblower disclosures regarding issues affecting judicial independence at the PTAB, and how the decision relates to the issues identified in the GAO report
• Stakeholder concerns about the perceived panel-dependence of decisions at the PTAB