The LES 2024 Annual Meeting was held in person in New Orleans. The program offered something for everyone, including sessions on utilizing the International Trade Commission to enforce your IP rights – exclusion orders etc., branding, IP ownership in Life Sciences, Life Sciences spinouts, the use of data in complex SEP licensing, the U.S. manufacturing requirement of the Bayh-Dole act, using Big Data to improve R&D, negotiations, top licensing mistakes, content specifically focused on Emerging Leaders, career advice for those starting in their licensing career, to more advanced topics at the frontier of AI, partnerships across industries, trends in brand valuation, litigation finance, and recent legal and legislative updates from the U.S. and Europe.
2024-2025 LES Board of Directors
LES Submission re Translation of IP to Market
LES has responded to the USPTO Request for Comment: “Unlocking the Full Potential of Intellectual Property by Translating More Innovation to the Marketplace.” As the premiere association for licensing professionals, LES is especially well suited to address this topic. LES urged the USPTO to continue its tradition of supporting strong, reliable, and predictable IP rights. Recognizing inventors’ exclusive rights in their respective inventions is essential to fulfilling our Constitution’s mandate to “promote the progress of the useful arts.” The USPTO should work within the Administration and with Congress to promote common sense reforms to restore IP rights that have been eroded by certain judicial decisions, and by recent legislative initiatives. The USPTO should also look for opportunities to leverage public-private partnerships in the development of IP in the mode of the Bayh Dole Act. It should oppose proposals that would weaken inventors’ rights as by enlarging the statutory basis for exercising the Bayh Dole march-in power or waiving IP rights under the TRIPS agreement. Shoring up our patent system would make IP a more reliable asset, promoting investment and the dedication of talent to the innovation enterprise. Lives would be improved, and our economy and national security would be enhanced.
Federal Laboratory Consortium Enters into Partnership with The Licensing Executive Society (LES) USA and Canada
The
Licensing Executives Society (USA and Canada), Inc. (LES) and the
Federal Laboratory Consortium for Technology Transfer (FLC) have entered
a strategic partnership to use their respective awards programs to
promote technology transfer success. The partnership creates a pipeline
for eligible FLC Awards submission to also be considered for LES Deals
of Distinction Awards. This collaboration is expected to promote the
significance of and expand the publicity for government laboratory
innovation, as well as to ensure that LES Awards’ committees have access
to the FLC deals for award consideration. “This partnership will help
amplify the value of federal technology transfer focused on the IP and
licensing sector. LES is pleased to partner with FLC to promote
research and development which advances innovations in technology and
creates business opportunities to commercialize inventions,” said Ann
Cannoni, President and Chair of LES.
LES Submission Regarding WIPO Treaty on Disclosure of Genetic Resources and Traditional Knowledge in Patent Applications
LES USA & Canada has urged the CIPO to oppose a recommendation from WIPO’s Intergovernmental Committee that would require inventors to disclose the use of genetic resources or traditional knowledge in an invention. This places an added burden on inventors, and puts the associated IP rights at greater risk. The result will diminish innovation and investment where it is likely to do the most good in fostering new discoveries and enhancing economic development. LES supports legal regimes that encourage innovation and discovery, and that promotes the development of inventions from concepts to useful commercial products for our collective well-being. Imposing added burdens on inventors and investors will frustrate those objectives, and diminish innovation.
LES Comment in Response to NIST Guidance Framework for March-In
On February 5, 2024, LES USA & Canada submitted comments in response to a NIST RFI on a proposed Guidance Framework for exercising the Bayh Dole march-in authority on the basis of price. LES urges NIST to withdraw the Framework from further consideration immediately. Bayh Dole has been transformative in stimulating innovation in all sectors of our economy. It has enhanced national security, and produced innumerable new enterprises, new jobs, and new products for the common good. Since Bayh Dole’s enactment 43 years ago, no administration, Democrat or Republican, has invoked the march-in authority on any basis, including price. To do so now, without any sanction from Congress, would be contrary to the letter and the spirit of the law, and would undermine the virtuous cycle of public-private partnerships that develops basic research into useful products.
LES Response to PTO RFI re Genetic Resources and Traditional Knowledge
LES USA & Canada has urged the USPTO to oppose a recommendation from WIPO’s Intergovernmental Committee that would require inventors to disclose the use of genetic resources or traditional knowledge in an invention. This places an added burden on inventors, and puts the associated IP rights at greater risk. The result will diminish innovation and investment where it is likely to do the most good in fostering new discoveries and enhancing economic development. LES supports legal regimes that encourage innovation and discovery, and that promotes the development of inventions from concepts to useful commercial products for our collective well-being. Imposing added burdens on inventors and investors will frustrate those objectives, and diminish innovation.
On May 1, 2023, LES USA & Canada submitted comments to the USITC in its investigation of an expansion of the TRIPS waiver for COVID-19-related technologies. LES urged that such a waiver will not increase access to COVID-19-related diagnostics and therapeutics, and so should not be supported by the U.S. government. Nor should such a waiver be approved by the World Trade Organization (WTO).
Last year, WTO approved a waiver of IP rights for COVID-19 vaccines, permitting member countries to waive IP rights to such vaccines. The waiver now under consideration would permit countries to waive IP rights to COVID-19-related technologies beyond vaccines, to include therapies and diagnostics. The USITC has been tasked with investigating whether the U.S. should support such an expanded waiver. LES urged that it should not. There has been no evidence that a waiver of IP rights would increase access to, or availability of, COVID-19-related vaccines, diagnostics, or therapeutics. Indeed, we have witnessed the opposite. A strong and reliable international regime of IP protection has enabled various organizations to collaborate across borders to share knowledge and rapidly produce vaccines, diagnostics, and therapies in record time. Such collaboration would not have been possible without a reliable system of property rights. The premise that IP rights are somehow an obstacle to innovation, collaboration, production, and distribution is unfounded. Thus, the U.S. should not support such an initiative, but should instead urge the international community to respect intellectual property rights, and to abide by the carefully negotiated TRIPS Agreement according to its terms.
LES submitted comments to the FTC cautioning against adoption of its proposed ban on non-compete clauses. LES expressed the view that the FTC's proposed blanket ban on all non-compete clauses is unduly broad, and fails to take into account the many valid and meritorious uses of non-compete clauses. In particular, LES explained that such a ban would deprive innovators of effective tools for protecting the fruits of their innovation, and that alternatives (e.g., NDAs) are not sufficient to protect valuable IP. In the absence of non-compete clauses, judiciously deployed, unfair competition will increase, and misappropriation will be more readily shrouded in secrecy within the recesses of competing research facilities. LES urged that the FTC defer action on this initiative in favor of greater input and involvement from innovators for whom effective IP protection is critical to survival.
LES Response to RFC on USPTO Initiatives on Robustness and Reliability of Patent Rights
On January 31, 2023, LES submitted comments in Response to a Request for Comment from the USPTO to Ensure the Robustness and Reliability of Patent Rights as published in the Federal Register . The RFC addresses a variety of topics, including prior art searching, support for claimed subject matter, request for continued examination (RCE) practice, and restriction practice, and requested comments on questions posed in a June 8, 2022 letter from six U.S. Senators to the Undersecretary of Commerce for Intellectual Property and Director of the USPTO, Kathi Vidal.
8/3/2023An employment agreement may compel nonsignatories to arbitrate disputes that arise
7/27/2023Confidentiality agreements may be enforced against employees based on continued employment even if
7/20/2023An implied copyright license requires a “meeting of the minds” on how the copyright is to be used –
4/21/2023Court enforces irrevocable jury trial waiver on all claims related to mutual non-disclosure
