IP Licensing Basics - Houston, TX

September 9, 2022 - Full Day Event

September 9 - 8:00 am - 5:00 pm CENTRAL

There is more emphasis now than ever before on commercialization, company formation, and job creation from the billions of dollars invested annually in research and development at America's universities, government laboratories, and small businesses. Whether you are an entrepreneur in the making, a principal investigator or student at any level who wants a better grasp of the basics, or an aspiring technology transfer professional, this course will give you the tools you need to understand and participate effectively in the process of protecting IP and facilitating its commercialization. Delivered over 2 days, this course consists of 4 modules:

• IP Basics
• IP Commercialization Basics
• Licensing Fees & Royalty Rates
• Managing Risk

Please note: This is an in-person course taking place in Houston, TX. We are unable to accommodate virtual attendance at this time. LES continues to follow federal, state and local guidance as we monitor the COVID-19 pandemic.

Instructors

Frank Amini, Ph.D., CLP

Frank Amini is an intellectual property attorney at Shackelford, Bowen, McKinley & Norton, a full-service business law firm. Frank has substantial experience in patent prosecution, intellectual property licensing, intellectual property transactions, and intellectual property litigation.

As a registered patent attorney, Frank has written and prosecuted numerous patent applications in various technological areas, including materials science, nanotechnology, biotechnology, the life sciences, and the chemical arts. As a Certified Licensing Professional, Frank has drafted and negotiated numerous intellectual property license agreements in connection with the acquisition of commercialization rights for numerous technologies, including medical diagnostics, medical devices, fluid purification processes, software, and databases.

Frank has also drafted and negotiated numerous agreements related to technology transactions, including master services agreements, consulting services agreements, non-disclosure agreements, facilities use agreements, and asset purchase agreements.

Additionally, Frank has substantial experience in numerous intellectual property-related transactions, including preparation of freedom to operate opinions; rendering opinions regarding patentability and patent infringement; evaluation of the intellectual property portfolios of various companies and institutions in connection with mergers, acquisitions, lending, and capital investments; and devising intellectual property protection strategies.

Frank holds a B.A. in Microbiology from the University of Texas at Austin, a Ph.D. in Biological Chemistry from the University of Texas Southwestern Medical Center, and a J.D. from Chicago-Kent College of Law.

Brent K. Bersin, CPA, CFF, CLP

For more than 25 years, Brent Bersin’s practice has focused on providing financial and economic consulting, damages quantification, valuation, and expert witness services to clients in the context of intellectual property and commercial disputes. He has significant intellectual property experience, which includes market assessments, valuation, licensing, and the calculation of reasonable royalties, lost profits, unjust enrichment and price erosion damages in matters involving unauthorized use of trade secrets, trademarks, trade dress, patents, and copyrights. Brent was also named to the Who’s Who Legal: Commercial Litigation Recommended Expert Witnesses for 2021.

He has also assisted attorneys, investors, management and other stakeholders in assessing the value of early- and latter-stage technologies, patents, and intellectual property portfolios for various purposes including taxable transfers, sales transactions, licensing, intercompany transfers and collateral for financing transactions.

Brent also possesses substantial experience providing economic analysis and expert testimony in complex commercial disputes, which have included issues of lost profits, breach of contract, valuation, breach of fiduciary duty, unfair competition, lost business value, tortious interference, fraud, non-competes/restrictive covenants, alter ego, post acquisition and purchase price disputes, “ability to pay” disputes, and business interruption.

Brent has been designated and testified as an expert witness in Federal Court, State Court, Bankruptcy Court, and arbitration matters. He has also presented and been published frequently on the topics of economic damages, and valuation, financial, and forensic accounting issues.

Luke Holbrook

Luke is currently a 3L at the University of Houston Law Center. During law school, Luke spent two summers at Knobbe, Martens, Olson & Bear, where he identified and executed technology strategies for client intellectual property portfolio management. Prior to law school, Luke prototyped embedded software for award-winning signal exploitation and geolocation and authored research in the application of artificial intelligence to the cybersecurity of the Internet of Things (patent pending). Luke also is a pupil in the Nancy F. Atlas Intellectual Property Inn of Court here in Houston, Texas. 

Louise Levien, Ph.D., CLP

Louise Levien has a PhD in Geochemistry and worked for 35+ years for ExxonMobil Upstream Research before retiring. She spent the first third of her career as a research scientist, the middle third as a supervisor and in various planning roles and the final third in the IP & licensing group.  In that role, she often acted as the liaison between scientists and attorneys, as well as between ExxonMobil and companies or Technology Transfer Offices.  During that time, she negotiated hundreds of agreements with IP terms, earned the CLP designation, and became the inventor of two patents.  Since retirement, she has done some consulting work, but mostly volunteered.  She is on the Board of Directors and an active instructor for LES, a venture mentor for MD Anderson and the Univ. of TX, a mentor for the Woman’s Launchpad at Brown University and a marketing volunteer for College Money Matters. 

Louise is married with two adult children, who live on opposite sides of the country, NY and Hawaii.  She has a two-year old puppy that keeps her active.

Shayne Phillips

Shayne Phillips has been working in the intellectual property (IP) arena for over twenty years, particularly in the areas of IP-related competitive intelligence and technical patent and nonpatent literature searching. Ms. Phillips began her career at Procter & Gamble (P&G) in Cincinnati, Ohio, working as a Technical Assistant in Corporate New Ventures (a group tasked with evaluating outside technology for the entirety of P&G). She then moved to the IP-practice group of Dinsmore & Shohl (also in Cincinnati), working as a Technical Consultant, providing both patent application prosecution support and IP litigation assistance. In 2000 Ms. Phillips moved to Columbus, Ohio, and began work at Chemical Abstracts Service (CAS) as an Editorial Analyst in the Mammalian Hormones Document Indexing Group of the Biochemistry Department of CAS’ Editorial Division. In 2002 she transitioned to the role of Applications Specialist at CAS, specializing in advanced STN training, focusing on protein and gene sequence searching in particular. Following her tenure at CAS, Ms. Phillips moved to Halliburton in Houston, Texas, working in their Intellectual Asset Management group as both the head of IP Competitive Intelligence and as a Senior Patent Liaison for the Cementing and Multichem Product Service Lines. Currently, Shayne is the Director of Analytics Solutions at Anaqua, and is also both the Founder of, and a Managing Member of, Six Points Consulting, LLC. Ms. Phillips holds a Bachelor of Science degree in Biology from Youngstown State University, a Master of Science degree in Biochemistry from the University of Cincinnati, and a Master of Business Administration degree from Capital University in Columbus, Ohio. She is also a registered US Patent Agent.

Kevin Tamm

Kevin Tamm is Senior Counsel – Intellectual Property at SI Group, Inc., a specialty additives chemical company with over $2 billion in annual revenue and 21 manufacturing facilities throughout the world. Kevin leads the IP group and has substantial experience in U.S. and foreign patent prosecution, intellectual property licensing, intellectual property transactions, and intellectual property litigation, including oppositions.

As a registered patent attorney, Kevin previously worked for Bracewell LLP in Houston as Senior Counsel and has written and prosecuted numerous patent applications in various technological areas, including organic chemistry, pharmaceuticals, upstream and downstream oil and gas, chemical processing, and control systems. Kevin has also drafted and negotiated numerous intellectual property license agreements in connection with the acquisition of commercialization rights for numerous technologies, including medical devices, chemical processing, and construction.

Additionally, Kevin has substantial experience in numerous intellectual property-related transactions, including preparation of freedom to operate opinions; rendering opinions regarding patentability and patent infringement; evaluation of the intellectual property portfolios of various companies and institutions in connection with mergers, acquisitions, lending, and capital investments; and devising intellectual property protection strategies.

Kevin holds a B.S. in Chemical Engineering from the University of Pittsburgh with minors in History and Chemistry, and a J.D. from the University of Cincinnati College of Law.

Dell C. "D.C." Toedt III

D. C. Toedt (the last name is pronounced "Tate"), a member of the Texas and California bars, is an attorney, arbitrator, and part-time law professor; he is a past chair of the Houston chapter of the Licensing Executives Society (USA and Canada). D.C. was formerly a partner and member of the management committee at Arnold, White & Durkee, at the time the second-largest IP litigation boutique in the U.S., with some 150lawyers in six cities. During the dot-com era, D.C. left AW&D to join a publicly-traded software company, BindView Corporation, as vice president and general counsel; as outside counsel, he had helped the founders to start the company. He served there until the company's successful "exit" when it was acquired by Symantec Corporation, the world leader in the company's field. Among other publications, D.C. was the lead author of the first edition of a one-volume treatise, The Law and Business of Computer Software. He is a graduate of the University of Texas at Austin in math (high honors) and law (law review); between college and law school he served his ROTC scholarship payback time as a U.S. Navy nuclear engineering officer in the Rickover program

James D. Woods, Ph.D., CLP

James D. Woods, Ph.D., CLP

James D. Woods, Ph.D. is a Principal with Economic Analytics Consulting, LLC. Dr. Woods combines his training as a financial economist with over 30 years of business experience to provide efficient, analytical solutions to address his clients’ and colleagues’ challenges and opportunities. Dr. Woods focuses his efforts on valuing patents, copyrights, trademarks and trade secrets, complex securities and derivatives and on evaluating the economic effects of decisions. Dr. Woods has helped his clients extract value from intellectual property through licensing and sale transactions and has testified at trial concerning his opinions of reasonable royalties and lost profits due to the misappropriation of intellectual property. He has also evaluated the economic impact of major sporting events, conventions and corporate relocation decisions.Dr. Woods began his career with the Federal Reserve Bank of St. Louis and has been a principal with national accounting firms. He has been an invited speaker on the value of intellectual property at several influential national and international programs and regularly provides continuing educational programs to lawyers and corporate executives.In addition to his work assisting clients, Dr. Woods serves as an adjunct professor of finance for the C. T. Bauer College of Business at the University of Houston where he teaches financial statement analysis to graduate students. Dr. Woods received a B.S.B.A. in Finance and Banking from the University of Missouri-Columbia, an M.B.A. from the University of Missouri-St. Louis, and a Ph.D. in Finance from Texas A&M University. He is a Certified Licensing Professional. 

Pricing

Member Rate - $299.00
Non-Member Rate - $399.00
Student Rate - $179.00

Group rates available for parties of 3 or more. Contact education@les.org for information. 

CANCELLATION and REFUND POLICY:

No refunds will be granted for this education session.

LES regrets that refunds will not be given for no-shows.

A transfer of your full registration to another individual is permitted prior to the conference by submitting written request to education@les.org. The individual submitting the transfer request is responsible for all financial obligations (any balance due) associated with that substitution. Funds from this program cannot be transferred to another education session without prior management approval.

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