Todd was Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, the first person to hold that title.  He succeeded Commissioner Lehman in 1998. He helped get the American Inventor's Protection Act through Congress in 1999, and supervised the USPTO's move from Crystal City to new headquarters in Alexandria, VA.  He elevated the role of USPTO Commissioner, now Director, at a pivotal time of increased reliance on the internet and information technology.  Under Todd's leadership, the USPTO became increasingly influential in policy, legislation, and precedent. 

Todd earned a degree in chemistry from Allegheny College, and a J.D. from the University of Pittsburgh School of Law.  During his 35-year career, Todd had senior leadership responsibilities for IP at several Fortune 50 companies.

After leaving the USPTO, Todd co-chaired Howrey's IP section, and then served as Executive Director of the American Intellectual Property Law Association (AIPLA), where he played a key role in the drafting and passage of the America Invents Act and associated PTO rules.  Later he joined Novak Druce, and finally Polsinelli.

Todd also served on the Board of Directors of the LES Foundation, and in various volunteer leadership roles in other IP organizations.

His commitment to the profession and his stalwart advocacy for the advancement and protection of patent law and intellectual property will be sorely missed. 

LES Leading Edge Series Speaker Interviews
Q&A with Ron Laurie, Executive Chairman, InventionShare, and member of LES Intangible Assets in the Boardroom Standards Committee

LES: You will be moderating the panel titled "Intangible Assets in the Boardroom," In a few short sentences, what can attendees expect to learn?

Laurie: Corporate directors are legally responsible for protecting, and optimally for maximizing, shareholder value, which increasingly involves appropriate oversight of a company's intangible assets, including its intellectual property. However, except in rare cases (e.g., patent licensing firms), a significant language barrier exists between a company's in-house and external IP advisors on the one hand, and its board, and the shareholders they represent, on the other. This communication gap is created by the fact that intellectual property professionals typically don't know how to express the value of a company's IP holdings in terms that are  meaningful to investors and financial analysts, who are laser-focused on financial performance metrics such as EBIDTA (Earnings Before Interest, Depreciation Taxes, and Amortization), Free Cash Flow, Earnings per Share, etc.

This language disconnect has become increasingly troubling as intangible assets represent a larger and larger percentage of overall corporate value in the digital economy. Many of today's disruptive business models no longer depend on tangible assets, e.g., Uber doesn't own automobiles and Airbnb doesn't own hotel rooms or apartments.  And even in the case of product companies as opposed to service providers, a 2017, WIPO (World Intellectual Property Organization) report concluded that intangible assets add twice as much value to products as tangible capital, across 19 identified global value chains.

Panel

• Intangible Assets in the Boardroom

Moderator

• Ron Laurie, Executive Chairman, InventionShare

Panelists

• Edgar Baum, Founder and CEO, Avasta Incorporated
• Phil Hartstein, President and CEO, Finjan Holdings Inc.
• Paul Roberts, Vice President of Commercialization, GE Ventures

LES: Technologists and IP professionals face many challenges and opportunities today. What one challenge do you hear about the most? What one opportunity?

Laurie. For me, as a director in a public company, the biggest challenge is overcoming, or at least reducing, the communication gap between IP professionals and investors, which results from the fact that traditional accounting systems (like GAAP and IFRS) are not set up to reflect the true value of intangibles. I believe that the IP professionals should be responsible for closing this communication gap by learning how to express IP value in terms that are more meaningful to the financial community, and to investors in particular, but this is by no means an easy task.

The LES IA in the Boardoom standard is an important first step in that direction.

Click here to register and learn more about the LES Leading Edge Series May 14th event at the Silicon Valley USPTO.

LES Leading Edge Series Speaker Interviews
Q&A with David J. Kappos, Partner, Cravath, Swaine & Moore; Former Under Secretary of Commerce for Intellectual Property and Former Director of the USPTO

LES: You will be delivering the keynote titled "Behavioral Issues in Licensing of SEPs and other IP — Defining Acceptable and Best Practices through Voluntary Standards." In a few short sentences, what can attendees expect to learn?

Kappos: This presentation is going to try to do something that I haven't seen done before. I will explore the behavioral issues involved in negotiating IP licenses, including licenses for standard-essential patents (SEPs). Issues include hold-out by licensees, hold-up by licensors, global royalties, provision of infringement proof-packages and timeliness of responses, among others. The idea is to synthesize practices that we are aware of that could be characterized as acceptable practices or, in some cases, even best practices, that licensors and licensees of SEPs can employ to reach an agreement. These best practices could be the beginning of a framework that can guide participants on all sides of IP licensing transactions. It's something I believe is sorely needed.

LES: Can you provide some examples of such acceptable or best practices, for both the licensor and licensee?

Kappos: Of course. An acceptable practice or a best practice as a licensor would be a requirement for the licensor to identify, early in the negotiations, the standard that's implicated, its patents that are involved, and what about the licensee's activity has informed the patent holder that the licensee is implementing the standard and even the patent. Another best practice for the licensor might be to include in its licensing approach a document that explains how one or more of its patent claims reads on the standard that it believes the prospective licensee is implementing.

A requirement placed on the licensee would be that once it has received that information, the licensee would be required to respond with any counterarguments that it has, such as that it is not implementing the standard or not implementing a particular part of the standard. Or, the licensee could respond that the patent is invalid and provide the basis for that assertion. If the basis is that the invention is not novel or that it is anticipated or obvious given the prior art, then the prior art should be identified, along with how the prior art invalidates the claims and which claims those are. The licensee could also believe that none of these apply. The response by the licensee should be provided within a reasonable period of time, generally three months or less.
 
LES: What are the advantages of defining these acceptable or best practices in advance? And the opposite question: what happens if you don't?

Kappos: I'll start with the second question. If you don't define acceptable practices in advance, you get the world as we know it, which is a world in which agreement can't be reached, resulting in excessive litigation and disputes that wind-up having to get resolved by many courts worldwide. We're living in a pretty unpleasant place in this regard.

But if we make significant improvements, we will get standards set more quickly; we will get products in the marketplace more efficiently; and we will get innovators who are paid for their innovations and can go on to create further innovation. So there are upsides for the implementers, upsides for the innovators and upsides especially for consumers.

LES: What are some of the main challenges or opportunities related to this topic?

Kappos: Within the scope of this topic, the biggest opportunity going on right now is the opportunity to avoid the patent wars that we've experienced, which have had the unfortunate effect of casting aspersions on the value of the intellectual property and the importance of innovation. Avoiding those patent wars is also the biggest challenge because they have become so prevalent.

LES: What are you looking forward to the most at the event?

Kappos: I'm looking forward to learning from the other speakers, and actually hearing the other panel discussions and talks. This community is a very unique place in the world where people have extremely well-informed views about commercial outcomes and advancing technology into the marketplace.

Click here to register and learn more about the LES Leading Edge Series May 14 event at the Silicon Valley USPTO.

LES Leading Edge Series Speaker Interviews
Q&A with Sanjay Prasad, of Prasad IP, PC

LES: You will be moderating the panel titled "IP Management for Startups." In a few short sentences, what can attendees expect to learn?

Prasad: IP is critical to startups, as it is one of the few assets that a startup will have. Yet, obtaining patent protection can be expensive for a startup, particularly early on when funds are scarce, and the cost of capital is very high. I expect that attendees will hear answers to questions such as "What are various strategies that startups can use to protect their IP?" "What are the consequences of not obtaining early protection on the key IP?" "How is IP viewed by venture capitalists and angel investors?" The discussion will benefit from the panelists' broad range of expertise. 

Panel

• IP Management for Startups

Moderator

• Sanjay Prasad, Prasad IP, PC

Panelists

• Jeff Bartholomew, Attorney, Robinson Waters & O'Dorisio
• Katharine Ku, Chief Licensing Advisor, Wilson Sonsini, Goodrich & Rosati
• Nola Masterson, Managing Director, Science Futures, Inc.
• Soody Tronson, Founding Managing Counsel, STLG Intellectual Property Law Firm; Founder & CEO, Presque
• Larry Udell, Founder/Chairman, Silicon Valley Chapter, LES

LES: Technologists and IP professionals face many challenges and opportunities today. What one challenge do you hear about the most? What one opportunity?

Prasad: Certainly a major challenge is prioritizing what needs to be done -- best practices for a startup for generating and managing its intellectual property, and carefully prioritizing it all because, of course, funds can be scarce in a startup. Often we get the question "What are the consequences of not doing it early and not doing it right?" Or if they have limited funds, understanding what a startup's principals should do first, given that patent protection requires expenditures. Or, they may ask "What are the different options for paying for the work early on?" If they're inexperienced, the number-one question generally is, "What should I do about IP protection?" If they're experienced, the question generally is around funding it. 

The opportunity comes if you do it right: there is a tremendous amount of value to the business with respect to attracting capital, attracting talent and marketing the business, and also just in the ease that it gives you in interacting with others, because once you have the patent application, it is easier to talk to people. Otherwise you're always worried about people taking your IP. I do nondisclosure agreements and such regularly, and having the patent application done just makes it a lot easier.

LES: Can you give me an example of what startups typically look to manage with respect to IP? Is it their business process idea? 

Prasad: Well, it will vary depending on the industry, but it will be their technology. Whatever technology they've developed, how do they protect that? Then it will be the business name, and the product name or the slogans, filing for trademark protection for those. Then there is the confidential information, the " secret sauce" type of material, which is their trade secrets. 

LES: What are you most looking forward to at the event? You've got all these great panelists. What do they bring to the table?

Prasad: I'm expecting a really good discussion around best practices for IP in startups. We have a diverse set of panelists, with two people who work regularly in venture capital -- working with startups, helping them with funding, and the early stages of advising them. We have a patent attorney who works a lot in the tech industry (as do I), and a general corporate lawyer, who brings the corporate law experience. We have an expert who has spent her career doing technology licensing, how companies actually transfer their technology in and out. One venture capitalist works a lot in the life sciences, the other is very active in LES in Silicon Valley. You couldn't have a better set of experts.

Click here to register and learn more about the LES Leading Edge Series May 14 event at the Silicon Valley USPTO.

LES Leading Edge Series Speaker Interviews
Q&A with Matteo Sabattini, Co-Chair of the LES FRAND Licensing Standards Committee and Director IP Policy, Ericsson Inc.

LES: You will be moderating the panel titled "Innovation, Interoperability and Efficiency through Standards." In a few short sentences, what can attendees expect to learn?

Sabattini: I have the privilege to moderate a stellar panel of experts that will lead us through a journey around technical standards and FRAND (Fair, Reasonable and Non-Discriminatory). How has the licensing of standardized technologies evolved historically? Given that different verticals are relying more and more on technical standards, and entire industries are being disrupted and transformed by technology, what are the challenges and opportunities for stakeholders in this time of technology convergence?

The panel will benefit from a broad range of expertise, including the views of regulators. The conversation about hat is the right balance between government intervention and self-regulation in the FRAND domain has never been so highly visible and debated. Can the industry get together, as the LES FRAND Licensing Standard Committee is currently doing, to enhance the efficiency of licensing on FRAND terms through standardized processes?

Panel

• Innovation, Interoperability and Efficiency through Standards

Moderator

• Matteo Sabattini, Ph.D., MBA, Director IP Policy, Ericsson Inc.

Panelists

• Christian Hannon, Patent Attorney, USPTO Office of Policy and International Affairs
• Bowman J. Heiden, Center for Intellectual Property
• Luke McLeroy, Vice President of Business Development, Avanci
• Rob Yost, Intellectual Property Counsel, Visa

LES: Technologists and IP professionals face many challenges and opportunities today. What one challenge do you hear about the most? What one opportunity?

Sabattini: Technological convergence is changing industries and society. The Internet of Things is creating a living network of interconnected persons and things. 5G is poised to impact society in ways we cannot even fully anticipate. Financial institutions are transforming themselves into technology companies. Artificial Intelligence will pose ethical and existential challenges we need to tackle today. Federal agencies and governments around the world rely more and more on technical standards, not only as regulators but as users.

Many industries impacted by this transformation are not necessarily familiar with licensing on FRAND terms, and both technology developers and technology users face the challenge of learning more about different business models. This transformation represents a great opportunity for LES and LES Standards. How can we help the ecosystem? How can business process standards created by practitioners for practitioners help close that knowledge gap?

LES: What are you most looking forward to at the event?

Sabattini: As the co-chair of the FRAND Licensing Standards Committee, I look forward to hearing from the panel what we could do to make their licensing practices easier and more efficient. I am also looking forward to their suggestions to enhance discussions within the Committee itself, especially around thorny issues. Lastly, I anticipate hearing from participants – both in the panel I am moderating as well as all other panels – about how a business process standard can help with the practical aspects of IP management.

Click here to register and learn more about the LES Leading Edge Series May 14th event at the Silicon Valley USPTO.

LES Leading Edge Series Speaker Interviews
Q&A with LES Past President and Chair, Bill Elkington, Collins Aerospace

LES: You will be giving the LES opening remarks titled "Introduction to Standards in Intellectual Capital Management" with John Cabeca, Director, Silicon Valley USPTO. In a few short sentences, what can attendees expect to learn?

Elkington: We will explore the importance of standards in intellectual capital management and the diversity of areas in which the standards approach may provide value in managing intellectual capital assets. As with quality management standards, intellectual capital management standards will help reduce the cost and uncertainty of achieving beneficial outcomes. Delegates will learn what LES is doing in the field, what progress LES is making and who the thought leaders are in this important new area. They will also learn how to get involved at a couple of different levels, working with a diverse group of professionals who are determined to provide valuable tools for improving how intellectual capital is managed across the innovation ecosystem.

LES: Technologists and IP professionals face many challenges and opportunities today. What one challenge do you hear about the most? What one opportunity?

Elkington: The challenge that I hear about most often is the lack of understanding throughout most operating companies concerning best practices in intellectual capital management. A high percentage of people in IP-centric operating companies put an appreciable effort into managing intellectual capital as part of their work responsibilities, but there is often little awareness of how to perform this work well. Often, people in operating companies have difficulty identifying intellectual capital and the value of the company's intellectual capital, once it is identified. Without this basic capability, it is hard for senior operating company leadership to have confidence that its most important asset class is being managed well. The opportunity here is to help educate enterprises on how to manage their intellectual capital better so that better financial outcomes are more likely.

LES: What are you most looking forward to at the event?
Elkington: I'm eager to get together with old friends, with whom I've been working on LES standards over the past few years, and I'm eager to make new friends who are interested in joining in the LES standards work. There is much important work to do, and so far, the friendships that I've developed in the context of the effort have made a real difference. It's exciting to engage in a ground-breaking project like LES standards with thought leaders who genuinely care about the vision, the innovation ecosystem, and one another.

Click here to register for or learn more information about the LES Leading Edge Series May 14th event at the Silicon Valley USPTO.

Certified Licensing Professionals (CLP) has extended the April testing window through May 15, 2017 to give interested applicants additional time to take the exam this spring. 

We recommend starting with the CLP Toolkit – an all-inclusive, online kit with need-to-know dates, FAQs, and CLP essentials that will help familiarize you with the program and the certification process. Find items such as: 

• Certification and Career Benefits: An overview of just how certification can impact your career and why earning the CLP is the next logical step.
• CLP Brochure: A comprehensive brochure detailing eligibility, the certification process, recertification, contact information, and general information about CLP certification.
• Dates to Know: Scheduling for the April testing window is now open. Once your application is approved, you will receive an email with instructions to schedule your test. The deadline to schedule your exam for April is April 25, 2017.
• Frequently Asked Questions: Answers to CLP-related questions you, your colleagues and/or employer might have.
• Industry Testimonials: What do actual CLP certification holders have to say about how certification has influenced them?  Check this out to learn more.

Step 1 - Sign in.
Step 2 - Find the purple box called “Profile” on the right of the screen.
Step 3 - Click on "Manage Profile."
Step 4 - Click on "Preferences" under "Information & Settings."



Step 5 - Select the on/off box on the left column to receive or not receive email notices according to your preference.  If the check box is selected, you will receive emails.

Should you have any questions or need assistance, please contact our membership department at membership@les.org or by phone at (703) 234-4059.  

View the event invitation here.

INSIDE:

• President's Report
• President-Elect's Report
• Treasurer's Report
• LES Foundation Report
• Frank Barnes Mentor Award Winner
• 2016-2017 Board of Trustees Candidates

Dean Woodward, Assistant General Counsel for IP and Licensing at RTI International, was the featured speaker at the Licensing Executives Society’s September 20th luncheon hosted by its RTP Chapter.

Woodward discussed the role intellectual property (IP) plays in the support of business strategy. He emphasized the importance of linking intellectual property to industry value and highlighted methods of extracting IP value from patents, copyrights, trademarks, and trade secrets to develop a unique and adaptable IP strategy.

Woodward advised that sustainable businesses must develop a strong and integrated IP position to maintain their competitive advantage. While this can be costly and time consuming, Woodward reiterated that the benefit of protecting business value far outweighs the cost.

LES wishes to find a CEO who shares its vision in becoming the global leader in standards development, education, and certification in promoting IP commerce.

We remain committed to the following principles to provide the greatest value and most rewarding experience for its members. 

• Promoting business networking and relationship building
• Operating in a non-discriminatory manner
• Encouraging member engagement and participation
• Offering education without self-promotion
• Upholding the highest ethical standards
• Promoting diversity
• Supporting intellectual property development and global intellectual property commerce
• Providing an unbiased forum for discussion of global intellectual property commerce issues

Dear LES Members and friends: 

I am happy to share with you my plans as President of LESI for the 2016-2017 term.  The full text appears in the June 2016 issue of LESI Global News.

I will devote my term to 4Cs:  CONSOLIDATION, COMPETITION, CONTINUITY and CONNECTIONS. 



The first C is CONSOLIDATION.  It is a time to build on our many strengths and the fantastic work that our past international presidents have left for us to carry on.  Plans should be translated into achievable, measurable and time-bound action items.  With your help, I hope to have a fruitful term that is marked by concrete action, even if we sometimes have to take small steps to reach our goals.

The second C is COMPETITION.  It is a time for serious stock taking in view of the fierce competition we face from other intellectual property organizations which may be seen as having more attractive programs or other offerings that compete for the time and attention of our members.  It is therefore necessary to differentiate LESI from all of them and highlight the value that we can deliver, but others cannot, or which we can deliver better.  We need to be clear and in-sync about what the LESI brand stands for.

I will continue Past President Jim Sobieraj’s focus on the LESI value proposition and its four main deliverables: Meetings/Publications/Communications/ Education.  The results of the Long Range Planning Committee’s survey, as well as the discussions at the Lisbon Winter Planning Meeting, confirm how critical these four deliverables are in retaining existing members and attracting new members.  Therefore, I am committed to carrying this initiative over into my term and seeking new and fresh ways to further improve our deliverables.

The third C is CONTINUITY.  Continuity not only means forging on with the good work and programs started by my predecessors, but also ensuring that LESI not only survives but thrives even under the most challenging circumstances.  The 2016-17 Board will turn the results of the Long Range Planning Committee’s survey into a true strategic plan that will guide us through the next 5 to 10 years.  We will likewise give the national societies and the international committees the tools they need to adopt and implement these strategic plans.  

Finally, the fourth C is CONNECTIONS.  We are not only differentiated from other IP organizations by our value proposition.  I have always believed that the core strength of LESI is its diverse and highly capable membership.  More than the educational content or other benefits that we derive from LESI, it is the personal interaction that makes the work we put into LESI worthwhile.  It is the human connection that draws us to the meetings and conferences.  While LESI’s members are the national societies and not the individuals, it is the stories of the individuals that inevitably draw, engage and connect us.

Indeed, it is this engagement and connection that have enabled us to work actively and tirelessly for LES.  I thank you all for your support, encouragement and good wishes.  It will be an exciting year! 

Patricia Bunye
LESI President

By Seth Crossno

Three universities in North Carolina came together to discuss the emergence of university angel networks during the most recent Licensing Executives Society Chapter meeting. Duke, NC State, the University of North Carolina at Chapel Hill (UNC) and other LES members attended the meeting to hear more about the success of the Duke Angel Network.



John Glushik, Managing Director of the Duke Angel Network, delivered an engaging presentation detailing the network’s structure and progress to date. The network facilitates investments from Duke-affiliated angel investors into Duke-affiliated private companies. Formed in June of 2015, the network now has 75 angel members that have evaluated over 200 investment opportunities, including commercialization opportunities based on IP from the university. The network has invested over $2.3 million in 10 separate deals, with 4 deals currently in diligence. Glushik noted that the Duke Angel Network is actually helping to bring capital to the region. While only 4 of the 75 angel members live in North Carolina, 4 of the 10 deals done thus far have been with companies in the state.



Both UNC and NC State plan to launch their own angel networks, the Carolina Angel Network (CAN) and Wolfpack Investor Network (WIN), respectively, by the end of the year. These three university-led angel networks will collaborate as the Triangle Venture Alliance. Earlier this year, the U.S. Economic Development Administration awarded $250,000 to the Triangle Venture Alliance, with the goal of facilitating investment by connecting alumni investors from Triangle schools with university-affiliated startup companies. http://today.duke.edu/2016/03/tvarelease



The event was hosted by the LES RTP Chapter, led by Chapter Chair Dr. Kelly Sexton, Director of NC State’s Office of Technology Transfer. 

NC State Office of Technology Transfer
https://research.ncsu.edu/ott/ 
Twitter: @ncstateott https://twitter.com/ncstateott

The Duke Innovation and Entrepreneurship Initiative
https://entrepreneurship.duke.edu/ 
Twitter: @EshipAtDuke https://twitter.com/EshipAtDuke

UNC Office of Technology Development
http://research.unc.edu/offices/otd/
Twitter: @UNC_OTD https://twitter.com/UNC_OTD

Join the conversation using the hashtag #LESRTP on Twitter!
Questions? Contact Carmen Sevilla, Director of Chapter Relations at csevilla@les.org

From left to right:
Dr. Elissa Lim, Audrey Yap (LESI VP), Suresh Sachi (LES SG President), Chiew Yu Sarn, Jeffrey Whittle (LES USA & Canada President), Mohan Das (LES SG Hon Treasurer), Alfred Yip (LES SG VP)
*all LES SG Council members & office bearers

Pamela Cox of LES (USA & Canada) received the Licensing Executives Society International Outstanding Service Award for her leadership and contributions to the Life Sciences International Committee of LESI.

For her bio, visit: http://www.marshallip.com/pamela-l-cox/