Conferences
IP Management in Practice
> Registration19th - 21st May 2008 * The Grace Hotel, Sydney
Summary
The IP Management in Practice conference will identify and draw together all aspects of IP Management – technology transfer: public R&D to market, international commercialisation, licensing, protecting confidential information, capital raising, developing strategic collaborations, branding and IP, digital IP management, IP innovation, tax issues associated with acquiring, developing and commercialising IP and best practice IP auditing.
Who Should Attend?
§ IP Managers/Director § Commercialisation Managers § IP Advisors § IP Strategists § Patent Managers § Trade Mark Managers § Innovation Managers § Licensing Managers § Technology Managers § Research and Development Managers § Legal Counsel.
Hear from leading IP management specialists on a variety of key issues such as reducing IP investment costs and generating extra
revenue through licensing; creating value through cross-fertilisation between public sector research and business; determining
commercial prospects for innovation, inventions and ideas through technology transfer centres; eliminating the confusion as to
where your IP should be based; protecting core IP assets while encouraging broader collaboration with strategic partners;
establishing a structured innovation framework; eliminating exposure to material claims of IP rights infringement; measuring IP;
managing potential risks of commercialisation; and maximising tax concessions.
Supported by:
IP Australia
Endorsed by:
Australian Institute for Commercialisation (AIC)
Licensing Executives Society of Australia and New Zealand (LES)
Learning Objectives
- Reducing your IP investment costs and generating extra revenue through licensing
- Guaranteeing transparency of your licensees by ensuring provision for regular reporting
- Creating value through cross-fertilisation between public sector research and business
- Determining commercial prospects for innovation, inventions and ideas through technology transfer centres
- Eliminating the confusion as to where your IP should be based
- Protecting core IP assets while encouraging broader collaboration with strategic partners
- Establishing a structured innovation framework - balancing creativity with responding to market needs
- Transforming your organisation into an R&D and IP focused culture
- Commercialising IP - increasing revenue and profit
- Determining, with greater accuracy, the overall value of your organisation’s IP
- Eliminating exposure to material claims of IP rights infringement through comprehensive IP audits and due diligence
- Measuring IP – knowing the power of relevant numbers
- Maximise funding for your new idea or product
- Discovering partnering mechanisms to gain the greatest benefit from commercialising your IP
- Managing potential risks of commercialisation and overcome hurdles
- International deal-making and global competitive advantage
- Maximising tax concessions by conducting R&D locally but holding your IP overseas
Speakers
Hear from leading IP management specialists….
- Ken Preshaw, Program Manager - Intellectual Property and Asset Commercialisation, IBM
- Kevin Croft, Board Member, Licensing Executives Society of Australia and New Zealand and Managing Director, Croft IP Pty Ltd
- John Lee, Partner, Griffith Hack
- John Walker, Senior Manager, CSIRO - Intellectual Property Portfolio Management
- Simon Ellis, Patent Attorney, Watermark
- Carman Rossi, Managing Director, TridentGlobal
- Miriam Stiel, Partner, Allens Arthur Robinson
- Justine Beaumont, Special Counsel - IP Group, Allens Arthur Robinson
- Kathryn Harrison, Head - Intellectual Property, Cytopia Research
- Charles Alexander, Partner, Minter Ellison Lawyers
- Dr Tony Coulepis, Strategic Industry Adviser, Innovation Dynamics
- Amos Meltzer, Senior Associate, Middletons
- Maree Anast, IP Co-ordinator, James Hardie Research
- Stephen Ferris, Partner - Corporate Finance, Deloitte
- Rachel Besley, Director and Senior Legal Counsel, Deloitte
- Rob McInnes, Principal - Commercialisation Team, Spruson & Ferguson Lawyers
- John Kapeleris, Deputy CEO, Australian Institute of Commercialisation
- Dr Dimitrios Eliades, Barrister, P D Connolly Chambers
- Ellen Gorissen, Commercialisation Manager, CSIRO Business Services
- Keith Reams, Asia Pacific Regional Service Line Leader - Global Transfer Pricing,Deloitte
- Peter Madden, Tax Services, Deloitte
- Tim Jones, IP Counsel, ipernica Ltd
- Rodney McKemmish, Partner, Investigations & Integrity Risk Management, KPMG
Conference Agenda
Day one – Monday 19th May 2008
8:30 Registration
8:45 Opening remarks by the Chair:
Professor Jill McKeough, Dean, University of Technology Sydney
Local and International Commercialisation
8:50 CASE STUDY: Gaining competitive advantage from IP
- Commercialising Intellectual Property to increase revenue and profit - creating and evolving a commercialisation process
- Overcoming challenges and issues
- Accelerating the implementation of your IP strategies
Establishing a culture of sustainable IP innovation in your organisation and establishing IP as a core strategic asset
9:30 Technology transfer - public R&D to market
- Commercialising IP which is generated within universities and research institutes
- Managing potential risks of commercialisation and overcoming the hurdles
- Protecting IP assets in a commercial environment
Protecting ‘potential’ – identifying and protecting the ‘next big thing’ when you’re not sure of what your innovation might deliver
- Profiting from knowing key commercialisation considerations – whether on your own or in a strategic partnership
- Managing commercialisation in your organisation – knowing the best internal processes and structures
- Balancing the pros and cons of commercialisation and discovering the partnering mechanisms which deliver optimal results
10:10 CASE STUDIES: International commercialisation
- Gaining an international perspective on commercialisation deals
- Preparing for, and negotiating cross-cultural deals
- Choosing between different approaches to commercialising your technology internationally
- Understanding key IP law and practice considerations for major overseas markets
- Avoiding pitfalls in international deal-making - case studies from China, the US and Europe
10:50 Morning tea
Licensing
11:20 Capitalising on your IP by licensing your rights
- Reducing your IP investment costs and generating extra revenue through licensing, rather than trying to re-invent the wheel
- Knowing when to license your IP exclusively or non-exclusively, and knowing what to license
- Establishing a commercial agreement to protect your IP
Licensing your idea or product to existing joint venture partners to:
- reducing your capital investment costs
- combat risks- Accelerating your organisation’s decision to enter into a licence agreement
Conducting royalty examinations to assess licensees’ compliance with licensing terms, and consequential damages
Kevin Croft, Licensing Executives Society of Australia and New Zealand
12:00 Managing the delicate power play when drafting a licensing agreement
- Balancing commercial expectations of the licensor and licensee
- Ensuring your product gets the high priority and attention it deserves
- Guaranteeing transparency of your licensees by ensuring your licensing agreement provides for regular reporting
- Optimising royalty returns and knowing the differences between various licenses
- Reducing transaction costs in licensing by allowing licensees broad rights to sell, copy, and modify licensed programs
John Lee, Partner, Griffith Hack
12:35 Lunch
Patents Law Updates
1:35 Patents Law Update
- Abolishment of patent duty of disclosure requirements – know how it affects your organisation?
- Establishing whether your organisation has in fact taken the inventive step: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21
- Knowing the difficulties of amending an invalid patent: NutraSweet Australia Pty Ltd v Ajinomoto Co. Inc (No. 3) [2007] FCA 966
Capitalising from the ‘experimental use’ exception of Australian patent legislation – how can this provision enhance your research and development?
Simon Ellis, Patent Attorney, Watermark
Protecting Confidential Information
2:10 Proactively protecting your confidential information
- Determining what can be protected
- Maximising protection of your IP through effective confidentiality clauses
- Educating and communicating policies to staff
- Disarming corporate espionage
- Mitigating the risk of IP theft
Rodney McKemmish, Partner, Investigations & Integrity Risk Management, KPMG
2:45 Hypothetical - avoiding the pitfalls of an unreliable IP system
- Identifying the true inventor(s) of a new idea or product
- Understanding the implications to your organisation of excluding a person who has made an inventive contribution and including a person who has not made an inventive contribution
- Establishing who owns the IP?
- Learning from best practice US and UK patent systems
- Knowing what steps might be taken by an employee or employer to protect their IP contribution
3:25 Afternoon tea
Capital Raising
3:40 Alternative Models for Leveraging Your IP Assets
- Patent assertion in various jurisdictions
- IP backed loans
- IP securitization
- Hybrid IP financing models
Tim Jones, IP Counsel, ipernica Ltd
4:20 Funding your IP development
- Protecting vendors from liabilities which may be imposed by specific laws or the terms of the sale documentation – if listing on ASX
- Reducing the risk of company director liability for any misleading statements or omissions in a prospectus
- Eliminating exposure to material claims of IP rights infringement by incorporating a comprehensive IP audit into the due diligence process
Attracting investors for a variety of capital raising methods
Amos Meltzer, Senior Associate, Middletons
4:55 Close of day one
Day two – Tuesday 20th May 2008
8:45 Opening remarks by the Chair:
Professor Philip Griffith, Associate Dean (Research), University of Technology Sydney
Collaborating for Best Advantage
8:50 Developing strategic collaborations - locally and abroad
- Eliminating confusion as to where your IP should be based
- Balancing the need to protect core IP assets, whilst encouraging broader collaboration with strategic business partners
- Measuring the results of strategic collaboration and turning the collaboration into a core competency with your organisation
9:30 Mastering tax issues associated with acquiring, developing and commercialising IP
- Avoiding unnecessary pitfalls by understanding the implications of various taxes
- Enhancing the financial impact of commercial activities and transactions
- Capitalising on the R&D tax concession, and tax-effective business structures
- Gaining a greater understanding of the tax implications on various IP regimes
- Maximising tax concessions by conducting R&D locally, and holding your IP overseas
Financial reporting of intangible investment
- Analysing equity valuation for listed companies and Initial Public Offerings
Keith Reams, Asia Pacific Regional Service Line Leader, Global Transfer Pricing, Deloitte Touche Tohmatsu and Peter Madden, Tax Services, Deloitte Touche Tohmatsu
10:10 Morning tea
Trade Marks Law and Copyright Law Updates
10:40 Trade Marks Law Update
- Thinking twice before selecting trade mark names too close to those of well-known ‘families’ of brands: Sportsgirl Pty Ltd v Filip Sali [2007] ATMO 71 of 22 – application of section 44 of the Trade Marks Act 1995 (Cth)
- Analysing descriptive or non-distinctive elements of a trade mark - ensuring your organisation’s branding strategy addresses any potential weaknesses in a trade mark through careful marketing: ‘THE LOCAL BLOKE’
Facing difficulties of attempting to obtain registration for colour marks: BP pic v Woolworths Limited [2007] HCA Trans 249 (25 May 2007)
- Knowing what the recent change in the trade mark renewal grace period means to you
- Taking advantage of changes to the Australian Trade Marks Office practice on letters of consent, making application processes easier
Justine Beaumont, Special Counsel - IP Group, Allens Arthur Robinson
11:10 Copyright Law Update
- Avoiding the dangers of ‘hyperlinking’ to copyrighted material: Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187
- Copyright and confidential information – preventing disclosure of trade secrets by past employees: BlueScope v Kelly [2007] FCA 517
- Format shifting – know the new rules
Know the fair use defences and the new defences to copyright infringement in Australia
Dealing with copyright design overlap
- Discuss unjustified threats and new developments
- Protecting information – how far can you go?
Miriam Stiel, Partner, Allens Arthur Robinson
Branding and IP
11:40 CASE STUDY: Aligning your branding strategies with your IP
- Knowing which branding considerations come into play when reviewing your IP strategies
- Maintaining trade marks and non conventional marks
- Protecting public image and brand image
- Maintaining a unique competitive edge by protecting image and goodwill
- Brand engagement – using customer input and engagement for IP
12:20 Lunch
IP Innovation
2 CASE STUDIES. 2 PERSPECTIVES
Driving Continuous Innovation in your organisation - Cytopia Research & Innovation Dynamics
- Establishing a structured innovation framework - balancing creativity with the need to respond to market needs and investor demands
- Building a culture of sustainable innovation
- Transforming the R&D function in your organisation into an IP focused culture, balancing organisational need for strong IP and scientists need to "publish or perish"
- Developing an innovation and IP strategy that matches your organisation's business plan
1:20 – 2:00 Kathryn Harrison, Head, Intellectual Property, Cytopia Research
2:00 – 2:40 Dr Tony Coulepis, Strategic Industry Adviser, Innovation Dynamics
2:40 Afternoon Tea
Commercialisation
3:00 CASE STUDY: Technology transfer - public R&D to market
- Achieving greater returns from public sector research investment
- Identifying various options for taking your idea to market
- Managing potential risks of commercialisation and overcoming the hurdles
- Discovering how to preserve your company's IP assets in commercialisation
- Balancing the pros and cons of commercialisation and discovering the partnering mechanisms available to gain the greatest benefit from commercialising your IP
- Facilitating the nuturing, development and maintenance of your organisation's IP assets during commercialisation
Ellen Gorissen, Commercialisation Manager, CSIRO Business Services
Digital IP Management
3:40 Keeping up with online content
- Establishing who owns what when it comes to online content
- Managing the threat of piracy on the internet
- Producing workable solutions through successful partnerships with ISPs and content providers
- Using online content to drive new business models and technology
- Increasing your organisations’ freedom to operate, and gaining the ability to re-use the ideas you have developed
Business of IP
4:20 PANEL DISCUSSION: Forging relationships with research institutes and universities
- Creating value through the cross-fertilisation between public sector research and business
- Determining the commercial prospect for innovation, inventions and ideas through technology transfer centres
- Crystallising ownership of IP - who pays for what? Balancing ownership requests between the parties
- Balancing different R&D timing expectations, IP expectations, and commercially driven expectations with those of universities and other institutions
- Unravelling the legislative minefield of collaborations with universities
Panel Moderator: Kathryn Harrison, Head, Intellectual Property, Cytopia Research
Panellists:
John Walker, Senior Manager, CSIRO - Intellectual Property Portfolio Management
Ken Preshaw, Program Manager, Intellectual Property and Asset Commercialisation, IBM
5:00 Conference close
Workshop Agenda
WORKSHOPS: Wednesday 21st May 2008
Workshop A: 9.00am – 11.00am
Best practice IP Auditing - for lifestyle management and IP protection
Conducting an effective IP gap/risk analysis within your organisation and establishing whether your IP rights are
being challenged or threatened
Designing a comprehensive audit which specifically addresses due diligence, and provides the platform for enforcing or defending
legal action
Kevin Croft, Managing Director, Croft IP Pty Ltd and Board Member, Licensing Executives Society of Australia and New Zealand
Workshop B: 11.30am – 1.30pm
Achieving the best commercialisation deal imaginable
Kevin Croft, Managing Director, Croft IP Pty Ltd and Board Member, Licensing Executives Society of Australia and New Zealand
Workshop C: 2.30pm – 4.30pm
IP metrics and analytics - IP as a more strategic part of the business
Dr Tony Coulepis, Strategic Industry Adviser, Innovation Dynamics