Conferences

Summary

Tonkin’s Raising the bar in Commercialising IP
29th - 31st August 2011, The Grace Hotel, Sydney

The Gillard government’s reformation of the Australian intellectual property regime has taken its next step with the introduction of the Intellectual Property Laws Amendment (Raising the Bar) Bill (the Bill) to the Senate.

The stated purpose of the Bill which will amend the Patents Act 1990, the Trade Marks Act 1995, the Copyright Act 1968, the Designs Act 2003 and the Plant Breeder’s Rights Act 1994 is to make improvements to Australia’s IP rights legislation to support innovation by encouraging investment in research and technology and help Australian business commercialise their good ideas.

Attend Tonkin’s Raising the bar in Commercialising Intellectual Property conference to gain insight from some of Australia’s leading IP practitioners about how the proposed reforms are likely to affect your business.

Sponsorship
Sponsorship opportunities are extensive and can be tailored according to you company's desired level of exposure.

This is a perfect opportunity to build new relationships with your clients.

For more information call Dana Lightbody, Managing Director on (02)9224 6000 or email: sponsorship@tonkincorporation.com

PROUDLY SUPPORTED BY:

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Learning Objectives

Speakers

• Doron Ben-Meir, CEO, Commercialisation Australia
• Dr Anders Hallgren, Director, Sydnovate ‘Commercialisation arm of Sydney University’
• Andrew Lambert, General Manager, Business Development and Content Acquisition, Telstra Corporation
• Ken Preshaw, Licensing Executive, IP and Asset Commercialisation, IBM Australia
• Elizabeth Blackford, Head of Technology, Media and IP Legal, Commonwealth Bank of Australia
• Wayne Cooke, Regional IP Manager - Asia-Pac, Mars Australia
• Matthew Roper, IP Manager – Water Technologies, Siemens Limited Australia
• Leo Hyde, Research and Development Manager, Du Pont (Australia) Limited
• John Crickmore, Stakeholder Liaison Manager, The Rapid Prototyping, Development and Evaluation (RPDE) Program 'A JointDefence-Industry Initiative'
• Kathryn Harrison, IP Manager, Phosphagenics Limited
• Gillian Woodhouse, Consultant IP and Commercialisation, Viralytics Limited
• Gautam Tendulkar, Executive Manager – IP and Licensing, CSIRO ICT Centre
• Scott Bouvier, Partner, Mallesons Stephen Jaques
• John Hannebery, Partner, Davies Collison Cave Law
• Rob McInnes, Partner, DibbsBarker
• Brett Kensett-Smith, Patent Development Manager, Intellectual Ventures
• Byron Angelopulo, Partner , Baker & McKenzie
  

Conference Agenda

DAY ONE 

8:30 Morning coffee and tea

9:00 Opening remarks from the chair
Alex Blauensteiner, Director of Collaboration Services, Australian Institute for Commercialisation

9:10 IP Commercialisation: How can Commercialisation Australia help?

• Why is it so hard to commercialise new IP?
• "Powering Ideas" - the Australian Government's strategic response
• The Commercialisation Australia programme: Assisting the early stage commercialisation of innovative IP

Doron Ben-Meir, CEO, Commercialisation Australia

9:50 Re-powering National Innovation Capacity through academia, industry and government partnerships

• Global competiveness index and country profile comparisons – Australia and Sweden
• International perspectives and lessons learned from Scandinavia
• Re-powering National Innovation Capacity for a global market
• Assessing the opportunities for Australia

Dr Anders Hallgren, Director, Sydnovate ‘Commercialisation arm of Sydney University’

10:30 Morning tea

11:00 The latest law and tips on IP licences

• Licence grant issues such as “when is a TM licence a Franchise Agreement?”, “is it an IP licence?”, “can trade secrets and TMs be licensed exclusively?” and controlling downstream use
• Royalty issues relating to "when is withholding tax payable",  global licences, s145 Patents Act, royalty base and “Licensed Products”
• Other issues relating to assignment, registering IP licences, performance standards and enforcement

Scott Bouvier, Partner, Mallesons Stephen Jaques

11:40 Open Source Innovation

• Fresh ideas may not begin at home – looking outside your organisation for new ideas
• The Intellectual Ventures model of Open Source IP
• Other new models for generating and sourcing IP from outside your organisation
• Generating IP with a third party – who should own it?
• Balancing the need to protect core IP assets, whilst encouraging broader collaboration with strategic business partners

Brett Kensett-Smith, Patent Development Manager, Intellectual Ventures

12:20 Lunch

1:20 A case study on Movie Licensing for BigPond IPTV

• Media as a differentiator – how and why telcos are moving into IPTV
• Hollywood studio licensing – negotiation issues and deal structure

Andrew Lambert, General Manager, Business Development and Content Acquisition, Telstra Corporation

2:00 Protecting your technology through tactical use of Divisional Patents - a case study

• The product development pathway interface with patent clearances
• Patent oppositions - should you or shouldn’t you?
• Divisional patents – How do they work, and why are they useful?
• The case study - Just when you thought you understood Divisional Patents
  

Matthew Roper, IP Manager – Water Technologies, Siemens Limited Australia

2:40 Afternoon tea

3:10 Ensuring maximum returns for your IP through diversification - the Phosphagenics Story

• Securing your IP value through processes and ensuring it protects the valuable commercial opportunities
• Extending IP value by building your IP portfolio in non-core business areas
• Enhancing IP sale ability by analysing diverse opportunities for commercialisation
• Maximising IP potential by assessing the benefits of selling, licensing and other corporate structures
• Improving cash flow by structuring commercialisation activities to attract funding and balance long term and short term cash flows
• Tailoring your IP to market need
  

Kathryn Harrison, IP Manager, Phosphagenics Limited

3:50 Creating value from IP in the life science sector

• Utilising IP to your competitive advantage
• Developing a successful business strategy from your IP
• Highlighting the skills needed to exploit IP
• Partnering and licensing to build IP assets
• Operational Management of IP and due diligence
• Case studies in the life science sector
  

Gillian Woodhouse, Consultant IP and Commercialisation, Viralytics Limited

4:30 Closing remarks from the chair

4:40 End of Day One

DAY TWO

8:30 Morning coffee and tea

9:00 Opening remarks from the chair
Alex Blauensteiner, Director of Collaboration Services, Australian Institute for Commercialisation

9:10 Maximising profits and market share by exploring how IBM is transforming from a service to “IP asset” based business

• Achieving competitive differentiation by leveraging IP assets
• Delivering solutions to clients faster with lower risk through the use of an IP asset programme
• Providing better solutions for clients through the implementation of a structured worldwide programme
• Leveraging IBM research, internal activities or client engagements by applying innovative IP assets

Ken Preshaw, Licensing Executive, IP and Asset Commercialisation, IBM Australia

9:50 Du Pont Case Study: Building and managing a strategic IP portfolio

• Increasing shareholder value by building the key asset of a technology business: its IP
• Maximising the effectiveness of your IP investments by aligning business and IP strategies with R&D planning
• Avoiding violations by understanding the IP rights of others - the IP landscape
• Generating saleable and integrated ‘bundles’ of IP rights
• The importance of tailoring IP developments and protection to your chosen commercial strategy

Leo Hyde, Research and Development Manager, Du Pont (Australia) Limited

10:30 Morning tea

11:00 Case Study: The Commonwealth and Industry: Protecting and managing IP for mutual benefit

• How the Rapid Prototyping, Development and Evaluation (RPDE) Program – a joint Dept of Defence and Industry Initiative, protects and manages IP
• Protection of the background IP brought to RPDE by Defence and Industry participants, including practices, safeguards and management
• Management of the IP generated during RPDE projects – Foreground IP
• Commercialisation of Foreground IP by Industry

John Crickmore, Stakeholder Liaison Manager, The RPDE Program 'A Joint Defence-Industry Initiative'

11:40 Increasing IP revenue by overcoming the challenges in commercialising public sector
technology

• Forming solid management structures in order to maximise your IP
• Avoiding liability by conquering the various ways of making money out of patents
• Successfully commercialising your technology by balancing the time and money on IP protection and commercialisation efficiently
• Increasing commercialisation support from the government and private financier by improvising your business strategy plan
• Why it is essential to make sure your company is correctly identifying its intellectual property

Gautam Tendulkar, Executive Manager – IP and Licensing, CSIRO ICT Centre

12:20 Lunch

1:20 Making the right decisions when enforcing your IP rights or defending an IP infringement allegation

• Choosing your battles carefully: Considering what success looks like, how achievable it is and how it can be valued
• Selecting the best process to resolve your IP problem by evaluating the costs and benefits of litigation and alternative dispute resolution methods
• Maximising your prospects of achieving desired outcomes by using available processes to your advantage
• Utilising effective techniques to manage the resolution process and your external legal advisers
• Leveraging your settlement prospects by focusing on all of the various motivators for settlement

John Hannebery, Partner, Davies Collison Cave Law

2:00 International considerations in commercialisation deals

• Gaining an international perspective on commercialisation deals
• Preparing for, and negotiating successful cross-cultural deals
• Assessing different approaches to commercialising your technology internationally
• Understanding the evolution of IP law and practice in major overseas markets
• Avoiding pitfalls in international deal-making, including case studies from China, the US and Europe
• Best practices in cross-border dispute resolution

Rob McInnes, Partner, DibbsBarker

2:40 Afternoon tea

3:10 Effectively managing your organisation’s Digital IP

• Controlling and protecting your organisation’s digital IP, including documents, images, digital branding, video and audio
• Legal protections for your digital IP when extending licence rights to users
• Understanding considerations for digital IP and social networking sites

Elizabeth Blackford, Head of Technology, Media and IP Legal, Commonwealth Bank of Australia

3:50 Managing IP creation and risk in a decentralised global FMCG company - Mars case study

• Managing globalised IP considerations in an environment of decentralised business unit activities
• Capturing & protecting IP creation in short timeline projects & product launch activities
• Safeguarding against patent infringement risks in FMCG product launches
• Embedding globally adopted business processes to deliver against the above challenges

Wayne Cooke, Regional IP Manager - Asia-Pac, Mars Australia

4:30 Closing remarks from the chair

4:40 End of Day Two

Workshop Agenda

9:00 – 12:30 Workshop A:  Monetising your IP assets by knowing how to structure an effective licensing agreement

This Masterclass will offer practical tools and techniques for negotiating technology licence agreements, whether with a local or an overseas partner, and will focus on key issues and strategies including:

• Protecting and preserving your current and future IP assets with well crafted IP ownership and improvement clauses
• Securing full value by proactively benchmarking and modelling financial terms including royalties
• Avoiding disputes by carefully managing R&D collaborations
• Maximising commercial opportunities by maintaining clear separation between licensees in different fields and territories
• Minimising risk by structuring effective indemnity and limitation of liability clauses
• Limiting disruption to your business by understanding the practical issues in terminating licence agreements
• Understanding the special and difficult issues involved in licensing know-how and trade secrets

Facilitated by: 
Rob McInnes, Partner, DibbsBarker

1:30 – 5:00 Workshop B: Your invaluable guide to overcoming the complexities in negotiating commercialisation contracts

• Overcoming the “bogging down” of contracts by clearly communicating to legal professionals exactly what is necessary
• Eliminating disagreements by ensuring all parties understand details and expectations from a commercialisation contract
• Optimising contract success by ensuring that all parties feel they have a positive outcome
• Beating possible confusion and delays through clear recognition in the contract of IP improvements
• Guaranteeing high calibre results through collaborative contract agreements

Facilitated by: 
Byron Angelopulo, Partner, Baker & McKenzie

Lunch will be provided for delegates attending both workshops

Pricing
(must register & pay by dates listed)