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LICENSING EXECUTIVES SOCIETY
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Glasgow venue for annual conference and AGMThe magnificent Glasgow School of Art, one of the oldest and largest art schools in Great Britain, is the chosen venue for plenary sessions and workshops at the Society’s two-day annual conference this year. Proceedings will begin after registration from 13.00 hours with two workshops during the afternoon of Thursday, 8 July, and conclude with a reception on Friday, 9 July.Following the Thursday afternoon workshops and the annual general meeting planned for 17.00 hours, participants and guests will be preparing to attend a gala dinner at the superb Marine Highland Hotel at Troon. Work begins the next morning at 09.00 hours with a plenary session on aspects of intellectual property management and a series of workshops on topical issues. More workshops and a plenary or panel session will follow lunch with a reception in the evening. ‘We have the programme under way and will be announcing details of speakers and subjects just as soon as we can,’ said President Fiona Nicolson. ‘Meantime I can assure members that apart from the conference sessions themselves, there will be plenty going on in Glasgow to make their visit a memorable one. ‘This year Glasgow reigns as the UK City of Architecture and Design and is also glowing with top city commendations from all part of the world. It is staging the largest and most ambitious celebration of its type ever attempted, some of the events due to take place during the time of our conference. It could well be worth staying over for a few days.’ A sight-seeing programme for accompanying persons will be available to include tours of the city and the surrounding countryside. A great variety of overnight accommodation is available in Glasgow and details of well recommended hotels will be included in the forthcoming brochure, copies of which will be sent to members immediately on publication. Glasgow School of Art This famous building by the Scottish architect, designer and artist Charles Rennie Mackintosh is described as the first important architectural monument to the Modern Movement in Europe. Mackintosh, an ex-student of the School and only 28 at the time, won a competition for the design of the new building and he was also responsible for much of the furniture. Work was completed in two stages: the east wing was opened in 1899 and the west wing and the attic storey were added in 1907-09. Marine Highland Hotel The four-star 74-room hotel, the venue for the gala reception and dinner on Thursday evening and an ideal place to stay overnight, has first class banqueting facilities and an exquisite restaurant overlooking Royal Troon golf course and views out to sea and the Isle or Arran. President’s DiaryAS EXPECTED, the Annual January Lunch at the Café Royal was a splendid occasion and served to make quite a lot of people more aware of the Society and its role in the world of intellectual property. In the early days we thought we might attract fifty diners, then hopes were expressed that numbers might go up to 75. In the event, 114 members and guests took their places to make it perhaps the best networking event LES has ever had. I was particularly pleased to see old friends and make new ones, and felt particularly pleased to welcome Tibor Gold, President of CIPA, and Sam Heijn, LES International Past President, and of course our guest speaker Trevor Baylis. Another event destined to put the Society on the map was the half-day meeting with AURIL in London on 18 February at which a number of speakers were invited to offer perspectives on university spin-out companies. Again, there was an excellent response. More than eighty AURIL and LES members and their guests made full use of networking sessions. I was privileged to be asked by Mary Swords to speak at the LES Ireland region Annual Dinner at St. Helens Hotel, Dublin, on 12 March. Apart from enjoying the hospitality, I was particularly delighted to see so many members and guests from both the north and the south of the border. Pharmaceuticals are of fast growing interest and I was glad to see that Christi Mitchell, chair of the Healthcare committee, and her colleagues made a great success of the special morning healthcare seminar on 5 March. Events like this do much to help members meet up with each other and discuss matters of common interest. But no less important to the Society, they also help raise our profile and attract new members. One man who has no doubt about the value of membership is Platon Mandros, the newly elected LES International President. Members of Council invited Platon to lunch at the Royal Over-Seas League on 8th March to discuss and hear his views on matters international. He stressed, as reported in this issue, the importance of helping individual members to improve their skills, and all agreed with him. Are we doing that? Looking back on the courses and seminars committee chairs and others have organised, there can be little doubt about it. And there are more events on the calendar - including Glasgow of course! |
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Top PeoplePatent Office headAlison Brimelow will replace Paul Hartnack as head of the Patent Office when he retires at the end of March. She will be the first woman to hold the top post in the executive agency’s 146-year history. Currently Director of European and International Competition Policy and Director of Consumer Advice and Information at the DTI, she joined the department two years ago from, coincidentally, the Patent Office, where she had worked since 1991, latterly as Head of the Trade Marks Registry. Ms Brimelow told News Exchange: ‘My last two years at the DTI have further confirmed my view that UK companies’ international competitiveness depends as much on innovation as on exchange rates and labour costs. ‘I will be encouraging UK companies not only to protect their technology and brands, but also to extract maximum commercial advantage from their intellectual property.’ Mr. Hartnack was made a Companion of the Order of the Bath in January’s New Year’s Honours for his services to intellectual property. |
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Top Great value in the ‘global reach’ of LESTalking to members of Council during lunch in London on 8 March, the recently elected President of LES International Platon N Mandros saw nothing but great things for the future for LES. Technology transfer had been and would continue to be a key factor in the worldwide growth and development of both industrialised and developing countries, he said. LES members played an important role in the transfer of this technology. There was in his view great value in the Society being not a member of a national or regional Society but being part of ‘this outstanding worldwide organisation’. Platon continued: ‘The global reach of LES provides individual members with the unique opportunity to communicate, network, and interact world-wide with respect to the transfer and licensing of technology and technology rights. “It is important that we continue to fulfil our constitutional purposes of assisting members in improving their skills and licensing techniques, as well as taking a more active role in informing the public, business community, and governmental bodies concerning the economic significance and importance of licensing and technology transfer.’ He emphasised that LES and its members had the exciting and wonderful opportunity to be key players in the future world-wide technological expansion and growth. Platon is currently a partner in the law firm of Burns, Doane, Swecker and Mathis, L.L.P., which specialises in intellectual property law, and has been with the firm since 1965. Between 1963 and 1965 he was in the United States Army, having the excellent assignment of handling patent infringement claims brought against the U.S. Department of Army. In recent years Platon’s practice has been primarily in opinion preparation, counselling of clients, and negotiating and preparing intellectual property licence agreements. He had been active in LES for many years, dating back to the mid-1970s. He was a member of the U.S./Canada Board of Trustees from 1982 to 1985; Treasurer from 1985 to 1988; and, finally, President of the U.S./Canada Society during 1989-90. He became active in LES International in the mid-1980s, and served as a Vice President of LESI from 1994-96 Platon is married to Anne and clearly rejoices in having a son, a daughter and three ‘wonderful’ grandchildren. |
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Top University spin-outs:investor, academic, company and legal prspectivesAs with life, sort out your relationships and the rest is easy. This was not quite the message at the recent highly successful joint afternoon meeting of the Society and AURIL – but, as Stephen D Powell reports, it was striking how often the importance of relationship management was mentioned by the various speakers. According to opener Nigel Pitchford of 3i’s Technology Group, relationship management is very time intensive, and this is viewed as being a disadvantage of many spin-outs. However, for promising projects, 3i will keep in contact and may even recommend a person with commercial skills to assist in developing the company. Thus, even when backing is initially refused, it may be feasible for later rounds of financing. Tom Hockaday, md of Bristol Innovations and head of the Bristol University ip management unit, agreed that considerable time was needed to be spent on relationship management. A typical concern of universities was whether spin-outs would adversely effect their academic research ratings. And as later noted by solicitor Fiona Nicolson, LES Britain and Ireland President, both existing and future relationships can be covered in the legal agreements negotiated when establishing the spin-out, clarity and flexibility being important elements. Need for a mentorDavid Kennard of Stanford Rook and Professor John Mann of Trellick discussed spin-outs from the perspectives of the company and the academic, the latter stressing the dangers in becoming an almost full-time company employee while remaining a full-time academic. Although there was no standard way of establishing a spin-out company, each being unique, there was a certain amount of commonality, so one should not need to re-invent the wheel. For his first spin-out - dealing with protein extraction from animal blood - John would have found a mentor useful, and it is just this service that he now offers. John adopts the md role with the inventors entering the technical director role while continuing to draw a salary from their main employer - either a university or the NHS. He offered three essential guidelines for academic would-be entrepreneurs.
John Mann’s final point was echoed by Fiona Nicolson when noting from the legal perspective that each party to spin-out agreements needs separate representation. Details were important, she declared, and the parties should be encouraged to cover as much ground as possible before bringing in the lawyers. The meeting proceeded at a brisk pace throughout, while leaving appropriate opportunities for questions. More than eighty members of LES and AURIL made full use of the networking sessions before, during and after the meeting. |
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Healthcare seminarFinancing and valuation of small companies and technologiesAt a time when valuations of publicly listed small companies in this field are at their lowest ebb for two years, the Healthcare committee’s recent seminar provided a timely reminder of how the valuations are calculated. June N Grindley of Medea Consulting reports. Ian Smith of Lehman Brothers described the setting in which young companies operate these days. For example, in some instances the technology had lost its gloss and in others major pharma had a plethora of drug leads and full pipelines – though there was disagreement among participants on how full pipelines were. Three methods of putting a valuation on companies were comparison with the market capitalisation of similar companies, probability adjusted discounted earnings valuation, and aggregate net present value (NPV) of projects. Both the latter methods were dependent on calculating the probabilities of success or failure of drug development. Valuations were subject to investor sentiment, Ian said, which at the moment was so disillusioned with the sector as to be assigning an almost zero chance of successful drug development! This meant that some companies were now valued at near their cash assets value. In contrast, most major pharma were trading at 50% more than their NPVs because analysts continued to anticipate good P/E rations and were already taking account of the potential impact of new technologies (like Genomics and High throughput screening). Paul Ranson (Simmons and Simmons) pointed out the need for and costs of IP due diligence in product acquisition or licensing. Noting that the aim of due diligence was prevention versus cure, he suggested that the goals were to identify restrictions or claims or threats to IP rights which could condemn the acquirer to expensive payments or costly management time in sorting out the mess. However, he also noted that the quality of information obtainable could be affected by the time scale, costs and confidential nature of the transaction. Disclosure was important to build trust between licensee and licensor but restricted disclosure was possible if covered by suitable warrants or guarantees. It was also important to get a feel for the target company’s policies regarding IP prosecution, policing, infringement detection and employment contracts, particularly in the case of the know of a few key individuals! In an overview of the types of refinancing on both sides of the Atlantic, Stephen Parker (Apax) noted many such as undervalued share transactions, R&D limited partnerships and PIPES as being illegal in the UK. However, he believed that while this would change, the current climate for financing biotechs on the public market remained poor. Despite the use of various valuation methods to arrive at a fair value for a company, he saw emotion as the most powerful force. The way forward required consolidation. Companies also had to put their houses in order and find creative ways to work with big pharma, sharing both risk and reward. Professor Ken Powell of the Wolfson Institute showed that despite gloom and doom in the sector, good science could be packaged into companies that attract seed and private functioning. At the institute, every piece of IP had already generated funds, a feat that must be unparalleled elsewhere in the UK. Four companies had been started and collaborations with major and mid sized pharma and biotech were already in place. The valuations for the new companies were arrived at as a result of market pressure. But, Professor Powell emphasised, it pays to to talk to several potential investors before signing a deal. Where seemingly crazy ideas could become products of the futureFor many years Trevor Baylis OBE has campaigned for an Academy of Invention in Britain, a place ‘where you and I may go for the encouragement, help and resources to turn a seemingly wildcat, crazy idea into a product or process that will benefit us all’. Here, following his talk to members and guests at the Annual January Lunch at the Café Royal, he states his case. The deal is simply this: viable projects will be undertaken by the proposed academy on the understanding that, when the product or process is sold or licensed, the academy will share in the rewards, to help fund it and make it cost-effective. We can teach the history of invention and what has befallen inventors in the past, the importance of the Patent Office and what services it provides, how to do market research, how to work on business plans and how to work on a prototype and resolve technical problems. Discussions with various funding bodies are ongoing, but it is not easy. If our inventive citizens are to benefit and become successful, the most effective way would be for the government to support it with a view to creating an independent body. Is it too much to ask that in order to do so the government should allocate some of the £200 million that the DTI spend on its own Innovation Unit? Academy funding will also come from industry and from its members, but we will expect that later. We have already found willing support from a wide variety of persons and bodies, including members of both Houses of Parliament Extraordinary camaraderie exists between inventors, and those who become successful because of an academy would, I know, stand with newcomers to help them in their hour of need. Never again should a person feel shamed or awkward in saying he or she is an inventor. After all, if you can solve a problem, you are on the way to becoming an inventor yourself! Draft regulation on Community patent system still awaitedEC/Laws committee chair Nigel Jones reportsThe European Commission’s proposal to bring in a Community patent system seems to have run into delays. Following publication of a Green Paper in the Summer of 1997, the Commission appeared keen to press ahead with this proposal, encouraged by very strong support from a broad range of interest groups. Speaking at the Edinburgh Conference of LES International the Commission official responsible for this proposal (Mr Leardini) said that a draft Regulation on this issue would probably be published "early next year". However in an announcement in mid-February, the Commission said that legislation would not be available in draft until "later this year". As soon as a draft regulation is available, the committee will review it and seek members’ input. There is also significant activity at present in LES in the field of parallel imports. David Cannon attended the latest meeting of the Standing Advisory Committee on Intellectual Property on this issue, at which there was a lively debate. David can provide full details and a copy of the minutes of the meeting, which are intended to constitute the advice of the committee to the Minister concerned, Dr Kim Howells. In addition, the Commission has asked an independent body (NERA) to conduct a study of the economic effects of the exhaustion of trade mark rights, the results of which should be available soon. Other legislative developments we are monitoring include the Commission’s draft Directive on commerce, design rights, and utility models. |
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NEWS Exchange is circulated as a service to members of the Society. Editorial contributions and advertising/insert enquiries are welcome and should be addressed in the first instance to the editor. Editor: Reg Peplow, Business News and Features, 16 High Street, Buckden, Cambs, PE18 9XA. Tel 01480 812221, fax 01480 812221 email: regpeplow@intecc.co.uk |