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LICENSING EXECUTIVES SOCIETY
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Some of the very interesting people you will want to meet in GlasgowDr Heinz Goddar, first speaker at the Friday morning plenary session of the Annual Conference in Glasgow, 8-9 July, is a German and European patent attorney in partnership with Boehmert & Boehmert and Forrester & Boehmert, where he is particularly responsible for international patent and licensing matters. He was formerly assistant professor at the physical chemistry department of the University of Mainz. Heinz, currently President of LES Germany and President elect of LES International, is an associate judge at the Senate for Patent Attorneys matters at the German Federal Supreme Court and a lecturer in patent and licensing law at the University of Bremen. Alison Brimelow was recently appointed head of the UK Patent Office and is the first woman to hold the top post in the executive agency’s 146-year history. She was formerly Director of European and International Competition Policy and Director of Consumer Advice and Information at the Department of Trade and Industry. She had earlier worked at the Patent Office as Head of the Trade Marks Registry. Alison holds the view that the international competitiveness of UK companies depends as much on innovation as on exchange rates and labour costs. She wants them to be encouraged to protect their technology and at the same time extract maximum commercial advantage from their intellectual property. Tony Bowdery is Director in charge of intellectual property and licensing for the Defence Evaluation and Research Agency (DERA). He graduated from the University of Birmingham and worked for one year as a patent examiner and for 2.5 years as an analytical chemist before joining the Ministry of Defence as a patent officer. He qualified as a Chartered Patent Agent in 1976 and has gained experience in chemical/materials/biotech drafting and prosecution, contracts/agreements (including international collaboration), software licensing and awards to inventors. Tony was assistant Director in charge of IP policy for the Ministry from 1990 until taking up his present appointment in 1996. He writes that as an R&D organisation with no manufacturing outlet, DERA uses its IP to promote technology transfer to industry and increasingly form alliances with industry to sustain capability and to gain access to civil technology of potential defence use. The talk will address the background of DERA and in particular the scope for two-way technology flow. Dr Robert Nolan, product licensing manager with Zeneca Pharmaceuticals, first became involved with the pharmaceutical industry when he took up the position of laborleiter at the Sandoz Research Institute in Vienna, where he spent seven years. This work involved fundamental studies of the mechanism of protein biosynthesis and the mechanism of action of a variety of antibacterial agents. He then moved to ICI Pharmaceuticals, subsequently Zeneca Pharmaceuticals, where he became head of natural products research with a special interest in seeking new agents in the treatment of cancer and bacterial disease. Robert moved into the licensing function in 1979. He has undertaken major international deals including licensing-in of compounds and licensing out of technology collaboration agreements and patent licensing. President’s DiaryMore than 300 delegates attended a most enjoyable International Conference in Melbourne. This was held at the brand new Crown Towers Hotel, part of the Crown Casino complex. The facilities were absolutely ideal for this event, and a few people were spotted having a flutter! The proceedings started with aboriginal music and the Australian theme continued (not surprisingly) with talks about wines and a visit to the famous Melbourne Zoo. Unfortunately, it was evening and only the reptiles were on view! We enjoyed a full programme; of particular note was the plenary session called the Licensing Hypothetical. Apparently popular in Australia, this took the form of a role playing session by ‘willing’ volunteers, each taking the part of a lawyer, researcher or company involved in developing an antidote for Viagra. Some very interesting licensing and ethical issues were considered. As can be imagined, there was both a serious and light hearted tone to his hypothetical. I understand the subject matter was chosen by the International President Platon Mandros, a keen golfer after he noticed that his player partners' golf swings had noticeably worsened after their wives started plying their evening hot chocolate with Viagra! A fabulous Gala Dinner Dance at the Crown Towers Hotel rounded off the event. In spite of the long journey for most attendees, everyone agreed that it was a very worthwhile, enjoyable and informative event and are now looking forward to the next International Conference in Amsterdam next May. There has been great interest internationally and particularly in America in the setting up of LES societies in other countries. At present the LESI membership committee has its sights set on India and, because of the historical connections, has asked us at B&I if we can help in establishing a LES presence in that country. Members who perhaps have business or other interests there and who might like to help in promoting this initiative should get in touch with Chris Goodman or myself. We can then discuss the best way of taking matters forward. After nearly five years as chair of the Education committee, Kurt Deutsch has decided to stand down. In a report to Council, he says special thanks must go to David Stanley, Ian Traill, Fiona Nicolson, Trevor Hunter and Stephen Powell for constant encouragement and hard work in ‘making it happen’. Stephen Powell has now taken over Kurt’s position and I am sure we all wish him luck at the helm of a most active committee. And now it is time for me also to prepare for departure. I look forward to chairing the first part of the Annual Conference in Glasgow and then, at the Annual General Meeting, giving thanks to all who have supported me so well during my term of office. It has been a very pleasant duty, and I am proud to have been your President during a year of such great achievement. |
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PeopleMember Nicola Amsel reports that her firm Amsel & Co of Manchester has established a London presence – tel 0181 575 7070. Kirk Bloomgarden, popular speaker at the recent Scotland region meeting, has been appointed executive director of the Copyright Promotions Group. Elizabeth Holt is the European Commission’s new representative in Scotland. Based in Edinburgh, she leads a team of four whose main task is to keep the EC in Brussels informed of developments in Scotland. Before joining the Commission, where she worked on employment and social affairs, Elizabeth was at the Scottish Office. |
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IPR ‘key component’ of successful businessEA Technology (EAT) recently welcomed some thirty North West region members and guests at a very successful meeting at Capenhurst near Chester, writes Andrew Rankin of Hill Dickinson Solicitors. The visit, hosted by chief executive Dr Stuart Exell and commercial manager Bob Millar, included a tour of the site and a brief introduction to three very different technology applications. The company, successor to the Electricity Council, had been guided through the transition from a publicly funded organisation to a business owned by its 300 or so employees with an annual turnover of around £15m to £16m. Stuart indicated that the exploitation of IPR was now a key component of that business. He outlined the way in which EAT received money from customers to develop applications, the customer taking the IPR specific to that application. This left EAT to retain the IPR in that technology and so use it in other applications. Joint ventures involving the licensing of technology to other organisations were clearly an essential element of how EAT operates. For example, a venture to develop an electromagnetic pump for use with liquid metals brought together EAT’s technology expertise and their partners’ knowledge of the aluminium industry. Such ventures also helped EAT absorb the development costs of the technology. Income is also generated from taking on PhD students. This enables the company to develop and invest in new technologies while at the same time allowing it to retain the IPR. Stuart and Bob spoke in particular about the problems a company like EAT faced in protecting intellectual property. Stuart explained that the cost of obtaining a patent could seriously diminish the profit margin on a project where the customers, as usual, expected EAT to absorb that cost. Interestingly, he said that some customers viewed patent protection as only of limited worth, and not the deterrent it should be! |
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Top Getting familiar with the competitionIt has been a busy few months for member Susan Singleton. Late last year she gave birth to twin boys and has now announced the publication of three new books*. One is Blackstone’s Guide to the Competition Act 1998, so we asked her to tear herself away from the nappies and publishers’ contracts to comment on this most topical subject. She writes: All licensing executives should become familiar with the provisions of the Competition Act 1998, which is due to come into force on 1 March 2000. Licensing contracts drafted now should reflect the forthcoming new requirements. The Act is nothing new to those who already operate under EC competition law in Articles 81 and 82 of the Treaty of Rome. And for those eagle eyed clever dicks, that is not a typo. Articles 85 and 86 became Articles 81 and 82 on 1 May 1999 when the Treaty of Amsterdam came into force in the UK. This was a smart exercise resulting in the renumbering of most of the provisions of the Treaty of Rome. Chapter 1 of the 1998 Act prohibits anti-competitive agreements. This mirrors the wording in Article 81. However there is no requirement that the arrangement affects trade between EC member states. Chapter II prohibits abuses of market power in the same way as Article 82, except again that there is no requirement for an effect on inter-state trade. Agreements exempt under EC competition law are automatically exempt from the provisions of the Act. It has taken over 10 years from proposals for the Act first being put forward to its coming into force. Just as it does so, the European Commission in a 1999 White Paper has announced proposals to devolve to national level notifications, thus throwing into disarray the “parallel exemption” provisions in the 1998 Act before they even get started. Those involved with IP should note that important guidelines on licensing IP under the Act are still awaited. Consultation on draft guidelines on vertical restraints is already taking place and should be considered alongside the 1999 proposals of the Commission in this field. It is unfortunate that important provisions on (1) vertical restraints (2) de minimis and “small agreements” and (3) IP licensing have all been left to regulations which have yet to be promulgated. * Blackstone’s Guide to the Competition
Act 1998, Blackstone Press, £21.95 |
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Plenty of workshop choices at the Glasgow Annual ConferenceThe conference will open on Thursday 8th July, with a healthcare symposium exploring ways to capitalise on inventions using the tools of enabling, or platform, technology. Cathryn Campbell of Campbell & Flores of San Diego, who put it all together, points out that in contrast to patents in other industries, those in the field of biotechnology often do not cover the actual commercial product. Rather, many of the most important patented inventions in the field are concerned with the tools useful to identify a commercial product, enabling or platform. Examples include methods for producing extensive libraries of molecules, and methods for screening compounds for specific activity. While the method of making a library, for example, and potentially the library itself, may be patentable, claims will not cover the product identified as having commercial activity. Speakers dealing with successful strategies to license tool technology, enforcing patent rights and related points include Dr Mark Litton of Chiralsciences, Washington USA and Cambridge UK, Mauricio Flores of Campbell & Flores, San Diego, and Ingeborg Voelker of Uexkull & Stolberg, Hamburg. Christi Mitchell, chair of the LES Healthcare committee, is to head a team including Dr Keith Horspool to discuss with participants ways in which small concerns in the pharmaceutical industry can work with the giants to mutual advantage. Dr Keith Horspool is a pharmacist with ten years experience in the pharmaceutical industry. He joined Pfizer in 1987 as a scientist in the pharmaceutical research and development department where he was responsible for provision of formulation expertise at the discovery-development interface. Over the years his interests have expanded into various scientific areas with particular emphasis on biopharmaceutics and drug delivery. In 1996 he was appointed as Group Manager, Pharmaceutical Research Group, Zeneca, a dedicated international team of scientists responsible for profiling drug candidates and for application of drug delivery systems across the whole Zeneca portfolio. His strong interest in drug delivery is focused on establishing collaborations with external technology providers to identify delivery systems that offer life cycle management and product differentiation opportunities. LES members Tony Samuel, PricewaterhouseCoopers (PwC) Intellectual Asset Management UK partner and Melanie Butler, PwC Revenue Recovery Services UK senior manager, are to lead a workshop called Intellectual asset management – cradle to grave. This is designed to provide an overview of the intellectual asset management (IAM) process that enables businesses to better leverage their patents, brands, trademarks, copyrights, trade secrets and propriety know-how to increase shareholder value and improve competitive position. IAM uses a structured approach to leverage under-utilised intellectual property and valuable corporate knowledge. Topics to be discussed include the process, the benefits of valuation, the advantages of patent mapping, maximising royalty rates and licensing revenue. Tony Samuel graduated Batchelor of Commerce from the University of Western Australia and is a member of the Institute of Chartered Accountants in Australia and an affiliate member of the Institute in England and Wales.He has held several positions in Australia, Hong Kong and London, and was admitted to partnership in PwC in 1998. Melanie Butler graduated Bachelor of Science in Business from William Carey College, Hattiesburg, Mississippi. She is a Certified Public Accountant in that State and her range of experience in revenue recovery services covers royalty and contract compliance services for clients across Europe, the United States, South America, Africa and Asia. In industry, her experience takes in pharmaceutical, entertainment and consumer goods. Ways to control parallel importers and similar ‘across the water’ problems will be debated at a workshop to be lead by Benedict Bird from London and Michael Dean from Glasgow. Benedict is a solicitor in the intellectual property and technology department of Linklaters & Paines, where he specialises in particular in patent litigation and competition law as it affects intellectual property. His patent litigation experience includes cases involving coronary angioplasty stents, balloon catheters, ink-jet printers, oilwell drilling processes, biotechnology (HCV) and glass treatment processes. He is an associate member of the Chartered Institute of Patent Agents. Benedict read engineering at Gonville and Cauis College, Cambridge, trained at Simmons & Simmons, and joined his present firm in 1993. Michael is currently partner in charge of Maclay Murray & Spens’ EU and competition law practice and of the firm’s Brussels office. He read law at Glasgow University and at Europa College, Brugge, and trained with a general practice in Glasgow before moving to London and then back to Glasgow. He chairs the Glasgow Export Club and the German-British Chamber of Industry & Commerce in Scotland. Learning to love the InternetGordon Howell of Internet Business Services Consulting will join other distinguished speakers on the first day in leading a debate provocatively entitled Intellectual property is dead long live the Internet. Gordon is the founder and managing director IBS Consulting and is an international speaker on internet business and technical issues. He founded the predecessor organisation, the Scottish Internet Business Association. Electronic commerce – current legal issues, the workshop planned for the second day, gives participants a further chance to study the delights and problems of the e-mail – or at least to pick up literature about it. Speakers here will be David Marsh, a partner in the central London commercial law firm Needham & Grant, and Dr Roger Till, a director of e centreUK. Since 1984 David has been the legal advisor to the U.K. international trade facilitation body, SITPRO, a DTI activity, and through that connection he became involved in legal aspects of electronic commerce and international trade facilitation. He is chairman of the legal advisory group of e centreUK and legal advisor to the UK’s EDI standardisation body, UKCEDIS. Roger is a director of e centreUK, formed last year by merging the Electronic Commerce Association (ECA) and the Article Number Association. He joined the ECA early in 1996 as chief executive and sought to develop it as the UK focal point for sane and sensible advice about best business practice in electronic commerce. He is a vice chair of Electronic Commerce Europe. He was for many years involved with BP, initially in software development in BP Exploration and then in the BP Head Office IT and Telecomms Strategy Team, where he became their Worldwide EDI Co-ordinator. New drug delivery systems could spell big business for small businessLES Britain and Ireland delegates attending the LES International conference in Melbourne will be reporting to their committees and special interest groups on a wide variety of matters. First to get to the word processor for News Exchange was Christi Mitchell, chair of both the LESI and LES B&I Healthcare committees, with this brief note on flourishing biotech concerns and news from the drug delivery front. The managing director of Amrad, John Grace, explained to one of the well-attended healthcare meetings how the 12-years old company now has 35 patented healthcare inventions. These technologies are derived from the universities and from their own R&D laboratories. Amrad’s lead product is an attenuated human rotavirus, a vaccine now in phase II clinical trials with an option to Smith Kline Beecham. Dr Hugh Niall from Biota Holdings reported on how the company, which became listed on the Australian Stock Exchange in 1985, now has a market capitalisation of Aus $418m. The focus for Biota is viral respiratory disease and cancer. Biota licenses in technology from universities throughout the world and has its own laboratories at Monash University. Products include Relenza®, a flu vaccine licensed to Glaxo Wellcome, an oral replacement for insulin sourced from CSIRO and Fluoia®, an influenza diagnostic test kit. In a very amusing presentation, Professor Neville Norman from the University of Melbourne told a very happy audience that licensing would be responsible for major economic future development. He set out a ‘total shock’ scenario where economic growth came to a standstill and the sensible strategies to be adopted included a mix of the abolition of silly economics, the promotion of licensing, innovation and patents to the public, and the abolition of the term licensing/patent ‘monopoly’ on the basis that licensing creates a sole title holder (Greek – katehos) hence shortening this to monokat, not monopoly! At a fascinating drug delivery workshop I had the pleasure of chairing, it was pointed out that in 1974 there was probably only one drug delivery company and today there are well over 300, generating new drug delivery royalties of between 5 and 15% in a market valued at $22 billion today. The market is dominated by oral controlled release delivery, followed by passive transdermals and with the injectible market now trailing. As it became clear, one intention behind new delivery system developments is the need to move the site of therapy from the hospital to the home. The preferred patient route of administration is now the one-a-day oral system or transdermal patch. The managed care systems will pay for enhanced delivery systems if the patient outcare can be improved – the home setting will be facilitated by self-administration. New systems include injectible controlled release, which reduces the frequency of dosing. There is increasing interest in pulmonary administration, where the devices are becoming smaller and easier to use. Biotech drug delivery includes the delivery of peptides and proteins and primarily requires parental administration. New delivery systems for vaccines are under development and include nasal and transcutaneous immunisation. For all the new delivery systems the key issues affecting licensing include revenue potential, profitability, drug delivery technology added value, development issues (ie regulatory requirements), the speed to take the technology to a pilot study, the value of the IP, and the exclusivity potential. The major pharmaceutical companies do not develop the majority of new delivery systems and therefore to some extent the big companies’ need, options and ability and desire to purchase equity in the drug development concerns will determine the life of these technologies. In general, it was reported that in order for the big companies to take an interest, the new delivery system must be able to generate beyond $350 million a year to this market which is forecast to reach $78 billion by the year 2005. Top How to tackle IPR abuse on the InternetDevelopments in Internet technology are providing important challenges and threats for owners and licensees of intellectual property, especially brand owners. Ben Goodger, chair of the Society’s IT and E-Commerce industries special interest group, comments on emerging types of internet abuse affecting IPR and ways of dealing with them. Metatags and Keywords. Established search engines help you locate information on the Internet, but they fail to take you directly to the site you are seeking. If you type in a well known brand or company name, you are likely to get a long list of related and unrelated sites - with the official site well down the list! Not surprisingly, site owners are now using technology such as metatags and keywords to help them attract traffic to their sites. If they are not licensed or otherwise authorised, this is a form of trade mark infringement and diversion of potential customers and licensees away from your site. Metatags are hidden lines of code incorporated into a web site to take advantage of the fact that some search engines index sites under words used in metatags. Regular monitoring of the Internet can detect use of your brand in metatags in unrelated or competing sites. Keywords can now be registered with independent operators of gateway sites that enable direct access to sites via keywords. Entry of a registered keyword (one of your brands for example) into the keyword search site takes you direct to the registered site - and if someone else has registered your brand as a keyword this will not be your site. Again, a system that can be used to the advantage of brand owners can very much be used to their detriment. Linking and Framing. Another increasingly common practice is the establishment of hyper text links from one site to another. Shallow linking takes you, via the link, to the home page of another site. Deep linking takes you to a page within the other site. Framing, where information from a web site is framed by logos or advertisements, is also increasingly common. Both technologies allow others to associate themselves with your business. Unauthorised linking or framing can generally be prevented by technical means, but should also be enforced by legal means such as claims for breach of copyright and trade mark infringement. Global Clearance. Before putting any brands or trade marks onto your Internet site, obtain international clearance or you may be inadvertently infringing the rights of others. Our electronic global clearing service uses the latest technology to enable quick, efficient and cost effective clearance. Internet Monitoring. Regularly monitor the Internet for misuse of your brands to avoid the serious risk of diminishing or losing your rights. Monitor your own site to identify your most popular pages, the most common routes through/entry points, links which provide most of your traffic and gain evidence to support intellectual property claims. The Internet may be a jungle but is certainly not a ‘law-free zone’. Licensing executives and their advisers should adapt existing laws and procedures to deal with new challenges or lobby the authorities for appropriate legislation. A Bill designed to deal with E Commerce was mentioned in the Queen’s Speech last year and is under discussion at the moment - I hope to update readers on progress in the next issue. For more information contact Ben Goodger on 01865 791990; fax 01865 791772; ben@iprights.com TopPublicationsNew
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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 |