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LICENSING EXECUTIVES SOCIETY
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Chris Goodman Elected President for a second yearChris speaks to the AGM of his aim to make LES B&I a more professional organisation. In a change to LES B&I tradition, Chris Goodman has been elected President for a second year. The regulations of the society do not specify a time limit on the period of office for the President. Having discussed the matter with Council and past presidents he has agreed to retain the presidency for another year. It has been decided that in future the usual term for President and Vice President should be two years but in exceptional circumstances a one-year term would be possible. The commitments undertaken by the President have increased significantly over the past few years and it was felt that retaining the position for only one year was an immense amount of work without allowing the presidents to achieve as much as they would wish. It seemed that as soon as they became familiar with the post, they were stepping down to pass the title on to a new President. However, if the society wishes to attract capable members to serve as President, the day to day responsibilities of the post must be reduced. It is proposed that a number of new committees be formed, taking responsibility for various areas of the society's administration. Each Council member will be expected to serve on at least one committee, reflecting the general organisation of LESI. Chris stressed to the AGM that he is keen to make the society into "a more professional organisation". One of his particular interests is education. Chris, along with Stephen Powell, Chair of the Education Committee, plan to run a licensing course in October based on excellent material put together by LESI. As an additional benefit to members, LES B&I are now able to award continued professional development (CDP) points, for TM/CPA solicitors, at many of the society's meetings. Chris welcomes suggestions from members about ways in which the society can make improvements. He also encourages members to consider serving on committees. The names and contact details of chairs of current committees are found in every edition of News Exchange. This year Chris, on behalf of LES B&I, was particularly pleased to welcome Ed Shalloway, President of LESI, to the annual conference in Oxford. Ed spoke, at the conference dinner, of the great contribution Britain and Ireland have made to LES International. LES B&I is second in size to the US and Canada and is second only to the US and Canada in the number of officers it has provided. At present LES B&I have five chairs of LES international committees and, following in a long tradition of LESI secretaries from Britain and Ireland, Barry Quest has recently been elected to follow James Leavy and will take up his new position at the Palm Desert meeting later this year. Ed Shalloway told delegates that earlier this year he had asked Congressman, Phil English, to fly the American Flag over the Capitol in Washington DC in recognition of the help Chris Goodman had given him. At the conference dinner he presented Chris with a certificate to commemorate the event. Yet again the annual conference was very successful, attracting 85 attendees. Chris Goodman and Christi Mitchell, Vice President LES B&I, are already planning the June 2002 conference to be held in Cambridge. Top President's Diary
As President I attended the annual conference and AGM at St Catherine's College, Oxford at the end of June. The weather was kind to us and I was happy to meet so many of you in Oxford, both new and long-time members. My thanks go to all plenary and workshop speakers and also to all involved in the organisation of the conference and the introductory licensing course. There are so many that to mention anyone by name would not be fair, so many thanks to everyone. The conference was a great success and the venue appeared to be most suitable so far in terms of the conference facilities, the accommodation and excellent meals, not to mention the lovely town of Oxford. For the first time the conference was awarded continuing professional development (CPD) points for solicitors and trademark agents and we hope that future annual conferences and also other meetings may be awarded CPD points too. My thanks to all delegates who completed the evaluation forms, which are essential for the award of CPD points. We will also take note of your comments. At the AGM, Council were sorry that Nigel Jones of Linklaters resigned due to his transfer to Germany for a three year period and that Trevor Hunter and Michael Horlington also resigned. All three have contributed a great deal to the society. My thanks and those of the other Council members were expressed at the AGM for their services to LES. Council was pleased to welcome back Jeremy Brown, a past president of LES GB & Ireland and of LESI, who was re-elected to Council. As President I will attend the pan-European meeting in St Petersburg and as Chairman of the Environmental Technology Committee of LESI, I am making the final preparations for the workshop in Osaka in 2002. This has been a very hectic and successful year. We have many things planned for the coming twelve months and I hope to meet more of you at the LES meetings around the world. Chris Goodman
News and MeetingsLES North West Region Philip Woods of Hill Dickinson has taken over from Mark Goodwin as Chair of North West region. Qualifying as a solicitor in 1974 he moved almost immediately, in early 1975, to Hong Kong, to work for the newly formed IP department at Deacons. He is very pleased to have been elected Chair of NW region and looks forward to increasing the membership in the NW. He also hopes to encourage more people to attend the already VERY successful NW region meetings. Philip's contact address will change in September. Both old and new addresses are listed on the back page. His email address will remain the same. EC/Laws Committee Susan Singleton has taken over the Chair of the EC/Laws committee from Nigel Jones. She is one of London's leading competition lawyers and IT/computer lawyers. Those of you who attended the annual conference will remember Susan gave the audience a comprehensive update on competition law. Susan is a solicitor with her own firm, Singletons, which she founded in 1994. She specialises in UK and EC competition law, intellectual property (including computer law) and commercial law. She is author of "Blackstone's Guide to the Competition Act 1998" and writes over 20 legal articles a month on competition, Internet and commercial law. She has published more than 20 legal books and contributed to many others. This year her book, "Gower's E-commerce - A Practical Guide to the Law" is published. Susan is married with five children. News from LES Ireland LES Irish section committee held its AGM and luncheon on Friday 8th June 2001 in the Constitution Suite of the Shelbourne Hotel in Dublin. The guest speaker was Ms Kirsten Anderson, Assistant Intellectual Property Counsel with Elan and she was accompanied by Ms Ena Prosser, Director Strategic Technology Analysis, Corporate Office of Technology, also of Elan. Kirsten gave LES members and guests a very interesting talk on Elan's business in Ireland and the meeting was followed by the AGM. At the AGM, I was re-elected for my final(!) year as Chairman and Emma O'Neill of BioResearch Ireland was voted Vice-Chairman. The Irish section committee Secretary remains Robert O'Shea and Niall Rooney was elected as a new committee member. Mary Swords
LES NOrth East Section The North East Section of LES has been inactive for some time, but a new committee has been formed with the intention of reviving the section. OUr immediate past President, Trevor Hunter, has accepted the role of Chairman and Alison Murphy of Walker Morris has volunteered to act as secretary. The other committee members are: Lucas Bateman of Pinsent Curtis, Alistair Neill of Appleyard Lees and Liz Ward of Hammond Suddards Edge, but now heading up a new IP department at Keeble Hawson Planning is underway for a series of meetings and members in the North East can look forward to further announcements. |
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People NewsTrevor Hunter, immediate past President of LES B&I and chair of NE region, has been invited to give a presentation to the North West Chemical Initiative's (NWCI) monthly information exchange, "Chemical Elements". The September meeting of NWCI, which is funded by the DTI, is entitled "Technology Transfer". Other speakers at the event will be: Kevin Wooff, Technology Diversification Manager (NW) of the Defence Diversification Agency (formerly DERA), Allan Samuel of Shell Global Solutions and Dennis Langley of Enterprise PLC. LES members working in the North West chemical industry may wish to attend this meeting at 16:00 - 18:30, on 13 September, at The Heath, Environments for Business, Runcorn. The meetings are informal and networking is encouraged. The "Chemical Elements" meetings are free to NWCI members, there is a small charge for non-members. For further information please contact:
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2001 Annual Conference
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| YEAR ENDED MARCH | 1999 | 2000 | 2001 |
| University investment £k | £500 | £1000 | £1000 |
| Staff | 9 | 17 | 21 |
| Projects | 243 | 319 | 415 |
| Patents filed pa | 51 | 55 | 63 |
| Licences/options pa | 18 | 21 | 32 |
| New companies pa | 3 | 6 | 8 |
Table showing Isis Innovation's results over 3 year period
Options or licences have been signed on over 80 projects over the last 5 years. Some of those projects will generate over £1 million in royalties.
Spin-off companies formed already this year cover a diverse range of businesses: GPS/GSM tracking; pollination; genealogy; press tooling; archaeological consultancy.
It is clear that, although extra funding would be very welcome, the innovative spirit is alive and well and generating income from its licensing!
The final session at the conference was a Q&A spot, giving delegates the chance to ask questions to a panel of experts. Any questions?
The recent LES Britain and Ireland annual conference concluded with an interesting panel discussion on issues raised by the audience. The panel covering a wide range of expertise comprised Dai Davis of Nabarro Nathanson, Stephen Mansfield of Boots Healthcare International, Stephen Powell of Williams, Powell and Associates, Ian Buchan from Eric Potter Clarkson and Christi Mitchell of Medius Associates Ltd. The Chairman's seat was occupied by Ben Goodger of Willoughby & Partners.
The first discussion focused on the trading of technology over the Internet with companies such as yet2.com trying to match potential licensors with possible licensees. The overall feeling of the panel was that, whilst there may be a place for such a service, it would not necessarily change the way things are presently done - it would complement rather than replace. The panel also felt that yet2.com was still relatively unsophisticated and needed to develop to provide a truly valuable service to the industry.
A question from Michael Connor of Connor & Co prompted a discussion by the panel on how well companies managed their intellectual property portfolios, with Stephen Mansfield raising the question of 'how can a company achieve value from its portfolio without first knowing what it contains?' He subsequently commented that once the portfolio had been analysed, a company would then need to decide whether they would attract more value from licensing what they owned as opposed to licensing in new technology to augment that portfolio. Out-licensing needed full corporate commitment to work effectively.
Michael raised a second question as to whether it would be preferable to have separate licences dealing with patents, trademarks and technology where these issues arose within the same deal. The panel was generally in agreement that separate agreements would usually be preferable given the different nature of the rights and obligations involved. However, Ben Goodger validly commented that separation of the agreements may make termination and management of the contracts more complex.
The session ended with a discussion point raised by Raja Sengupta of Shasens. He posed the teaser of whether the Brits were getting braver or greedier when it came to investing in start-ups and joint ventures. Christi Mitchell commented that there were more business angels and investors but that academics could be unrealistic about income generation. Isis was doing very well but that was due to having a great team on board. Overall the panel felt that expectations had risen significantly in the recent past, both on timescales and value, but that attitudes were again starting to become more cautious and investors were increasingly likely to pull the plug where they did not see results. However, failure was becoming less of a stigma.
Tracey Huxley
Shoosmiths Solicitors
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No Accounting for Taste?
Everyone knows that a company's book value is not a true representation of the company's worth. The ratio between the market value of most companies and the number that appears on the balance sheet is now greater than 5, even with the recent stock market volatility. This has grown from less than 1 in 1978 to greater than 9 in the case of the certain new media and IT companies.
This can't be as a consequence of irrational market hype. We all know that balance sheets must be missing something.
It is generally agreed that the difference between market and book value is a rough estimate of the value of the company's "intangible assets" - the brands, skills, technology, management expertise, know-how, contracts, patents, goodwill etc.
Outside investors, including the stock market itself, are keenly aware of and interested in these assets. They must decipher and use whatever little information about these assets is available in order to allocate their investment capital. Hence, the companies that can effectively communicate information about these assets are better able to compete for capital. These companies are also better able to extract additional value from these assets to improve their company's competitive advantage.
But all companies must therefore be able to identify these assets - only then can they prioritise, manage and fully exploit them! Accounting for intangible assets is an issue for investment, but it is more immediately a critical issue for the management as a means to increase cash flow.
It was in light of this changing marketplace that a Congress on Intellectual Asset Management, the IA= Congress 2001, was arranged by Targeting Technology Ltd at Gleneagles in February. (Intellectual assets were defined as the intangible assets that can be recorded in some way and include, therefore, intellectual property).
The diverse group of attendees, ranging from business angels to biotech companies, from design houses to ITC organisations, from "traditional" established engineering businesses to newly established SMEs, were to hear from over 35 international speakers about best practice in intellectual asset management. It was perhaps not surprising that the congress was oversubscribed by more than a third and the organisers were delighted that so many participants fought their way through appalling weather conditions (5 inches of snow!) to be there.
The IA awareness raising did not stop with the congress; it goes on though the one-to-one surgeries with the IA specialist providers and IA= workshops on intellectual property and intellectual assets, a number being provided by Scottish-based LES members.
For further information, see www.iaequals.co.uk or contact
Caroline Sincock on 0141 946 0500
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LES B&I Council Members - Stephen Powell
Stephen, a patent and trademark attorney, is a member of the LES B&I Council and chairs the Education Committee. He is also Vice-Chairman of the LESI Management and Internal Publications Committee.
Brought up in Yorkshire, mainly in Scarborough, he gained a scholarship to the local school, then read physics at Merton College, Oxford. He began his career as an examiner in the UK Patent Office and filled in the evenings studying for HNC business studies, Institute of Linguists exams in French and German and a law degree. He jumped ship to become a trainee patent agent just before a planned transfer to the EPO in Munich. He has spent the last twenty years with one firm, JF Williams & Co., now Williams, Powell & Associates. Seemingly endless professional exams were followed by a stimulating period as a tutor. Despite his fascination with the intellectual property field, he has found time to study Japanese and to become a qualified hockey umpire and coach (more exams!). In his remaining spare time, he is a governor at a local school and a vice-president at Tulse Hill Hockey Club.
His wife Barbara lends a touch of sanity to this somewhat frantic lifestyle and his daughter Louise is currently awaiting her A-level results - another exam freak!
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The Latest Pre-Nuptial Accessory?
His and Hers Fertility Testing Kits
The first "his and hers" home fertility testing kit has been developed by scientists in the UK and may be available over the counter by next year.
The new kit has been developed by Genosis Ltd (UK) in conjunction with research scientists at Birmingham University and will be marketed under the name 'Fertell'. Genosis has already registered the name as a European Community trademark.
The kit incorporates male and female fertility tests. The male test measures the concentration of active sperm produced, this being the most predictive indicator of male infertility. The female test measures the level of follicle stimulating hormone, which provides an indication of the number of eggs present in the ovaries.
Details of the technology behind the male home-use fertility test were presented by inventor Professor Christopher Barratt at a recent meeting of the European Society of Human Reproduction and Embryology. Sperm collected in a container are introduced into a column of a cervical mucus-like substance maintained at body temperature (37°C) by an integral heater. Active sperm that are able to swim through the column are collected onto a test strip and tagged using antibodies. The appearance of a red line on the test strip indicates that the quantity of active sperm present in the sample is within normal limits. Genosis has filed a number of international (PCT) patent applications covering its technology in this area (see WO 99/66331; WO 00/09648; and WO 01/12783).
The home kit should provide a means for quick and easy diagnosis of infertility without the need for an initial visit to a clinic, and will allow couples trying unsuccessfully to conceive to seek early medical help should a problem be detected. Early diagnosis and treatment greatly improves a couple's chances of successfully conceiving and having a healthy baby, and is becoming increasingly important as more people choose to defer having children until later in life.
However, it would appear that fertility tests could one day become redundant altogether, thanks to research being carried out in Australia. Scientists at Monash University in Melbourne have apparently discovered a way to fertilise an egg using a cell from any part of the body, rather than sperm.
The technique has been used successfully to create embryos in mice using body cells taken from male animals. Body cells contain two sets of chromosomes, whereas sperm only contain one. In the normal process of fertilisation, the single set of chromosomes from a sperm cell are combined with a further set from an egg, to give a full complement of 46 chromosomes. The Australian research team found that exposure to certain chemicals caused the egg to eject the excess genetic material originating from the body cell, leaving the correct number of chromosomes. Embryos created in this way apparently developed relatively normally under laboratory conditions, and the next stage of the research will be to transfer the embryos into the wombs of surrogate mice.
In theory, the technique could eventually be used to allow couples to have babies that are genetically their own, even when the man has no sperm.
Dr. Michael Douglas
Wilson Gunn (Biosciences Unit)
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New Members
Council has been pleased to welcome the following new members to the Society:
- Mr Michael Bilewycz, Director, Mark force Associated Ltd;
- Dr Richard Connett, Transfer Manager, CMS Cameron McKenna;
- Dr Jeremy Crisp, Commercial Director, Cambridge Technology Centre;
- Dr Duncan Curley, Solicitor, McDermott, Will & Emery;
- Dr Susan Edwards, Business Development & Licensing Executive, Celltech Group Plc;
- Mrs Cynthia Johnson, Dickson Minto WS;
- Dr Patrick McCarthy, business Development Executive, University of Edinburgh.
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: The Kudos Partnership Ltd,
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