LICENSING EXECUTIVES SOCIETY

Britain and Ireland

NEWS EXCHANGE
Issue 82: December 2001 - January 2002

(Return to News page)

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WTO & Bush Legislation: Impact on Medicines and Patents

Christi Mitchell
Chair of the Healthcare Committee

On November 12th, at the World Trade Organization's (WTO) Doha meeting, an agreement was made whereby countries can seek a waiver on public health grounds on the WTO rules that guaranteed drug patents for 20 years.

In order to combat bioterrorism the Bush administration in the US had recently threatened to override the Bayer AG patent on the anti-anthrax drug Ciprofloxin (Cipro). This would have enabled other companies to produce the drug in larger quantities and at lower cost to the government. The key issue at stake here related to the Trade Related Intellectual Property agreement (TRIP), providing worldwide protection for medicines.

This area has proved contentious as poor countries made demands for drugs that they could not afford for treatments in cases such as AIDS. Last summer the US government was filing a complaint with WTO against Brazil for allowing alternate production of patented AIDS treatments. This government had threatened African nations with sanctions if they dared to disregard patent laws on HIV/AIDS drugs. The US government already had the right under its eminent domain authority to take compulsory licences on drug patents in health crises.

In the price battle that took place prior to the WTO meetings this November, a new bill was sponsored by Sherrod Brown to give the US Department of Health and Human Services the right to determine "reasonable remuneration for the use of the patent". Bayer AG had then to agree to supply Cipro to the Bush Administration at price of 95 cents per pill for 100 million Cipro tablets. The normal price would have been $1.77, probably higher than the generic version would have cost.

The new WTO agreement is seen by organisations such as Oxfam as a breakthrough deal to poor countries, it should bring down the treatment costs in the case of many life-threatening diseases. The pharmaceutical companies have (at the time of writing) not yet commented on the potential loss of patent life to their drugs and the knock on financial implications.

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President's Diary

As President LES B&I, I attended the Pan European conference in St Petersburg organised by LES Russia in September. Unfortunately, due to the cancellation of all flights from the US and Canada, following the September 11th tragedy, only two US delegates, who were already in Europe, were able to attend.

The conference, however, was well attended by approximately 400 delegates and was considered by all attendees to be a great success.

The next Pan European Conference will be in Prague in September 2002 and preparations are well in hand, including an outline program, which will be available in the New Year. At a meeting of the European Presidents, it was agreed that the following Pan European meeting will be in Paris in September 2004 and then in the UK, almost certainly in Glasgow, in September 2006. There will be no Pan European meetings in 2003 and 2005 because the LES International meetings in those years will be in Europe: Oslo and Munich.

As President and as a LES International delegate, I attended the LES US/Canada International meeting in Palm Desert and also Council meetings in October and November, together with the accompanying evening meetings. Bob Nolan, Director Global Licensing, AstraZeneca, gave an excellent talk in October to about 100 members and guests. In November, Stephen Potter, Commercial and Marketing Director, QED, explained how QED had developed into the successful company it is today. I would like to take this opportunity to thank all speakers who have come to LES meetings around Britain and Ireland. We appreciate you taking the time to share your expertise and experience with us.

We are pleased to announce that plans for the Annual Lunch and Morning Meeting are now complete. The lunchtime speaker will be from Celador Productions, the company who have made "Who Wants to be a Millionaire" such a success. Details of the morning meeting are found elsewhere in this edition of News Exchange. We hope to meet many of you at The Lunch in The Savoy on the 13th February. The Lunch is always a popular event and I suggest you book early to avoid disappointment.

I am now turning my attention to the program for the AGM which will be held in June 2002 in Cambridge.

As this is the last edition of News Exchange before Christmas I would like to wish all members a Very Happy Christmas and Prosperous New Year.

Chris Goodman
LES B&I President

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STOP PRESS - Of Drugs and Jeans

As we go to press two important ip issues engage the media. Whilst the third world battles to ensure affordable supplies of patented AIDS drugs (see our front page story), affluent Europe is far more concerned with a newly identified basic human right: the entitlement to cheap Levi jeans. This has resulted in severe disappointment: the European Court of Justice has just ruled that exhaustion does not apply outside the EEA and, for trade mark rights to be overridden, consent must be positively stated. Tesco does not therefore have the right to sell Levi jeans purchased outside the EEA and we will all have to make do with the M&S variety for Christmas.

The decision was the result of a referral from the High Court of Justice, following actions by Davidoff and Levi-Strauss respectively against a UK importer of Davidoff products, and Tesco and Costco in relation to their importation of Levi Jeans. The European Court of Justice was asked to interpret 'exhaustion' and 'consent'. Observations were submitted by the German, French, Italian, Finish and Swedish Governments. The Court confirmed that the Trade Mark Directive limits exhaustion to the EEA, and for there to be consent this must have been given positively. There is no appeal on this decision. It would be necessary for there to be a new European law, for example, by revision of the Directive, for the position now to be changed. Tesco have indicated that they will continue selling the imported jeans and it waits to be seen whether action will be taken against them by Levi-Strauss. Tesco and consumer groups are of the view that it is unfair that the UK customer should have to pay higher prices than elsewhere in the world, whereas trade mark owners are of the contrary view that their ability to control world wide supplies and prices enables them to invest in quality and desirable brand image.

Barry Quest
Wilson Gunn M'Caw

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Change to Board of Cirectors LES International Inc

On the second of November 2001 the new Board of Directors of the Licensing Executives Society International, LESI Inc., took office.

LESI consists of 27 national and regional societies with more than 10,000 individual members in 83 countries worldwide. LES sets the highest standards for and plays a major role in valuing, managing, licensing and maintaining intellectual property assets by conducting seminars, annual conferences, local and regional meetings, licensing courses and its quarterly magazine les Nouvelles which are all valuable sources of high quality education and international networking.

The new board consists of:

  • Thierry Sueur, president
    Thierry is Vice-President Intellectual Property and International Affairs at Air Liquide in Paris, France. He became a member of LES in 1988 because of his involvement in international licensing and the need for an international network. In 1990 he became involved in LESI due to the organization of the LESI Conference in Cannes in the South of France. Thierry was treasurer for LESI in 1998-1999 and is also past-president of LES France.

  • Melvin Jager, president-elect
    Mel is one of the senior partners at Brinks Hofer Gilson and Lion, a 130 lawyer IP firm in Chicago, USA. In 1978 he became a member of LES in order to meet with fellow licensing people. In 1980 he became involved in LESI as a natural extension of his activities within LES USA and Canada, his wish being to learn more about licensing and to extend his international network of people involved in this business. Mel has been treasurer for LESI in 1999-2001 and is a past-president of LES USA and Canada.

  • Edwin Shalloway, immediate-past president
    Ed is a senior partner in the law firm Sherman and Shalloway, located in Alexandria, USA. He became a member in 1974, being at that time involved in a number of licensing projects both domestically and internationally. He became involved in LESI around 1980 in order to improve his licensing knowledge, skills and techniques through education and networking with professionals involved in licensing and technology transfer around the world. Ed is also a past-president of LES USA and Canada.

  • Peter Chrocziel, vice-president
    Peter is a partner and joint leader of the worldwide practice group of IP/IT at Freshfields Bruckhaus Deringer in Frankfurt am Main in Germany. He became a member of LES in 1987, being heavily involved in licensing at that time, having taken over the department of Manfred Bohlig at Preu Bohlig & Partner, the acting president of LES Germany, who was killed in a sailing accident. He became involved in LESI through his work in international licensing and as secretary of LES Germany. Peter is past-president of LES Germany.

  • Masataka Hashimoto, vice-president
    Masataka is auditor at Japan Ethanol Company Limited in Tokyo, Japan. He has been involved in LES matters since 1972. He became a member of LES in 1986 through his work in the field of Intellectual Property at the Mitsubishi Chemical Corporation. He became acquainted with LESI in 1998 as he was nominated as International Delegate for LES Japan. At present Masataka is also president of LES Japan.

  • Barry Quest, secretary
    Barry is a partner at Wilson Gunn M'Caw, a patent and trade mark company based in Manchester, United Kingdom. He became a member of LES in 1986, as he was spending more and more time advising clients on licensing and wanted to extend his knowledge. Since 1991 he has been involved in LESI due to the international nature of this work. Barry is past-president of LES Britain and Ireland.

  • Willy Manfroy, treasurer
    Willy is director of Bornivall LLC, based in Kingsport, USA. He became a member of LES in 1977 when he needed to set up a new network for his job in licensing pharmaceutical products. In 1985 he became involved in LESI due to his need to meet with international people. In 1998 he started the LESI Chemical Industries Committee. Willy is also a past-president of LES USA and Canada.

For more information, please contact
Saskia van Dijk-Struyk
LESI Publicity Coordinator
Mobile +31 6 5025 3327
E-mail info@lesi.org
or visit www.lesi.org

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Into New Domains Part II

Introduction

Considering the controversy surrounding generic Top Level Domains names ("gTLDs") to date, and in particular issues such as cybersquatting and warehousing of domain names, together with the volume of cases so far under the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Dispute Resolution Procedure ("UDRP"), it was not surprising that when launching new gTLDs, '.info' and '.biz', the relevant registries sought to reduce the extent of problems past.

In Part II we consider the following two questions:

  1. What were the strengths and weaknesses of the pre-registration introduced for the launch of the '.info' and '.biz' gTLDs, having regard to the interests of trade mark holders?
  2. What available options now exist for trade mark holders and others, who may have been unaware of or missed the deadlines within the pre-registration procedures, yet still have a grievance in respect of a particular gTLD registration?

Aims

In order to consider the strengths and weaknesses of the pre-registration procedures, it is first necessary to summarise the aims, which these procedures sought to achieve. The rush by many, to place themselves in prime position to profit from the goodwill of another party, by capturing a domain name to which it had lesser entitlement than, for example, a trade mark owner, created a climate of conflict which has been an obstacle to the smooth administration of already existing top-level domain names such as '.com', '.org' and '.net'. This was a primary reason for the formation of the ICANN and its UDRP (currently in operation for '.com', '.org' and '.net' gTLDs), which sought to alleviate the burden on parties, either trade mark owners or domain name owners, in resolving conflicts. The aim in other words, was to provide a system, supplementary to the courts, which was less expensive, less cumbersome and tailored to the specific issues which domain names, as a new form of intellectual property, presented.

Hence it was important, in the implementation of '.biz' and '.info' gTLDs, to ensure, as far as possible, that the circumstances leading to the climate of conflict in domain name administration would not be exacerbated. If this were to occur it would potentially increase the demand on the UDRP, which although largely successful, was not without its flaws, which in turn could be further exposed. And so priority was placed on recognising the preferential status of trade mark holders, through the use of pre-registration procedures.

While these aims are laudable, they have been undermined by the fact that the pre-registration procedures in themselves have received some criticism. Indeed it is arguable that the '.info' and '.biz' pre-registration procedures merely serve as a litmus test in terms of the most appropriate and least problematic procedures for implementation of further (already approved) gTLDs in the near future. We set out below, a summary of some of the strengths and weaknesses of those procedures.

.Info

  1. The opportunity for exploitation of the system also existed with the '.info' domains in that applicants could increase their chances of securing a .info domain by selectively choosing the registries, for example those that submit a short first batch of requested domains for selection through the randomisation method operated by the Registry operator.

    However, it should be noted that the existence of a Sunrise registration does not remove the possibility of competing trade marks existing and the possibility still remains that Sunrise registrations can be challenged as discussed later in this article.

  2. While a registration during the Sunrise period grants reasonable assurance in respect of an entity's exact trade mark in the textual or word elements of the mark, it will still be necessary for trade mark holders, particularly those with substantial trade mark portfolios who may be particular targets for cybersquatting and similar activities, to cover off variations of their trade marks through registration of various forms of the '.info' domain name in the open registration phase (see below), so accordingly the benefit may be limited for larger players. Moreover it is not possible to make a Sunrise registration in respect of pending trade mark registrations, common law trade marks and trade marks registered after 2nd October 2000.

  3. It could be argued that the pre-registration procedure indirectly is more advantageous for those entities with a small number of trade marks (which are not affected by the exclusions mentioned at (b) above) who are interested in only protecting the exact form of their trade mark and for whom large scale typosquatting is not a significant issue. However, despite this, all trade mark holders were exposed to the risk that they could be prevented from entering the pre-registration round (through fraudulent or incorrect claims to trade marks) due to an inherent flaw in this procedure, being the lack of vetting of those Sunrise registrants entitlement to the trade marks in respect of which they claim to have rights. It is estimated that more than 50,000 pre-registrations may not satisfy the trade mark requirements set out under the Affilias registration policy. Affilias itself has indicated that it may be required to challenge the validly of certain pre-registrations.

.biz

  1. Trade mark holders who have missed the IP claim procedure for 'biz' gTLDs have missed a brief spell of preferential treatment.

    One of the benefits of the IP claim process for '.biz' gTLDs was that the procedures and policy were drafted specifically in light of previous cybersquatting experience. For example, the Neulevel Registration Policy, in elaborating on what constitutes "exclusively for personal non-commercial purposes", expressly mentions the well known 'sucks' registrations which feature prominently in the ICANN UDRP List of Proceedings . Neulevel provides that if such '.biz' registrations are used exclusively to criticise or otherwise express an opinion on the products or services of the company with no other intended business or commercial purpose, then the registration will be prohibited. Therefore, to an extent the likelihood of vexatious registrations may have been reduced.

    However, there still exists a lack of clarity in respect of the approach to be taken in such UDRP cases, for example on the issue of whether a 'sucks' prefix can rule out the likelihood of confusion with a registered trade mark. In a recent case the administrative panel was divided on this particular issue, and upon expiry of the pre-registration procedures, complainants may rely only on the options of the UDRP with all its flaws with or without the RDRP, or the courts, as discussed below.

  2. The IP claim procedure took place in parallel to the application process, and thereby sought to streamline registration generally; in conjunction with the reduction of the burden of proof (when compared with the UDRP ) for a trade mark holder in the context of establishing superior rights, on the face of it appeared beneficial to the trade mark holder.

    However, despite this, it was still necessary for trade mark holders to submit both an IP claim and an actual application in order to obtain a particular '.biz' domain, thereby increasing costs. The IP claim was not an application in itself and therefore came with no guarantees. Indeed in the US, a class action law suit was filed , alleging that Neulevel itself was operating an illegal lottery by charging customers for the chance to obtain the '.biz' name they sought while an opportunity for the trade mark holders, with extensive financial resources to increase the odds of getting a new name by buying multiple chances, existed.

  3. The benefit for a trade mark holder, of being made aware of a conflicting '.biz' registration is only realised where there is an exact match with a trade mark identified in an IP Claim form.

    This would not necessarily address issues such as typosquatting, whereby a slight misspelling can be sufficient to cause a likelihood of confusion among those searching for a particular web address. Moreover the procedure is merely one of notification and does not proclaim to investigate the merits of a registration, IP claim or trade mark similarity, therefore it will ultimately be necessary for any aggrieved trade mark holder to resort to a formal dispute resolution forum.

    So it seems clear that, although there were certain benefits to the pre-registration procedures, there were also weaknesses which at worst have left trade mark holders with further steps to take (not dissimilar to what has already existed), in order to ensure maximum protection, or at best, have not placed those who missed the pre-registration rounds at too great a disadvantage.

Available options

.info

There are three options available to a person or company with a grievance in respect of a '.info' domain name registration.

(i) Sunrise Challenge
This is only an option if the registration took place during the Sunrise Period (between July 25th and August 27th of this year ).

A Sunrise Challenge may be brought until December 26th of this year. After that only options (ii) and (iii) will be available. These are discussed in more detail below.

In order to successfully challenge a '.info' registration through a Sunrise Challenge and secure one of two available remedies, either cancellation or transfer, one of the following grounds must be established:

  1. The respondent has no trade or service mark registration at the time of the domain name registration;
  2. The domain name is not identical in text or in word to the trade or service mark registration;
  3. The trade or service mark registration is not of national effect; or
  4. The trade or service mark did not issue pre-2nd October 2000.

Any Sunrise Challenge can only relate to one domain name. Upon filing the challenge the respondent will be notified and must respond within 60 days. As with the UDRP there will be no 'in person' hearings. In the event that either party does not comply with the time limits set out in the rules, the WIPO Arbitration and Mediation Centre may proceed to a decision and may make such inference, as it deems fit from any parties' lack of response. It is upon a successful, formal challenge being filed that the actual trade or service mark registration is examined, something which was not done up to this point, hence the expectation that the number of these challenges is likely to increase before the end of the year (some as noted above, being brought by Affilias itself). A decision in respect of a challenge can be expected within 20 days, but unlike the UDRP may not necessarily carry stated reasons. Each of the complainant and the respondent must pay a USD$295 fee, part of which is refundable depending on the result of the challenge.

(ii) UDRP
This is an option if registration occurred during Open Registration Phase (September 12th to date, bearing in mind the quiet period mentioned in Part 1 of this Article).

(iii) The Courts
The Courts are always an option.

Options (ii) and (iii) are discussed below in the context of the '.biz' gTLDs.

.biz

Neulevel did make available an additional procedure, similar to the Sunrise Challenge procedure, namely the Start Up Trade Mark Opposition Policy ("STOP"). However the period for filing such STOP claims ended on the 1st November 2001, although those '.biz' registrations against which a STOP claim has already been filed will be locked until resolved.

The following are the available options, depending on the nature of the complaint, in relation to contentious '.biz' registrations, post registration.

  1. Restrictions Dispute Resolution Process ("RDRP") - if complaint relates only to non-business and commercial use;
  2. UDRP - if complaint relates to other grounds ;
  3. The Courts - always an option.

While (i) and (ii) are separate and distinct policies in their own right they can, and more than likely will, be combined so as to increase a complainants chances of success. It is useful to view the RDRP as an extra tool, which can be used in conjunction with UDRP to provide a more effective remedy for a complainant.

(i) RDRP

The '.biz' registration is subject to certain restrictions. The primary restriction is that it must be used for a bona fide business or commercial purpose. Any person or entity with this sole ground of complaint post the pre-registration procedures, should file a complaint under the RDRP. Importantly, it is not sufficient to bring a claim under the RDRP exclusively on the basis of alleged non-use of the domain name. Any applicable RDRP dispute will be governed by the Supplemental Rules for Restrictions Dispute Resolution Policy. It will be necessary to establish:

  1. that the registrant registered the domain name solely for the purposes of selling, trading or leasing the domain name for compensation; or
  2. that the registrant registered the domain name solely for the purposes of unsolicited offering to sell, trade or lease the domain name for compensation.

It is clear from the RDRP that personal use of or using or intending to use the domain name for the expression of non-commercial ideas will not constitute bona fide business or commercial purposes. These specific grounds have clearly arisen as a result of the experiences to date of cybersquatting and warehousing of existing gTLDs.

The other options (ii) and (iii) apply to both the '.biz' and '.info' gTLDs and so will be outlined together. However it is beyond the scope of this Article to deal in detail with the UDRP and Court remedies. It is intended merely to put the availability of these remedies in the context of the procedures available under the '.biz' and '.info' registration procedures.

(ii) UDRP

As noted above, the UDRP can operate in its own right, or in the case of the '.biz' gTLD, in conjunction with the RDRP. Each of the following three elements must be established:

  1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. The registrant has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

These grounds for complaint under the UDRP are broader than those contemplated under or arising out of the pre-registration procedures for the new gTLDs, although the burden of proof is clearly higher.

(iii) Courts

Nothing in the RDRP or the UDRP shall prevent any party to a complaint from submitting the dispute to a court of competent jurisdiction for independent resolution. Indeed, RDRP and UDRP dispute resolution decisions will be put on hold so that that option may be exercised by either of the parties for ten days before the RDRP or UDRP decision is implemented. There is no leave to the courts from the Sunrise Challenge procedure. This option is not an appeal from the RDRP or UDRP. The practice to date in the UDRP is that this is a little exercised option.

Conclusion

The new procedures in part add to the remedies open to a complainant, regardless of whether it availed of the pre-registration procedures or not. A relevant issue however, for those who have missed the opportunity to avail of the pre-registration system, might be the view that an Administrative Panel or indeed a court would take, upon learning that a trade mark holder complainant did not avail of the pre-registration procedures in order to protect its Intellectual Property. Notwithstanding this, it is submitted that this fact does not change the parameters of the UDRP, nor the burden of proof in court proceedings and therefore should not make a strong case any less strong. This is particularly so when it is considered that it is not even necessary to have a registered trade mark in order to file a successful complaint at WIPO. However, the additional remedies are only a temporary feature (save that the RDRP will remain available in certain instances) and the pre-existing remedies, with all their flaws, will still have to be relied on by complainants.

So while the aims of the new procedures can be surmised from past experience in domain name administration and, on that basis, have provided a temporary period of preferential treatment for trade mark holders, they do not appear to have significantly advanced or added to the procedures which were already in place. In themselves however they do serve as a yardstick by which to gauge the most suitable method of introducing further gTLDs. Therefore current trade mark holders would be well advised to remain informed of the developments in this rapidly changing area of law. In particular it will be interesting to note Affilias' own challenges to IP Claims as there is a possibility that some '.biz' gTLDs may again become available as a result of cancelled registrations.

Aside from the pre-registration procedures which are drawing to a close, there are still available options for trade mark holders and others to both challenge existing registrations and register domain names which are as close as possible to those which they seek on the open 'first come first served' basis. Suffice to say, every trade mark holder should seek to maximise the protection which can be obtained through such pre-registration procedures, but it is unlikely that anyone will have been unduly disadvantaged if they missed that opportunity this time around.

Part I of this article appeared in the October 2001 edition of News Exchange.

*The Authors are practising solicitors in the e-Commerce and Technology Group,
Arthur Cox, Earlsfort Centre,
Earlsfort Terrace, Dublin 2, Ireland.
Web Site : www.arthurcox.ie
©All Rights Reserved.

The comments in this article are intended as a general guide only and are current as of November 20th 2001.

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Did the Earth Move for You Too?

Intrepid members of LES Britain and Ireland recently risked life and limb venturing across the Atlantic to the LES US and Canada Annual Meeting. Not only did they run the gauntlet of the terrorist threats and anthrax alerts but also had the 'true Californian experience' - an earthquake one night measuring 5.1 on the Richter scale! I personally woke to find my bed moving and spent the next few hours wondering whether it was indeed what I thought it had been or whether the bad head cold I had been suffering from since the first day of the conference had finally taken its toll in making the room spin! Not quite as embarrassing as the other Brit who managed to sleep through the whole thing - perhaps a little too much Californian Zinfandel the evening before...

Leaving terrorists and earthquakes aside, the conference location of the Marriott Desert Springs Resort & Spa in Palm Desert, California, was exactly what we Brits needed as the UK started to plummet towards winter. With average temperatures in the mid to high 80s°F the lush golf course and the five swimming pools proved very hard to resist in favour of the wide variety of plenary sessions and workshops!

As always the meeting was jam packed with training on such diverse issues as biotechnology licensing, the evolution of IP management and licensing, doing business on-line in Europe and due diligence in IP transactions.

In addition to the 'serious' side of the conference, there were also many opportunities to relax and get to know fellow licensing professionals including a welcome reception, two evening dinner dances and several semi-formal lunches. Tours such as visits to the Joshua Tree, Palm Springs aerial tramway and the Living Desert (a wildlife and botanical park) were also available - Sybil Goodman, wife of current LES Britain and Ireland president Chris Goodman, tells me that the hot air balloon ride was well worth the 6am start! At least 100 golf enthusiasts also took part in the traditional Tuesday golf tournament although I'm not so sure about the numbers for Wednesday's 6.30am 'fun' run!

Despite the still recent attacks in New York and Washington, the meeting was well attended - estimated at around 900 to 1000 members, some from as far away as India and Australia - confirming that this is one of the pre-eminent dates in the LES worldwide calendar. Such conferences habitually attract a cosmopolitan audience and do a great deal to promote international relationships between members.

The next LES US and Canada meeting is set for Las Vegas in February with the annual meeting to take place in Chicago between 22 and 25 September 2002. If America does not appeal, there is of course always the annual LESI conference (Osaka, Japan April 7-10) or the LES Pan-European conference set for Prague from 8 to 11 September 2002. Further details of all meetings can be found on the appropriate web site: LES US and Canada - www.usa-canada.les.org; LESI - www.lesi.org; LES Europe - www.les-europe.org

Tracey Huxley
Shoosmiths Solicitors

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YET2.com

have double success in October

Yet2.com, the first global marketplace for the exchange of intellectual assets on the Internet announced two successful introductions in October.

  • ChromaDex Inc and Bayer AG have completed a yet2.com-enabled technology transfer agreement. Under the terms of the agreement, Bayer AG will license its bioluminescence, thin-layer chromatography toxicity (BIO-TLC) technology to ChromaDex, a leading supplier of phytochemical reference standards and toxicity screening tools to the nutraceutical, dietary supplement, vitamin, and food and beverage industries.

    In addition, the agreement states that ChromaDex and Bayer will jointly trademark products that ChromaDex develops which incorporate the Bayer BIO-TLC technology. Using the Bayer BIO-TLC technology, ChromaDex plans to manufacture a toxicity screening test that will enable nutraceutical, vitamin and functional food manufacturers to rapidly screen products for general toxicity at a lower cost than ever before. Bayer AG will also gain an equity stake in ChromaDex.

    Chris De Bleser, CEO of yet2.com said that in the past the "old boy network" would drive tech transfer deals, meaning that small companies with little name recognition would have no chance at making a licensing deal with a Fortune 500 company. This agreement sends a new message to small companies from all over the world that through yet2.com they, too, now have the opportunity to benefit from tech transfer deals with major corporations, regardless of their size or geographic location.

Later in the month yet2.com were delighted to announce that:

  • Procter & Gamble Company (P&G) had completed a yet2.com-enabled technology transfer agreement. Under the terms of the agreement, P&G will license a technology from its beauty care division to a competitor for use globally. The name of the licensee was undisclosed.

    P&G and the licensee began discussions on the deal after the licensee reviewed the offering on the yet2.com global marketplace.

    "As it stands now, royalties on this deal alone will substantially cover our entire capital investment in yet2.com, and then some" said Brad Trucksis, associate director, External Business Development and Global Licensing. "If we hadn't listed this technology on yet2.com, this deal may never have happened, or at least have happened as quickly as it did. At P&G, we are very serious about licensing core technologies and know-how and have more than 100 technologies listed on the yet2.com site."

    Chris De Bleser commented that brokering a deal between two competing companies was unique. Yet2.com had always known that the Internet would dominate the future of efficient technology transfer. Their on-line marketplace is enabling tech transfer deals that would never have occurred in an "offline" world.

These two major deals are certainly encouraging for yet2.com. Success has a habit of breeding success.

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UTEK Corporation Announces the Acquisition of PAX Technology Transfer, Ltd

On 28 September UTEK Corporation acquired PAX Technology Transfer Ltd in a share for share exchange.

According to Uwe Reischl, President of UTEK, "We are enthusiastic about this strategic acquisition. PAX is a high quality technology transfer organisation that provides us with an experienced base of operations in the UK and will allow us to expand our technology transfer business in Europe."

"We are pleased to consummate this merger as it is a logical next step in the growth and development of PAX. We believe that by working together with UTEK we can expand the services which we offer and further enhance our established ability in sourcing new technology acquisition opportunities for our clients," commented John D Emanuel, Chairman of PAX.

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News form LES GB & I Regional Groups

North West Region Report

Nicola Amsel reports that John Noble, Director of the British Brands group, gave an informative and stimulating talk to the NW group on 13th November at the Stock Bar & Restaurant, in Manchester. His presentation included a profile of the British Brands Group and the uphill task it faces in lobbying the group's interests as well as challenges from other quarters, including the "no logo" supporters. John gave a valuable insight into the diverse considerations that need to be addressed by brand owners. The talk provoked a lively question and answer session from attendees.

The next talk to the NW Groups will be by Mark Engleman, Barrister at Law at 18.00 for 18.30 on Tuesday December 4th, 2001 at Nico Central (Bar and Restaurant) Manchester.

For further details please contact Nicola Amsel Tel: 0161 828 8787; fax: 0161 904 7307

North East Region

The next NE Region meeting will be in late January or early February. We plan to expand on the article by Roger Ford in the last edition of News Exchange "Why doesn't Academia use Licensing More?". We believe this will be of interest not only to practitioners but university members as well. We will consider whether the UK can learn from the American experience, assisted by Liz Ward who will be reporting on her recent attendance at the LES US/Canada meeting, which dealt extensively with licensing by Universities.

Alastair Neill

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We need your views!

We all know that the objective of licensing negotiations is to reach an AGREEMENT. There is an excellent little book entitled "Getting to Yes", but how can we teach those new-comers entering the profession the skills and knowledge required to reach a good Agreement?

Getting to YES requires compromise, so how should the art of compromise be taught? So called "sticking points" may be overcome by a trade-off, generally in the Terms of the Agreement rather than the background Conditions. The adjustment may be in the financial terms, or in the scope of the licence, for example: by varying the type of licence between exclusive, sole or non-exclusive; or, by varying the range of countries licensed; or, by including, or excluding other related companies in the Group. Other suitable areas for compromise are: the timescales affecting the licence; the cost of technical support; or, liabilities, and who should bear the costs of pursuing any infringers.

So how can Members, particularly newcomers, be taught the skills of compromise in such areas? Should the training be grounded in theory derived from books, or explained through licensing games, or taught by lectures, or by watching an experienced licensing negotiator work ("sitting by Nelly"), or even by being thrown "in at the deep end"?

The LES has, as one of its major functions, "to provide knowledge and training for Members". Currently it does this through various means.

The Publications Committee of LES International provides a list of books, papers, audio and video tapes all relating to licensing. The Education Committee of LES (B&I) has gathered together a range of licensing games, which are often played at local, regional or annual meetings. The Laws Committee keeps us updated on changes in laws and regulations affecting licensing through News Exchange, which also lists conferences and courses concerning licensing and related subjects such as intellectual property rights. The regular London meetings and most regional meetings get experts to present papers and to be open to questioning. This is as near as LES can get to the "sitting by Nelly" method of learning.

But is this what you want? Are there any other ways that Council should help raise the knowledge and licensing skills of Members?

Please write in with your views on the effectiveness of the current provisions and how they could be improved.

P Michael Connor

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New Members

Council has been pleased to welcome the following new members to the Society:

  • Mr Nicholas Beckett, Solicitor, CMS Cameron McKenna
  • Ms Rosaleen Byrne, Associate Solicitor, Evans & Company
  • Mr Paul Carlyle, Partner, Shepherd & Wedderburn
  • Dr Bernadette McGahon, Commercial Manager, BioResearch Ireland
  • Mr Martin Green, Business Development Director, Johnson Matthey
  • Mr Giles E Hemmings
  • Ms Mary G Skelly, CEO, Irish Bio Ventures International Ltd.

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Emerson Court, Alderley Road, Wilmslow, Cheshire SK9 1NX
email:s.ireland@kudos-uk.com

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