LICENSING EXECUTIVES SOCIETY

Britain and Ireland

NEWS EXCHANGE
Issue 86: August - September 2002

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Maximising the Value of LES

The LES Britain and Ireland Conference and AGM is one of the highlights of the LES year. The conference is organised not only for the benefit of LES members but also as a forum for discussion, learning and networking for all licensing professionals.

This year, not only was the conference very successful, more than 100 delegates registered, but we were blessed with two of the warmest days of the summer. We had many excellent speakers and were particularly pleased to welcome Thierry Sueur, President of LESI, who took time out of his very busy schedule to attend the whole conference and was spotted on one occasion sampling the delights of warm British beer!

For the past few years, LES have run an optional licensing course on the morning prior to the start of the main conference. This year's Intermediate Course attracted a larger number of delegates than expected! We were very encouraged by the comments of the participants and recognise that the introduction of CPD points last year has been a positive move for our members.

The first plenary speaker, Alison Brimelow, CEO of the Patent Office, presented the delegates with a number of issues worthy of discussion from awareness raising initiatives, such as on-line guidance, to the future of IP and the concept of global IPRs.

Dr Andy Richards, Business Angel and Investor, the second plenary speaker, talked the delegates through "Finance, Start ups, Bio Licensing - Angels at Work" not an easy concept! There is no doubt that more angels are needed but the current low stock market values are impacting the whole sector, placing a low value on technology and thus not encouraging investment.

The conference workshops allow delegates to follow their particular areas of interest and each year we aim to provide variety and topicality. One of the topical issues addressed this time was the cult of celebrity and all the challenges that the "celebrity status" has brought with it. Mark Owen, of Harbottle and Lewis, in his workshop on "IP Protection for Personilities and Club Brands - from Elvis to Eddie" looked at recent judgements.

Other workshop areas covered were EU IP Law updates, Trademarks and Brands, Working with Venture Capital, Financing - Raising Major Funds, Licensing Strategy, Liability for Licensors, Effective Use of e-Commerce in Licensing and the Bio/Pharma Life Cycle - the Best Time to Partner! We try to provide something for all members but are keen to hear of new workshop subjects and, in particular, speakers with an expertise in that particular area.

The conference dinner is a great opportunity to meet new people as well as old friends, and this year it was held at The University Arms in Cambridge. Our guest dinner speaker was Dickon Purvis, who was a crew member of the yacht LT Flatron, which won the BT Challenge Round the World Race in June 2001. Dickon spoke about the importance of leadership in the race. Each boat competing is exactly the same and crew members are chosen to be as similar as possible with regard to the average age and the number of members of each sex. They undergo some months of training before crew selection, then continue training as a team for some months afterwards. They are responsible for buying their food and calculating the calorific value of food needed to sustain them for each stage- approximately 5000 calories per day! So far the challenge did not sound so bad - but then he explained that the boats sail the "difficult way around the world", against the prevailing winds. Again, for the non-sailors this didn't sound so bad - the photographs, however, tell a different story, amazingly beautiful but frightening! Forty foot waves, ice, accidents, interesting sanitary instructions - and we are not talking about the colour of the bathroom tiles! Dickon is an inspiring speaker and now bitten with the exploration and endurance bug, he is planning a polar walk!

Dickon believes that excellent leadership was the quality distinguishing his team from that of the others and a book on Emotional Intelligence, based on the experiences of the race, maybe ordered from www..thomsonlearning.co.uk/execed. We may not all aspire to beating the forces of nature in such an extreme environment, but there is much to be learned from Dickon's experiences and perceptions of leadership, his presentation is inspirational. For those of you wishing to contact Dickon his email address is as follows: dickon.purvis@btopenworld.com.


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President's Diary

In late June we held the AGM and annual conference, entitled "Maximising the Value of Intellectual Property", at Wolfson College, Cambridge. It was a wonderfully social and educational event held in beautiful surroundings.

During the AGM, I took over as President, taking on the well-held reins from Chris Goodman. I am sure that you would all like to join me in thanking Chris for providing us with two years of excellent leadership and management. Chris has done a stunning job and it will be quite some challenge to live up to his expectations!

My thanks to all of you who helped make the conference such a success. We had a great line up of plenary and workshop speakers, and a host of people beavering away in the background to keep the conference running smoothly. We held an Intermediate Licensing Course prior to the main conference and this, again, proved to be a great success. Many thanks to those who organised and ran this course. We now look forward to the first presentation in Europe of the LES International course - "Fundamentals of Intellectual Asset Management" to be held in London on 30/10/02.

For the second year, we were able to award continuing professional development (CPD) points and hope to continue doing this at future meetings.

We were honoured to have our LES International (LESI) President, Thierry Sueur, join us for the conference and participate in the opening welcome and workshops.

Council was sorry to see the retirement of Kurt Deutsch from Council. Kurt has been an invaluable member of Council for many years and will be greatly missed. Christopher Hyatt has also retired as Treasurer after many years of service to LES B&I, he will remain on Council and his position as Treasurer will be filled by Raja Sengupta. We owe Christopher a large vote of thanks for guiding us through our finances. Mary Swords has retired from her role in leading our Irish LES members and, again, will be greatly missed. Under her leadership LES Ireland has become well known for its excellent meetings and social events. Ben Goodger, former LES B&I President, is moving on to work in China for a couple of years and we are looking forward to receiving his "LES Letter from China" on a regular basis. I wish to thank these members for their contribution and hard work.

As President, I will be attending the pan-European LES meeting in Prague in September. This meeting "Intellectual Property - The Currency of Future" is open to all LES members and will provide an excellent European networking forum. I look forward to meeting members of LES B & I for a glass of the real Budweiser.

As I started out by saying, Chris Goodman and the rest of Council have helped to make the past twelve months a successful and rewarding year. Plans for meetings and events for next year are well underway, and I look forward to meeting with you either here at our local meetings, or at the many other LES and LESI meetings around the world.

Christi Mitchell,
President LES B&I


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Eleven Years in Harness!

When I announced my intention to stand down from Council, I was asked to write a few words on my service from 1991 to 2002. This gives me the opportunity to provide some insights into Council's modus operandi and also to thank publicly all who gave active encouragement and actual help for my various projects over the years.

I was elected to Council in 1991, having been an active member of LES B&I since 1984. My sponsors were John Bowler and the late John Gay, both past presidents and indeed founding fathers of the Society. John Bowler and I had collaborated, when I was in charge of technology transfer (TT) at the University of Warwick, in organising TT conferences and seminars for research staff, whilst John Gay was my principal licensing consultant. Working with them was always a pleasure and gave me early insights into LES culture. I looked up to them as "Grand Masters" of the art of licensing!

I was pleased to join Council bearing gifts. In 1989 I had started a collaboration with Dr Richard Reeves of Cranfield University on the design of a short course entitled, "How to Sell Your Technology" - "SELLTECH" on the protection, licensing and sale of the results of R&D. This two day course, a joint venture between the Cranfield R&D Management Centre and Stoneleigh House Associates, my TT consultancy, made its debut at Cranfield in July 1990 - but more of this later!

What was my impression of Council, as a new boy in 1991? A friendly, generally benign body of cultured, intelligent professionals bound by a common interest in the various facets of the art of licensing. The mood was pleasantly informal and relaxed. Always tolerant of ideas and suggestions brought forward by members, it was actively supportive of developed schemes likely to succeed in spreading the art. The nature of such support is best illustrated by the Cranfield courses and later by the Leeds MBA Module.

The two-day SELLTECH course at Cranfield had proved so successful that it had to be repeated twice in 1991 and it is still presented annually 12 years later! This success owes much to the panels of external tutors all drawn from the vaults of LES and of LES Council members. Some idea of such members is given in the following short, non-exclusive, alphabetical list: John Bowler, Alan Burrington, Mike Connor, Peter Cottis, Kurt Deutsch, John Emanuel, Brian Freeman, Ludi Lochner, Christi Mitchell, Fiona Nicolson and Stephen Powell.

In 1995 I was invited by the President, David Stanley, to take the chair of the LES B&I Education Committee. Again I was fortunate to be able to bring a gift. This was the idea, canvassed in the preceding year, of establishing licensing as a topic in tertiary education. After attempts spearheaded by Fiona Nicolson and Ian Traill in Scotland and then by Hunter, Deutsch and Stanley in Yorkshire and Humberside, a breakthrough was achieved in the University of Leeds Business School. Here, an elective MBA Module in International Licensing was designed by us in collaboration with university academics. This 10 week module, arguably the first of its kind in the UK, was first delivered in 1996 and is still offered annually. It owes its success largely to the efforts of Trevor Hunter, who conducted detailed local negotiations and has been responsible for the recruitment of successive panels of tutors drawn, largely, from local specialists.

I hope I have been able to show that work on and with Council can be interesting and rewarding. I certainly have found it so and commend it to members. I feel sure that anyone wishing to take initiatives will find encouragement and real support.

Invidious though it may be deemed to be I would like, here, to send special thanks to John Bowler for seminal input to the Cranfield venture and for being my guide and mentor in all LES matters; to David Stanley for offering me the Chair of the Education Committee; to Trevor Hunter for his unstinting efforts on the Leeds MBA project and to Stephen Powell for his constant support on the Education Committee.

I shall miss working with you all.

Kurt Deutsch July 2002


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Patents Act 1977 (Amendment) (No.2) Bill

A Bill to amend the Patents Act 1977 introduced by the Tory MP for Bridgewater, Ian Liddell-Grainger, received its first reading in the Commons on 24 April 2002 as a ten minute rule bill. It is listed for a second reading on 19th July 2002. The Bill seeks to amend the Patents Act 1977 to give the courts discretion to award "additional damages" to a patent holder in a patent infringement action. Such award will take notice of the "flagrancy" with which the infringement occurred.

The Bill does this by proposing the introduction of a new provision under section 61 of the Patents Act 1977, exactly analogous to the provision in section 97 (2) of the Copyright, Designs and Patents Act 1988 relating to copyright infringement as follows:

In section 61 of the Patents Act 1977, there shall be inserted after subsection (2):

    "(2A) The court may in an action for infringement of a patent having regard to all the circumstances and in particular to:
    • the flagrancy of the infringement, and
    • any benefit accruing to the defendant by reason of the infringement award such damages as the justice of the case may require".

A key motivation for the Bill, as presented in the House of Commons Research Paper 02/23, appears to be to give SMEs greater leverage in enforcing their patents against big companies. The bill was apparently inspired by the legal fight of the UK-based AllVoice computer software company against IBM. However, the Bill has received opposition from both big organisations and SMEs. For example, Intellect which is an association representing over 1000 organisations in the IT, telecommunications and electronics industries, argues that whereas "flagrant infringement" can be understood and has a place in the context of copyright, the same concept simply does not carry over meaningfully into the world of patents. As such, it is an inappropriate standard and an unfair test to apply for determining whether additional damages should be awarded in a patent infringement action. The amount of additional damages proposed in the Bill is non-specific and unlimited. It would thus make it impossible for a business, whatever size, to quantify the potential economic risk with any certainty.

Hayley French


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QinetiQ gets its scientists to analyse the commercial potential of their own inventions and innovations: without risk to good judgement?

It is common knowledge that the expertise to assess and value new technology is both rare and expensive and, to a large extent, non-existent in many organisations. Coupled with this, the cost of protecting and developing technology into the next generation of products is high. So, how can organisations reliably choose the next carbon fibre or liquid crystal technology coming from their employees?

To overcome these problems without compromising the decision process, QinetiQ have developed software to optimise and standardise the way inventions are appraised, both for further investment and protection.

This assessment software gives the user a consistent approach and allows the cross comparison of unrelated, and normally incomparable, technologies commonly found in industry and academia.

The starting point was to review best practice and models used by IP practitioners in the wider community and in QinetiQ and amongst the IP consulting community, and to use this information to develop a simple and understandable format. To further simplify this process, the user is provided with information to assist in answering the questions, encouraging the user to face the question rather than avoid something because it seemed difficult.

Secondly, of course the inventor tends to be enthusiastic about the invention and curbing this natural bias is key to obtaining a "neutral" assessment. The questions and answers are chosen carefully to force some neutrality and so build faith in the answer.

This result is QinetiQ's new tool Nstinct (pronounced "Instinct"), currently the subject of patent and trademark applications, the start of a suite of tools for the evaluation and valuation of any invention, be it a new technology, a business process or, indeed, a business.

The assessment asks a series of questions, including the state of development, the level of patent cover, and the markets for the product. The process removes the need for the user to do extensive and often unproductive (and simply not done!) research. It processes the information requested and supplied in a structured way, ensuring that the work done in commercial preparation is at the right level for this stage in the product life.

The software then analyses the responses, including a cross impact study to ensure the answers are complete and realistic. A final score is generated with results weighted to rank importance, to optimise the results for the technology, market, and risk.

The output from the tool is an assessment of the income possible, the costs of achieving that income, and the risks inherent in the project. The software also advises where the user has been inconsistent in answering questions. These are presented as a series of statements and in graphical format.
The results have been benchmarked against known cases (good and bad) and have proved very robust. A sample of the evaluation is shown opposite.

The tool takes just 10 minutes to use and provides a score that, although not definitive, is representative and enables comparison between previously difficult to compare projects and technologies.

The tool has been specifically designed so that users unfamiliar with commercial assessment and IP issues (that is, scientists and engineers) can perform meaningful assessments. The system is being incorporated into our IP management processes to enable cost effective, quick assessments without compromising judgement.

In QinetiQ, the assessment is done prior to any decisions being taken on patent action, the IP managers having the final say on subsequent (patent) action. It can be repeated at different times during the patent registration process using a spread of staff from the inventor to the commercial and exploitation teams.

Following the assessment, managers usually want to know what any such technology might be worth. This is the most complex and difficult analysis to do and usually where most expertise is required.

QinetiQ has invested in market research and analysis, looking at issues like time to market, development costs, and marketing costs to provide adequate background to support income assumptions as well as to define risk.

The resulting valuation software operates at three levels of sophistication, providing assistance and background market information to enable inexperienced users to create meaningful cash flows, break even points, and internal rate of return (IRR) predictions ready for more experienced commercial managers to take further. Again, a series of questions are asked to prompt income, running cost, risk and project management information allowing the construction of a cash flow model and NPVs.

Thus we intend to educate our non-commercial users (mainly scientists) to understand what data and background information is required to form the basis of an investment proposal. As a result, our internal venture fund will have a consistent financial model for any invention or business being put forward for investment. The valuation operation is similar to the assessment and enables "what if?" analyses to be carried out, as well as the identification of any weaknesses and inconsistencies in the data input.

The software is to be made available to other organisations to help in business decision making, to control costs by making better decisions, and to bring a more rigorous approach to investment planning in intellectual property.


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One Close Shave Too Many for Philips

A seven year feud between Philips and Remington over their respective three headed shavers has effectively been settled by the European Court of Justice.

In 1994, Philips uneventfully registered a picture of its three headed rotary shaver as a trademark. Then, in 1995, Remington put its own version of the three headed shaver on the market. Philips immediately sued for trademark infringement. Defending by attack, Remington applied for Philips' trademark to be declared invalid on various grounds.

Mr Justice Jacob and the Court of Appeal initially agreed with Remington, but the latter referred certain questions to the European Court of Justice for clarification before making a final decision. The resulting ECJ judgement, released at the end of June, has now given much more definitive guidance on the requirements for registrability of trademarks. This applies, in particular, to the interaction between the need for a trademark to be inherently capable of distinguishing the goods or services of one trader from those of another, and that it have a distinctive character in fact. Further, the Court has confirmed that the criteria for assessing the distinctiveness of shape trademarks should be the same as for other more conventional types.

The ECJ set out in detail the forms of evidence, which could assist a trademark owner in demonstrating that its mark has become distinctive through use where it would otherwise be unregistrable on the grounds that it is unable to differentiate that party's products. It stated that when assessing such use, the Court would need to base its judgment upon the presumed expectations of an average consumer of those goods and/or services for which it was to be registered. Relevant factors could include the market share attributed to the mark, the geographical spread and intensity of the use, promotional spend and statements from chambers of commerce and industry and like organisations. All use did, however, need to be use in a trademark sense to denote the origin of the goods and/or services to be considered.

Up until this point of the judgment, Philips had regained substantial ground from the earlier decisions of the English courts. However, it was ultimately to fall on the same sword as previously when the ECJ ruled on the final question. It held that where the essential features of the shape applied for were attributable only to achieving a technical result, the mark was not to be registered. As the picture of the Philips three headed shaver was of a shape which fell into this category, the mark will be invalid. The fact that the same technical solution could be achieved in different ways and by different shapes was irrelevant.

In its judgment, the ECJ has, as expected, supported the view that in the interests of fair competition, trademark rights should never be granted over shapes consisting of purely functional designs. Rather, these should remain the preserve of patent and/or design protection which are of course limited in time and can only give a restricted monopoly, unlike trademarks which can be renewed indefinitely.

The Court's decision and reasoning has clarified a number of issues regarding registrability of signs as trademarks, particularly those which take less conventional forms such as shapes. This is to be welcomed, as those developing and advising on brands should now be able to determine more readily which should be able to obtain trademark protection and what use may be required to make that mark distinctive. Sadly, the Court did however leave aside the issue of whether use of a mark by a third party had to be in a trademark sense to constitute infringement. We will therefore have to wait a little longer for the judgment to be issued in the Arsenal v. Reed case to ascertain the answer to this outstanding thorny issue.

Tracey Huxley
Associate, Shoosmiths Solicitors


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Licensing Update - ipr in business

  • Logistic Resources Ltd v Eastgate Group Ltd HC 19 June - claimant not entitled to a royalty share (beyond software licensing revenue) on money charged for services provided by user of the software.

  • Experience Hendrix LLC v (1) PPX Enterprises Inc (2) Edward Chalpin QBD 5 July - defences of implied licence and estoppel/waiver did not prevent injunction against continued exploitation of music masters in breach of settlement agreement.

  • Alpha Lettings plc v Neptune Research & Development Inc. QB 24 June - in absence of termination clause in an exclusive distribution agreement twelve months constitutes reasonable notice. 4.

  • Intel Corporation v (1) Via Technologies Inc and others [2002] EWHC 1159 (Ch) 14 June - refusal to grant patent licence not abuse of dominant position (Article 82).

  • Eurovideo Bildprogramm GmbH v Pulse Entertainment [2002] CA 27 June - claimant entitled to "exclusive first exploitation rights" in video programs as representation of fact which gives rise to remedies for misrepresentation rather than breach of warranty.

  • Beckingham v Hodgens and others [2002] All ER (D) 2 July - joint author of copyright in the song 'Young at heart' entitled to revoke past implied licence and get share of royalties for later use.

  • A new non-profit website www.creativecommons.org lists creative works with licence availabilty.

  • DTI's new "Innovation Logbook" keeps a 'tamper-free' chronological record of original work and contains guidelines on IPR.

  • European Commission welcomes UEFA's new policy for selling football Champions League media rights in smaller packages for shorter terms. Brussels 3 June.

  • US controversially sets royalty rates for web music based on 0.07 cents to 0.14 cents per listener per song shared by musicians and record companies backdated to 1998 - contrary to previous practice of radio stations not paying royalties to record companies.

  • Chinese manufacturers of DVD players agree to pay royalty fee (reported to be around £2.70) to alliance of right owners up to the end of this year.

  • Retired Red Army officer, Mikhail Kalashnikov wins dispute over copyright of AK47 rifle and now plans to sue for $18 million unpaid royalties.

Monitored by Dr. Hayley French, Taylor Joynson Garrett


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Intellectual Property Awareness Group (IPAG)

A number of initiatives were discussed at the first meeting in 2002 of IPAG, on which LES is represented by Jennifer Pierce and Stephen Powell. As part of the introduction of intellectual property into the citizenship curriculum, a CD-ROM is being issued to secondary schools. Copyright figures predominantly since this is the area with which most pupils will come into contact.

The Federation Against Software Theft has developed a speedy and simple way to make reports about web-sites involved in the unlawful sale of games, films, music and software. Just visit their web-site at www.fast.org and download ReportIT on your desktop computer. An icon will appear on your file browser. When you are on-line and have found a web-site you wish to report to FAST, you just clock on the ReportIT logo. ReportIT automatically grabs the URL allowing the immediate report of the web-site.

Other topics mentioned were the continuing work of the Chemical Innovation Growth Team (www.dti.gov.uk/cigt), the launch of the Trevor Bayliss Foundation (www.thetbf.org) and a log book for use in the academic world launched by Lord Sainsbury in June (www.innovationlogbook.gov.uk).

Stephen Powell


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Christi Mitchell - a profile of the new President of LES Britain & Ireland

Christi Mitchell is the IP Director at Medius Associates Ltd, an independent, business development consultancy company serving the biotechnology, pharmaceutical and healthcare sectors. She was the Healthcare Chairman for LES Great Britain and Ireland until the recent AGM and immediate past LESI (International) Healthcare Chairman. Christi has vast experience in international licensing, technology transfer and commercialisation within a range of companies from start-up to multinational, and has worked extensively commercialising IP with both universities and National Healthcare Trusts. She provides expertise in the acquisition of intellectual property rights and in the licensing out of technologies, as well as the valuation of inventions and the potential IPR that may arise from the invention, advice and financial guidance to start-up companies. This guidance extends to National Healthcare Trusts, universities and companies.

The majority of Christi's experience was gained as a Senior Licensing Executive at BTG plc, where initially she assessed technology for its ability to be transferred to start up companies. She then moved on to transfer Healthcare technologies globally on behalf of small and medium size companies. She has worked with a wide variety of healthcare companies in different roles; acquiring technology to fit a specific commercial need, building patent portfolios, starting up companies and licensing intellectual property rights throughout the world. She has worked for Biotechnology companies in the USA, Germany and England. Her IP and technology transfer experience also extends to India, Japan, Singapore and South Korea. Her academic background includes degrees from London in Human Genetics, Molecular Biology and Business Management.

Christi grew up on Hayling Island on the South coast where she still keeps a dingy and enjoys holiday time there with her two children. Other Interests, when time allows, include international travel, horse riding, hill walking and "creating in the kitchen".


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The Healthcare Committee

In 1996, I was asked if I would become Chairman of the LES Britain & Ireland Healthcare committee, taking over from Brendan Faulston who was then being sent out to the US by 3M. At that stage we had few healthcare industry members and it was very much my aim to increase the healthcare, biotechnology and pharmaceutical company membership in line with membership from the legal and patenting professions.

With the help of my committee, we managed during the next twelve months to hold a number of successful, well-attended evening and half day meetings and to provide workshops for a number of the LES conferences. We were greatly helped here by Nigel Jones and the EC/Laws committee, where we found that a mix of law and healthcare provided a sound structure around which to build our meetings.

During this period the universities were becoming far more involved in taking on direct responsibility for their own technology transfer and, again, the Healthcare committee decided that we needed to try harder to cater for the needs of the universities and other research establishments.

In 1997, I was asked to take on the Chairmanship of the LESI (LES International) Healthcare committee. I had little idea, at the time, of what would be involved! Today LES has over 12,000 members worldwide originating from over 83 countries represented by 27 national chapters. LESI facilitates the contact between the LES groups spread throughout the world - Healthcare is one of the largest groups - specific healthcare meetings in the US will attract 2,000 participants. LESI generates international communication via conferences, the web site, the professional journal LES Nouvelles and communication throughout the specific industry and education groups. It was quite some task taking on this position; it's the work that gets carried out late at night and during the weekend, it also involved a great deal of travel, was hard work and great fun. The LESI Healthcare committee has now become the Life Sciences Committee and incorporates the Biotechnology committee.

Back in Britain & Ireland, we were all delighted that Steven Mansfield from Boots Healthcare International agreed to take on the Chairmanship of the Healthcare committee. I am sure that Steven will be a great leader of the group and will bring with him a wealth of "industry specific" knowledge that will be of enormous benefit to the running of the Healthcare group.

Christi Mitchell


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Ben Goodger heads East

Ben Goodger, who will be known to many of you as Past President of LES Great Britain & Ireland, has been appointed by his firm Willoughby & Partners/Rouse & Co International Limited to lead their commercial IT team in Asia. Ben is relocating to Shanghai as from 5 August 2002. Ben says: "I am thrilled to be given this opportunity. Asia in general and particularly China are very interesting places in terms of the commercialisation of IP at the moment. It will certainly be a daunting challenge, particularly as I will be the only non-Chinese person in an office of 23!".

Ben is taking up his position from 5th August 2002 and is relocating his wife, Philippa, and three children aged 11, 9 and 7. "We have been taking Chinese lessons in preparation. At first I congratulated myself on being better than the rest of the family (that is, I had reached chapter three of "Teach Yourself Chinese"). However, my 11 year old daughter is now laughing at my pronunciation".

With China's accession to the WTO last year, and a steady raising in standards of Intellectual Property Laws (for example, a new patent law), China is very ambitious to take its place as a leading commercial player. Ben's mission is to build on Rouse & Co's well-established reputation in anti-counterfeiting work, to add licensing, technology transfer and general IP management skills. These he believes fall into three main areas of activity: those businesses which are looking to take advantage of the much lower labour costs of manufacture in China which will involve the "inflow" of IP through manufacturing licences; those businesses which are looking to sell directly to the vast Chinese domestic market, which will involve licensing local businesses, franchising, joint ventures and so on; and, perhaps most exciting of all, assisting businesses looking to exploit some of the little-known technology being developed within China, for example, through joint R & D collaboration agreements and out-licences.

Ben's firm has offices in Shanghai, Beijing, Guangzhou and Hong Kong as well as several in the Asia region. Ben will have overall responsibility of commercial IP work in all these offices. He will be located in Shanghai for at least two years and plans to join LES China whilst he is out there. "I am excited to have this new challenge at this stage in my career. Or, to put it another way, maybe this is just my way of staving off the mid life crisis!".

Ben can be contacted, as from 5th August 2002, on his usual email address: bgoodger@iprights.com or by telephone: +86 21 6391 5368.


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News from the Regions

LES Scotland

Over 50 LES members and guests turned out for the highly successful LES (Scottish Branch) meeting on the 12th June, entitled "Licensing-In Technology" kindly hosted by Herriot-Watt University, Edinburgh.

Two very different Scottish companies, Albyn Innovation and Weatherford Completion Systems, described the impact licensing-in technology had on their businesses. Despite the differences in sector, size, product types, legal arrangements and certainly product lifecycles, there was surprisingly similar pros and cons associated with such actions. Interestingly both emphasised the role that "luck" had played in seeing opportunities and their subsequent development. However, after hearing both speakers, it was clear that luck, entrepreneurial skill, plus recognition of the opportunities that strategic relationships can bring for organisations had all contributed to the success of these companies.

Albyn Innovation is a small healthcare and pharmaceutical manufacturing company based outside Aberdeen that has moved from meeting the product specifications for some of the major names in this sector to developing Albyn's own innovative product lines. Donald Smith, MD, described graphically how their rolling programme of licensing-in technology has given the company a new direction and a constant 2 year advantage over competition

Andrew Shanks(Cruikshank and Fairweather) then gave an excellent introduction to the benefits of licensing-in technology for Weatherford Completion Systems, a large multi-national service company to the oil and gas industry. Paul Metcalfe, technical director for expandable down-hole tooling, emphasised the importance and value of having a sound and well thought out IP portfolio, particularly when developing a platform/core technology. Paul took us through the fortuitous first meeting of licensor and licensee, how the licensed-in technology was subsequently developed and protected, through to the subsequent acquisition of the licensee company by Weatherford, where the physical assets of the company were £5 million but the overall value, including its intangible assets of a strong IP/IA portfolio, was around £105 million! With the resources of Weatherford Completion Systems the outstanding technology is now being fully developed and exploited - the licensed-in technology has not only revolutionised a company but also the industry and its accepted oil and gas extraction practices.

As we have reached the holiday season, LES Scottish Branch would like to thank all speakers plus LES members and guests who have supported our events throughout the last year. Your enthusiasm has made 2001/02 one of the most successful years we have ever had in terms of variety of topics and attendance at events. We will be publishing our programme for the coming year in the near future and look forward to welcoming you all to our events in 2002/03.

Caroline Sincock, John Jeffrey, Cathy Rooney

LES Ireland

The AGM of LES Irish Section was held on 7th June 2002 in the Shelbourne Hotel, Dublin. Mary Swords gave the Chairman's Report mentioning, in particular, that LES Irish Section have had a very successful year largely due to the hard work of the committee members.

The first of the year's meetings, a half-day seminar, "Valuation of Intellectual Property", attracted over 70 attendees. The second event, a joint seminar with Bioconnect Ireland was oversubscribed, an indication of the high level of interest in biotech matters amongst LES and Bioconnect Ireland members in Ireland.

The two social events of the year were the Annual Dinner on 8th March and the Annual Lunch, held on the same day as the AGM. Chris Goodman (President of LES B&I) and his wife, Sybil, were guests of the Committee at the Annual Dinner, which was held in Chapter One Restaurant, in the Irish Writer's Museum. Chris commended the Irish Section Committee for their enthusiasm and proposed that a future LES B&I AGM should be held in Dublin. The guest speaker was Mr Tony McGrath, Head of the IP Unit of the Department of Enterprise, Trade and Employment. He provided an insight into the working of the IP Unit and indicated his unit's interest in developing links with LES, possibly by way of nomination of a LES representative to the Patents Office Users Council. This proposal will be followed up in the forthcoming months by the committee.

It was noted that a number of Irish Section members had articles published in News Exchange and we hope this will encourage other members to submit articles for publication in News Exchange and Les Nouvelles (the newsletter of LESI).

Mary referred to the position on Council, which the Chairperson of the Irish Section has. She noted that although it was not often possible for her to attend the Council meetings, Irish section was able to remain in touch with other UK members through publications in News Exchange, by Yvonne McKeown's work on the LES Laws Committee and by attending other LES B&I meetings. We suggest that members visiting other parts of Britain and Ireland check the LES meetings list and try to attend meetings in other areas.

Emma O'Neill has stepped down from the committee due to work commitments and Mary Swords thanked her for her hard work and contribution to the committee over the past years. Mary also thanked all committee members for their help and support during her time on the committee and particularly during the past four years whilst she has been President. She thanked everyone for the gift and flowers presented to her at the Annual Lunch.

Office holders of the Irish Section are:
Barry Moore - Chairperson
Rosaleen Byrne - Treasurer
Maureen Daly - Secretary

Mary Swords has been very supportive of News Exchange and we would like to join in wishing her every success in the future.

LES London Meetings

LES London Region will be introducing electronic transmission of meeting notices for the September 19th meeting. Unfortunately, Renate Siebrasse cannot accept payment via the web, but people wishing to attend can print out the form and mail it to Renate with a cheque or send it by fax with credit card details.

As this is a "first try " at the new system, members will also receive paper copies of the meeting notice. We are hoping to increase the numbers of those notified by email and so reduce our considerable mailing costs.


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New Members

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

  • Ms Linda Ames, IP Manager, Royal Mail;
  • Mr Kevin Bazley, BioTech & Commercialization Manager, Scottish Enterprise;
  • Mr Andrew Browne, Principal Lawyer, Consignia Plc;
  • Dr Anthony Caston, IP Manager, AdProTech Ltd;
  • Dr Ewan Churnside, Director, Research & Enterprise Services, University of St Andrews;
  • Mrs Noelle Colper, Senior Solicitor, Cleary, Gottlieb, Steen & Hamilton;
  • Miss Lindsay Crawford, Managing Director, Technology Catalysts Int Group;
  • Mr Nicholas Delaney, Grp General Manager, McGill Technology Ltd;
  • Mr Terry Doyle, Head of Mobility IP Exploitation, BT Exact;
  • Julie Dunnett, Patent & Trademark Attorney, Barker Bretteil,
  • Dr Robert Glen, IP Manager, Kamelian Ltd:
  • Mr Paul Hailes, Finance Director, IDS Ltd;
  • Dr Richard Halpin, Director, Halpin Innovation Ltd;
  • Mr Michael Hill-King, BTG; Dr Fiona Jackson, IA Executive, Targeting Technology;
  • Mr Stephen Keith, CEO, Probe Investigations Ltd;
  • Dr Trevor Langley, Manager Director, Biosciences Marketing Ltd;
  • Miss Jane Lawson, Innovation Relay Executive, Scottish Enterprise;
  • Mr David Leigh, Director ipValue; Mr Alistair Main, Ass. Director of Research, University of St Andrews; Dr Everard
  • Mascarenhas, Consulting Manager, QED Intellectual Property Ltd;
  • Dr Terry O'Neill, IP & Planning Manager, Antenova Ltd;
  • Mr Jonathan Radcliffe, Solicitor, Field Fisher Waterhouse;
  • Mr Paul Rivers, Media plc;
  • Mr Ito Shin, Technical Representative, Toray Industries Inc;
  • Ms Amanda Stark, Patent Attorney, Abel & Imray;
  • Dr Lorna Talbot, Commercial Research Manager, Tayside University Hospitals Trust;
  • Mr Keith Thomas, Arnander Irvine & Zeitman;
  • Mr Andrew Thornton, Head of Commercial, Accentus plc;
  • Dr Paul Wallace, VP & Head of Business Development, Medivir;
  • Dr Charles Weller, R&D Commercial Manager, Tayside University Hospital NHS Trust;
  • Mr Philip White, International Technology Promoter, Pera.

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


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