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LICENSING EXECUTIVES SOCIETYBritain and IrelandNEWS EXCHANGE
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MICAP PLC - both sides of the licensing modelMicap Plc is a privately owned, biotech company based in the North West of England, in the process of raising its third round of funding. Its initial focus, Micap™, is the registered trade name for its patented micro-encapsulation technology that uses micro-organisms to protect, and selectively release, a wide range of active ingredients for various industries. The benefits of the technology vary depending on the application but include:
Micap's business model Micap Plc was set up as the vehicle to develop and commercialise a worldwide exclusive licence from a blue chip multinational, for a number of patents that relate to the encapsulation of actives in micro-organisms. Initial funding was used to secure the rights to these patents, develop production know-how, secure raw material sources and recruit key personnel in commercial and technical functions. The original business model was to build the company around the manufacture and marketing of a range of essential oil-based food flavourings, and use the cash generated to help develop the technology in the other application fields. However, it soon became apparent that it could create better shareholder value by opening up more fields, broadening the industry risk profile, and investing in the science behind the core technology. As a consequence, the model was changed to one based on licensing the rights for the technology in the range of product and industry applications. Some of the licensing challenges for the business model
1. Raising funds based on an IP license rather than ownership
In any event, the company knowledge is such that it is possible to raise funds, but the company, idea, or technology still needs to be presented correctly. In the long run, Micap believes that the company will be better served having full ownership and, as such, it plans to use a proportion of the next round of funding to purchase the rights outright. Full ownership will give the company complete flexibility and, as it develops, will be more cost effective than the annual royalty payments. 2. The lead-time to delivery of license agreements and royalty streams
The company is addressing this in a number of ways, ranging from taking flexible approach to legal terms, to early kick in of minimum royalty fees, and phased milestone payments in development phases. In the end, however, the financial expectations have to be managed as well as the expectations of the shareholders to appreciate the "pace" of the company's partners! 3. Costs of expert advice and registrations
In summary As an experienced commercial individual, that has had some exposure to the licensing world, but not to the extent that I have dealt with at Micap Plc; I believe the principles behind good licensing deals are the same as other commercial contracts. Firstly, you should understand what is important to your company from the relationship, come to a common understanding of the purpose of the deal for both parties, formulate some clear heads of agreement, and then use a pragmatic approach to apply legal terms. A good, commercially focused lawyer is an absolute must and, for early stage companies, getting the right shareholders, with realistic expectations, is critical! Amanda Lyne, Business Development Director
Top President's Diary
Since I last wrote the diary, I have spent time in Florida at the Licensing Executive Society International (LESI) meetings. I actually watched the US space shuttle go up, having no idea that it would so sadly fail on its return. I was looking forward to the sun in Florida and on our second day there the temperature fell to freezing, I had to go and buy a jumper and the hotel put protective material wrappers over all the outside plants. The meetings, though, were constructive - it was decided that we will put together a general Technology Transfer course to complement the Licensing Courses. We intend to run the first Technology Transfer course in Paris during the pan European meetings in 2004. Please do contact me if you feel that you are in a position to help with the format of this course. We held the Annual Lunch at the Savoy but, sadly, Adam Hart- Davis fell ill just beforehand and could not make the lunch. We were very lucky that Heather Couper - international broadcaster and writer on astronomy, space and science was able to step in at the last moment and take on the "after lunch talk". Following the demise of the space shuttle, Columbia, Heather is now putting together a new television series on what may have caused, or been responsible for the tragedy. The morning meeting prior to the Savoy lunch was well attended and rewarded by excellent speakers, who really got down to the depths of what the venture capitalists (VCs) really want. At this point in time, there appears to be a substantial amount of VC money available, but it's not being spent - we learnt why not and how to really put together that business plan that attracts the finance. The Healthcare meeting to be held on May 1st at the Royal Institute in Pall Mall is now arranged and should be a really stimulating event. Steve Mansfield from Boots Healthcare International (BHI) took over the running of the Healthcare Committee from me last summer, and Steve has really worked hard to put this industry and IP-orientated meeting together. We are trying hard to bring more industry-related talks into our meetings; again please do contact me or Steve Mansfield (steve.mansfield@bhint.com) if you want to talk or have specific views on subjects that you want ,or believe should be, addressed. I do keep saying this but please do contact me or any member of Council with any useful ideas that you have for meetings, or if you believe that you can help with, or guide us towards, any workshops of interest to you and the licensing work that you undertake. The planning for the AGM and Annual Conference at Chelsea Village is well under way. Don't forget to put the dates in your diary - 26 - 27 June 2003 Christi Mitchell,
Alistair Neill Re-Elected as Chairman of FICPI-UKAlistair Neill, LES Council member and Chairman of the Membership Committee, was Elected President of the Britiish Association of the International Federation of Industrial Property Attorneys (FICIP-UK) for the second year, at the Association's AGM on February 27th 2003 |
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Patent Pools and Cross Licences are Under ReviewIntroduction The European Commission is currently reviewing the Technology Transfer Block Exemption Regulation. The existing Exemption covers both cross-licences and patent pools to a very limited extent. Agreements between more than two parties are outside its scope, as are cross-licences between competitors, and patent pools, where there are territorial restrictions. Yet the Commission has recognised that multiparty licensing may be pro-competitive, especially when it covers only essential intellectual property rights. Definition
EU Perspective
The US has had more experience in analysing patent pooling arrangements and drafted guidelines on the subject, so the European Commission could be influenced by the US approach. US Position
In the DVD and MPEG cases, the DOJ set out competitive safeguards to limit the risk of patent pools being challenged and found illegal under antitrust laws. These safeguards have been considered as a refinement on the existing US guidelines on intellectual property and competition. They included the following:
However, questions remain as to whether such safeguards will be workable in practice. For instance:
Evidence of Abuse
Conclusion
If you have any comments on the issues raised in this article, or if you would like your views to be passed to the Commission on an anonymous basis, contact:
Top GM Foods - LES joins The R & D Society to discuss the issuesThe public debate on genetically modified foods was the topic at a very well attended joint LES/R&D Society meeting held at the Royal Society on 17 March 2003. Both speakers, Nigel Poole from Sekona Partnerships and Professor Sir David King (Chief Scientific Advisor to the UK Government), emphasised the potential economic importance of GM foods to the UK. At present, half of the world's population uses GM foods. It is estimated that by 2005 there will be a global market for GM foods of $5 billion. Based on the standing of the UK biotechnology industry, the UK should be able to tap into 60% of the European market. The speakers cited some of the reasons for the failure of GM foods in the UK so far as the change in public perception of science from one of deference to one of consultation, a failure to effectively communicate science to the public and also a failure to listen to public needs. Nigel Poole started proceedings by taking the audience through the evolution of GM foods, from the availability of the genetically modified tomato, GM maize and GM soya in UK supermarkets through to the negative publicity of February 1999. What followed was a refusal by UK retailers to accept GM food. Science "push" failed to turn into market "pull" and the present state of affairs is that the UK, once viewed as the world leader in agricultural biotechnology, is unable to put GM foods in the UK marketplace. Nigel Poole presented examples of some of the latest innovative products, such as GM corn crops, which are resistant to the European corn borer and golden rice genetically modified to contain ß-carotene, which can prevent child blindness in the third world. Professor Sir David King introduced the Government promotion of a national dialogue on GM issues. He explained the importance of understanding what drives the media and to use the lessons learned from the traumas of the BSE and Foot and Mouth crises. There are three strands to the dialogue: the public debate, the economic study and a review of the science. The public is invited to participate in the science review and meetings will be held regularly to address concerns (for example, horizontal gene transfer from GM crops). Comprehensive information and a timetable can be found on www.gmsciencedebate.org.uk. Looking to what went wrong in the past, he suggested that maybe scientists had not helped matters by coining phrases such as "terminator gene" which originated in a scientific publication. Is it no wonder that the media developed new terminology such as "frankenfoods"? Looking to success stories, he cited in vitro fertilisation and therapeutic cloning legislation as an example of the right approach. Here, the real benefits to mankind were successfully conveyed to the public and the technology accepted. Dr Hayley French, TAYLOR WESSING Top Heather Couper - "aspiring astronaut", international broadcaster and author - saves the day!As usual, the LES B&I Annual Lunch at the Savoy was a very successful event. There were, however, a few stressful moments when we learnt that Adam Hart-Davis, our guest speaker, was ill and would be unable to attend! Happily, Heather Couper, friend and colleague of Adam, agreed to take his place at short notice. Although a trained scientist, Heather has spent the last twenty years working entirely in the media. Heather explained how, as a child looking out of her bedroom window one evening, she saw "green shooting stars". She rushed to tell her parents, who informed her that "there was no such thing"! The following morning, to her delight, the newspapers reported on the "green shooting stars" and Heather was hooked on astronomy. She has admitted to a great desire to go into space herself and was disappointed when she was not selected to become a British astronaut. On June 2 1999, the International Astronomical Union named asteroid number 3922 "Heather", in her honour. In 1988 Heather co-founded Pioneer Productions, which specialises in factual programming and is now one of the UK's top 30 independent TV production companies. Other than her television and radio work, Heather is the astronomy columnist for The Independent and is a member of the Millennium Commission Top LES Healthcare Group - Half day meeting at the Royal Institute London on 1st May 2003The LES B&I Healthcare Committee has put together an exciting and innovative programme for the half-day meeting on 1st May. Its aim has been to address topics that are deal-oriented, with a number of presenters coming from industry so that the meeting will have relevance both to service-providers (lawyers, consultants, trademark and patent agents) and to industry deal-makers themselves. The meeting will start at 12.00 with a Welcome Buffet Lunch Reception. Elanor Hunt, of Celltech Pharmaceuticals, will start the programme with a talk entitled "Innovation, Partnership and Focus in Business Development - a Benchmarking Exercise." Celltech Pharmaceuticals is in a state of transition. It has recently conducted a benchmarking study with major "Big Pharma" companies, speciality pharmaceuticals companies, leading biotech companies and a number of "non-healthcare" companies, to ensure that Celltech's own "late-stage" business development processes are both appropriate and effective. Elanor, who has led the co-ordination of this study within Celltech, will present its results and key findings, many of which will be of general interest. The second presentation will be from AstraZeneca Global Licensing covering "The Use of Financial Equity in Structuring Licensing Deals". The speaker will present a financial perspective on how equity can be used as a component in structuring deals - potential benefits/issues for licensor and licensee, comparison with traditional deal elements, and the impact on financial statements. Examples will be used to illustrate key points. John Roe, of Mundipharma and Steve Mansfield of Boots Healthcare International, in a first for LES B&I, will discuss both sides of a specific licensing deal in a talk entitled "Anatomy of a "win-win" IP licensing deal - Nurofen Plus". LES is very fortunate that Steve and John are able to give a joint presentation, in that they were both personally involved in this classic licensing deal in 1994. They will explain how the deal came about, what each side sought to get from it and what each side has actually got from it over the last eight or nine years. They will also discuss the learning gained for future deal making. After the tea break, Malcolm Skingle of Glaxo SmithKline in his presentation on "Collaborative Ventures" will explain how GSK seeks to maximise the value to the company of its collaborative ventures with universities and research institutes, by leveraging both the science and additional funding. This talk will include specific "win-win" examples that have added significant value both to GSK and to the university. Finally, Geoff Woods of J A Kemp and Co will talk about "Current Patent Issues in the Biotech Area". Geoff heads the Biotech Group within J A Kemp and will be providing a general update, from a patents perspective, of recent issues in this industry sector. His talk will make particular reference to the IP of due diligence, and will look at some lessons that can be learned from specific examples where such due diligence has been poorly executed. The meeting concludes with a wine reception, giving you the opportunity to continue the discussion with the speakers and other delegates. This impressive line-up of speakers will be particularly interesting to those involved in Biotech and Healthcare, but will have general relevance to all those involved in licensing. Places are limited to 70 and will be allocated on a first come first served basis. We recommend early booking as we expect a high level of interest. Non-members are welcome. The cost of the meeting, including buffet lunch and drinks reception, is £100.00 for LES members and £135.00 for non-members. The nearest tube station to the Royal Institution (RI) is Green Park, a map guiding you to the RI can be found at www.rigb.org/abouttheri/howtofindus.html. For further information and reservations please contact Renate Siebrasse (siebrasse@medtap.co.uk). The Royal Institution (www.rigb.org) has a reputation established over 200 years for its high calibre events that break down the barriers between science and society. Since it was established, the RI has seen 14 of its resident scientists receive the Nobel Prize and witnessed the discovery of 10 of the chemical elements. Famous scientists, such as Humphry Davy, Michael Faraday, James Dewar and William and Lawrence Bragg, all based their innovative and groundbreaking work at the RI, the discoveries of which still impact our daily lives. The current Director of the Institution is Baroness Greenfield, CBE Top GEORGE HAMLYN - an obituary"With the untimely and totally unexpected death of George Hamlyn, LES and the IPR world has lost a well-known and well loved ambassador." So said Ted Blake, the former head of Publicity and Marketing at the UK Patent Office, about the colleague with whom he had built up The Patent Office Roadshow. He was paying tribute at the funeral service for George held at Golders Green Crematorium. George was the media spokesperson for the Patent Office. He had a wonderful talent for making the whole subject of intellectual property come alive. Practical experience gained from talking with countless inventors, university dons and professionals in all walks of life, gave him an unrivalled knowledge across the whole spectrum of IP rights and their licensing. George Hamlyn was educated at public school in Dorset and gained his degree from Edinburgh University, to this he added great charm, courtesy and humour, mingled with a random lifestyle that kept his staff busy maintaining his diary. And yet, it was for organising that George began to build a reputation in the Patent Office: starting with darts matches against Patent Agents in London pubs; organising cricket tours back to Dorset for his Old Boys; and then, the celebratory dinner for 100 years of the Examining staff at the Café Royal. George's talent for events and publicity encouraged him to forsake examining and to join Ted's IP promotional team visiting universities, schools, and business entities, as well as arms of Government concerned with technology and innovation. Again quoting Ted: "There was not a single ounce of malice in the man" and that showed in his dealings with everyone. Although nearly always short of funds, he was generous and reliable to friends. A keen sportsman in his younger days, he played squash competitively in the Cambridgeshire League, cricket enthusiastically for a variety of teams, and even a bit of table tennis for the office. He loved to discuss the fortunes of England teams and did so from a position of considerable understanding. But even if intellectual property was his profession, and sport his abiding interest, you did not have to talk to George for long to realise that his three children were really the central priority for him. He was immensely proud when both Tim and Eleanor graduated. George used to say that his daughter had tried to explain the concept of her PhD maths thesis to him but they both agreed he couldn't grasp it, whilst averring it was absolutely wonderful! George was equally devoted to Jaime who now, as a young teenager, will have to grow up without his father. Thus, we offer our condolences and our sympathies to his children and partner, Kathy, in Aberdeen, and also to his brother, Ian, in London. P Michael Connor Top News from the RegionsLES Scottish BranchThe Games We Play in Scotland! Variety has been the key to the LES Scottish Branch events! The autumn meeting looked at the future of technology and how it will affect our lives. It was a thought-provoking introduction to the promises of the future and the impediments to getting there. It reinforced the role of IP law in making real these technology prognostications - as one speaker said "IP law and the Information Age are inseparable". Graham Reid, Director of Engineering Practices at BTexact, introduced the proceedings - highlighting that technology disrupts. Graham discussed the users of the future - that is, the children of today - and what their behaviour said about the demands of tomorrow. The possible technological advances discussed included intelligent microwaves to Homo machinus, a machine/human cross, and he emphasised that the people who will most benefit from the technology of the future will be "those the most responsive to change" - to paraphrase Charles Darwin. Bill Nisen, CEO of the Kelvin Institute (a joint initiative between the universities of Glasgow and Strathclyde and Scottish Enterprise), looked at the enabling technologies (for example, nanotechnology and the interface between biology and computer) and the possible impediments, such as inadequate knowledge management, and trust, privacy and security issues. (For example, "can you trust your bespoke ativar to act solely in your best interests?"). These are all areas for research being studied by the Institute. The conclusion was a need for major societal changes. Perhaps surprisingly, the UK and Europe are apparently ahead of the US in anticipating these - as evidenced by the Framework VI research areas. The Branch also expressed their sadness over the recent deaths of two Patent Office experts, George Hamlyn and Geoff Sargent, both of whom were well-known to the audience for all their hard work and enthusiasm in raising IP awareness in Scotland. They will be sorely missed by their many friends and colleagues. The Scottish branch of LES welcomed 2003 with a traditionally late Burns Supper with some 60 members and guests for an evening that mixed the conventional and the downright unusual. Purists welcomed the fiddle, the clarsach, the haunting pipes (Alan Graham of Scotbottle), and the stirring Address to the Haggis by Graeme Colquhoun of McGrigor Donald - and the whisky! There was even some education with some provoking words on Burns from Murray Buchanan of Maclay Murray & Spens. However, the evening was subtitled "The Games We All Play" - and the ever young among us were not disappointed. The introduction of kippers and a strange looking net device (and we are talking fishing, not Internet) to four tables full of IP exploiters and professionals produced a wide range of potential uses - only some of which are repeatable here, like earring, Xmas decoration, and pigeon deterrent! A request that the other two tables design a variation on a tea strainer had similar varied and inventive results. As well as providing after dinner entertainment, Derek Peacock of Future Factory Ltd and Gordon McConnachie of Intellectual Capital Management Group used these business games (based on Turkish tea-strainers!) to remind us all of the breadth and depth of intellectual assets in our clients and organisations, and of the need to ensure that this is properly captured and managed. The official part of the evening closed with an inspiring presentation from Colin Anderson, MD of DENKI on the development of an increasingly successful business which, as he put it, combines games, IT and multimedia and could not have happened without his control and leverage of his IP. All in all, the Branch's "Burns Supper With A Difference" was indeed just that, as well as being a successful and exciting evening - thanks to the tremendous team effort of the Scottish Committee. Our next event, on May 21st is a half-day "BioCream Tea" - on the commercialisation of bioscience from NHS, university and private research (with cream tea of course!) at Bonham's Hotel, Edinburgh from 13.30 - 17.00. More details from Cathy Rooney (cathy.rooney@snbts.csa.scot.nhs.uk) NEWS From IrelandLES Irish Section invites you to their Annual Dinner on Thursday 3rd April 2003 at Chapter One Restaurant, 18-19 Parnell Square, Dublin 1.
This year we will have an after dinner speaker from the USA, George Hedges, who is a US attorney having amongst his clients the Elvis Presley estate. His talk, which promises to be entertaining, is: "Elvis lives! The anatomy of an American copyright case" Provisional bookings and queries may be made by email to bmoore@tomkins.com. The Irish Patents Office have launched an online register and database search system (www.patentsoffice.ie/eRegister/default.asp) providing free and unlimited access to their registers and databases for patents, trademarks and designs. The trademark database may be searched by the mark or owner and restricted by class. Device searching is also possible by means of the Vienna international classification system. Once a trademark has been identified in a search, a link is provided from the database to the register to allow searchers to view the current status and details of a mark. Similarly, whilst the patent register only allows access using an application or publication number, the patent database may be searched using a number of categories, with a direct link available to the patent register once a patent/application has been identified. Barry Moore
LES NE RegionOur next meeting is planned for 14th May 2003 at the Leeds Club, starting at 13.00. Professor Damlen McDonnell, an expert in liquid crystal displays, will be talking about licensing technology in and out of the MOD. After Damlen's talk, there will be small surgery sessions, where Defence Diversification Agency (DDA) staff will be able to discuss particular technology problems. The DDA is a key Government initiative, set up in 1999 to bring about a transfer of scientific and technological know-how and expertise from the military to the civil sphere and vice versa, to the benefit of both communities. The DDA connects business to defence by enabling access to a major, but largely unknown, source of knowledge and leading edge technology from our defence research establishments. For further information please contact Liz Ward (elizabethward@keeblehawson.co.uk) Top Despite their many differences the EU have finally come to an agreement over the Community PatientAfter many years of wrangling, the Community patent finally seems to be coming true. At its 2490th meeting on 3 March 2003, the Council of the European Union reached an agreement on a common political approach regarding the main principles and features of the future Community patent. The Community patent would provide the possibility to obtain a single patent, to be granted by the European Patent Office (EPO), that would be legally valid throughout the European Union. Community patents would significantly reduce the costs of patenting inventions in Europe. The highest obstacles to adopting the regulation on the Community patent proposed by the Commission in July 2000 have been differences of opinion concerning the language regime and the jurisdictional system. The latter was the centre of attention at the 2490th Council meeting, particularly the length of the transition period until a unitary Community Patent Court will be established. Eventually, the ministers agreed on a transition period of seven years, that is, the Court will be established, at the latest, by 2010. The agreement also covers the languages and costs, the roles of the EPO and of the National Patent Offices, as well as the distribution of fees. Now, the common political approach has to be turned into concrete proposals for acts of law by means of which the Community patent and the correspondent jurisdictional system may be created. Barry Quest, Wilson Gunn M'Caw Top LES History31st January 2003 was the 35th anniversary of the LES (UK) inaugural meeting in London. The event is recorded in "HISTORY 1965-1975 Licensing Executives Society International": "Over 100 accepted the invitation to attend. There were representatives present from industry and public bodies, as well as individuals actively concerned with licensing. Thus, the "baby" born in October, 1967, was growing rapidly under the leadership of Dr. Basil J A Bard" Michael Burnside remembers the early days, "I was the first International Secretary in 1974 and things were so unformed in those days that I was not even a member of the Council in this country! We did not have any regular meeting place and much depended on the location of the President. Everything centred around London and I do not think we considered having meetings in the provinces. In the early years we must have had far more half-day and full day meetings. Many of our members were on a learning curve that has no counterpart today. We probably devoted far more time to learning about Europe, which we had not yet joined. The EPO opened in 1978 and we had long discussions about the Common Market Patent Convention. 25 years later and we have still not got it! Receiving Les Nouvelles was very much a main advantage of being a member. If one thinks of how attitudes have changed, it shows that enormous progress has been made. Our membership is much more sophisticated; we take Europe in our stride, the EPO is just accepted!" Top BT has found that calling a friend will help it to maximise its IP potentialQED, a subsidiary of technology development and licensing company Scipher and specialist in intellectual property licensing, has been working with BT to help it market its patents and to negotiate licensing deals with infringers and potential users of these patents. QED has helped BT to raise over £2 million by successfully licensing 15% of the available market for Erbium Doped Fibre, a system which uses erbium for amplifying light signals flowing through optical fibre. QED and BT expect this revenue to grow over the course of the year. QED acquires Yet2.com
Jo Brice, Financial Dynamics Top Lorna Roscow wins an awardLorna Roscow, who featured on the front page of the last edition of News Exchange, was runner up in the first-ever North Manchester Women in Business Awards. She received a prize of £1000.00 and a trophy. Lorna's company, "Inventors Highway", (www.inventorshighway.co.uk) based in Ramsbottom, aims to showcase the products of and services for small inventors like herself. "I was rather chuffed, " said Lorna, "…the competition was of a very high standard." Lorna is also working with the North West Business Access team to put on an exhibition in the North for "small inventors". Top Nipped in the BudUS brewing giant Anheuser-Busch, the company behind Budweiser, has lost its legal battle to stop the producers of rival beer Budvar using the trademark "Bud". The company spent millions on a lawsuit against a small brewery in the Czech Republic, which claims to have produced the original. A new ruling by the House of Lords is a victory for the smaller company, Budejovicky Budvar. The argument arose because Ceske Budejovice, the city where Budvar is located, is known as Budweis in German and it claims to be the original place of brewing for Budweiser. The city claims to have been brewing Budweiser for 700 years but Budvar brewery was not founded until 1895, by which time its American rival had been producing its own variety of Budweiser for 19 years. Although this victory may be sweet, Anheuser-Busch has already prevented Budvar from using or registering the name Budweiser in Argentina, Australia, Brazil, Denmark, Finland, New Zealand and Spain. From a report by Mark Capper in the London Evening Standard
Top New MembersCouncil has been please to welcome the following new members to the Society:
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