MAY 30, 2012

The Pre-Exchange Workshop - IP valuation and patent drafting training course
8.30am -5.30pm

AIPEC is proud to present this unique IP valuation and patent drafting training course, which will provide attendees with interactive sessions on the practical skills required to determine license opportunities, as well as be able to draft, review and closely scrutinize patent related documents. Concise notes are given on how to use the most theoretical models in real life situations with a focus on the key terms and issues when IP professionals are negotiating the value of intangibles. Further, the master class will include advanced training in patent drafting and analysis and seek to demystify the terms with a focus on the maximizing value and knowing how to put your best arguments forward in a complex negotiation on valuation. A series of cases studies will be discussed with practical tools and insights for improving your awareness of:

Claims Analysis

  1. Studying claims carefully to determine their scope and how valuation can be affected
  2. Value of independent claims and how many of them are included in the patents
  3. Improving clarity and understanding claims
  4. How can dependent claims add to your valuation position?

Practical IP Negotiation Tactics

  1. Negotiation strategies in the IP valuation and monetization context
  2. Art of asking better questions during negotiations
  3. How to prepare your claims chart

Agenda

Analyzing Patents & the Rigorous Patent Prosecution Process

  1. Understanding Prosecution History
  2. Good vs. Poor Patent Drafting of Specifications and Claims
  3. The Ugly Side of Inequitable Conduct
  4. Office Action Scrutiny and the Role of Examiners
  5. What Types of Citations to Look For
  6. Common Mistakes in Patent Drafting that Weakens a Patent’s Value
  7. Spot Good Indicators of Patent Quality

Advanced Licensing Issues
Research and Development Considerations

  1. Different Types of Royalty Rates for Specific Industries
  2. Contract Drafts: Refresher on warranties, representations, undertakings and misrepresentation
  3. Liability clauses, Limitation of Liability, Delay Clauses, Liquidated Damages
  4. Sublicenses, Most Favored Licensee Clauses
  5. Cross-Licensing
  6. IPR clauses and indemnities
  7. Case Studies, Managing Possible Litigation Scenarios

Lunch Break and networking break

Calculation of Patent Damages

  1. Recent developments in Patent Damages Law
  2. Classic Recovery of Lost Profits, Reasonable Royalties, Established Royalties, Infringer’s Profits
  3. Methods of Apportionment, Creating Licensing Practices, Building a Favorable Damages Case

Negotiation Tactics

  1. The Importance of Due Diligence
  2. Who are the Key Decision Makers, Know your Timelines, Costs and Preparations Chart
  3. Hiring Professionals Who Can Save the Deal, NDAs, and Well Crafted Agreements

Group Discussion and Q&A
Course leader will answer questions regarding advanced licensing management and related issues that may arise during the class.

Course Leaders:

Ellen (Kim) Sein Aye, Managing Partner, Plasseraud IP Shanghai
Atom (Xi Jun) TONG, Chinese Patent Attorney, Plasseraud IP Limited (Shanghai)
MAY 31, 2012 - THE EXCHANGE DAY 1

8.00

Breakfast Registration

8.45 - 10.00

Taking it to the Top: Corporate IP Management Strategies
In this interactive panel discussion, experts from leading and major industries will share insights and their experiences concerning the important IP issues they face. The key drivers in IP are identified and profound insights on business and investments will be discussed as it relates to IP and innovation. These experts will discuss creating business-aligned IP strategies using industry sector and boardroom scenarios.

(M) Mr. Kim Kwang Jun, Senior Vice President, General Counsel, Corporate Legal & IP, Samsung
Mr. Stefan Tamme, Senior Director of IP Strategy & Licensing, Rambus Inc.
Mr. Guy Proulx, Managing Director, Transpacific IP
Elizabeth Chien-Hale, IP Director APAC, EATON
Jim Brelsford, SVP IP Licensing, SanDisk

10.00 - 11.00

Bridging the Gap: Licensing IP Capital and IP Monetization.
This panel will highlight recent landmark deals and provide suggestions on how to transform your company from one that automatically churns out patents to one whose IP strategy serves your business objectives.

Dr. Don Merino, Senior Vice President, Asia Licensing Sales, Intellectual Ventures

11.00 - 11.30

Networking Break + Meetings

11.30 - 12.30

Growth Strategies: Technology Transfer in Challenging Times.
AIPEC invites you to be briefed by China Technology Exchange (CTEX), a technology transaction service provider jointly established by the Beijing Municipal People’s Government, the Ministry of Science and Technology and the State Intellectual Property Office with approval from the Chinese State Council, on the rapid technological developments of Chinese enterprises and how they cope with the challenges they face domestically and abroad from greater international business presence.  Comments and questions from the delegates to the panelists will be welcome.

Mr. Li Zhong Hua, Assistant President, China Technology Exchange (CTEX)
Mr. Philip LIM Feng , CEO, Exploit Technologies (A-Star, Technology Transfer Office)

12.30 - 2.00

Lunch

Tracks and Group Discussions 1 [ 14.00 - 15.30 ]

Section A

Research & Development Methodologies that Increase IP Potential and Value.
As companies spend more resources and more capital on R&D, this transformation leads to more Intellectual Property assets being generated.

  1. What R&D Leaders Need to Know about Innovators: Tips on Conquering Innovation Fatigue
  2. Training R&D Staff to Be More Effective with IP
  3. Building a Community of Practice in IP
  4. Using Patent Law to Improve Experimental Work for Better R&D ROI
  5. Learn how to optimize the R&D processes to maximize IP value.

Jeffrey D. Lindsay (林哲甫), Head of Intellectual Property, Asia Pulp and Paper

Section B

IP Management Lifecycles
A lifecycle approach to IP management recognizes that IP is a ubiquitous asset within a corporation. It manages that asset in accordance with its value. Tools that manage the IP lifecycle cannot focus only on the legal tasks of patent prosecution. Instead, support for a wide range of activities that help to identify, secure, monetize, and manage the declining value of IP are necessary in order to maximize that value.
This session will focus on how to strategies your IP Lifecycles and achieved maximum value.

Scott Warren, Managing Director, Kroll Ontrack
Mr. Yoon YeaSun, Head of Intellectual Property, NHN
Elizabeth Chien-Hale, IP Director APAC, EATON

Section C

Today’s Most Undervalued Asset Class: Patents?
Today’s most undervalued asset class is not what one would expect. What are smart investors buying today and why? Companies like Google, HP, Microsoft, are acquiring valuable patents on the cheap with increasing frequency. This leads to the conclusion that the most undervalued asset in the world today is knowledge and intellectual property in the form of valuable patents. Find out where the value lies in your company and how to extract it from places and assets you may not consider. Learn how to maximize value from distressed portfolio companies.

Mr. Eric Liu, IP Director, ZTE
Mr. Guy Proulx, Managing Director, Transpacific IP
Mr. Lin Hua, Deputy General Counsel, SNDA

Tracks and Group Discussions 2 [ 16.00 - 17.30 ]

Section D

Mining Patent Gold: Patent Monetization and Match Making.
Learn how to obtain the highest value for your patent monetization efforts by selecting the most profitable match making and optimal path to profit from your company’s portfolio. Know how to correctly assess validity and value of your patents to successfully monetize your patent. Learn what are the most effective ways and methods to monetize on patented technologies such as auctions, patent brokers, corporate patent buyers, and patent matchmaking.

Kevin Mum, CEO, Edge Idea
Mr. Yang Xuri, Director of the Technical Management Department, Founder Group

Section E

Intellectual Property Legal Issues.
Get first hand insight on patent sales and anti-trust scrutiny case studies and learn how to deal with foreign government intervention for domestic industry protection.

Scott Gordon, Associate, Fulbright & Jaworski L.L.P.
Fabrice Mattei, Partner, Rouse
dinner



Networking Dinner 6.30pm till 9.30pm

JUNE 1, 2012 - THE EXCHANGE DAY 2
Regulation | Litigation | Protection

9.00 - 9.45

IP Litigation and regulations landscape in China.
Panelists will address the changing landscape of Chinese patents, China’s IP policies and new administrative methods of dispute resolution. Legal Chinese experts will discuss recent IP cases as well as actions you can take to avoid legal disputes and provide suggestions on how to maximize obtaining positive results during an IP dispute in China.

Mr. Eric Liu, IP Director, ZTE

9.45 - 10.15

IP regulations landscape in South Korea and Japan

Keisuke Hayashi, Partner, Takahashi, Hayashi and Partner Patent Attorneys, Inc.

10.15 - 10.30

Networking Break

10.30 - 12.00

IP Protection and Trade Secret Strategies

Scott Warren, Managing Director, Kroll Ontrack

12.00 - 5.00

Golf Tournament

GREAT WALL TOUR AND NETWORKING LUNCH

EVENT VENUE

venueBeijing

EVENT FORMAT

  1. Innovation
  2. Licensing
  3. Trademark
  4. Valuation
  5. Technology Transfer
  6. R&D
  7. Patent Monetization

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