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Detailed Programme

Detailed Programme


Day 1 (Dec 1)

The overwhelming value of most early-stage companies resides in their intellectual assets. However, senior managers of such companies usually have no idea how to value their inventions. This is unfortunate as the inability to value intangible assets puts companies at a severe disadvantage when trying to monetise their discoveries through capital raises, licensing, joint-ventures or sales.

Inventors, investors, patentees, licensors and licensees must be able to articulate the value of their patents and emerging technologies. Otherwise, they will never receive the valuations that they deserve.


Morning

Day 1 will unveil the application of the Total Value Extraction (TVE) framework for valuing technologies. Unlike static valuation methods, Total Value Extraction is a dynamic valuation framework that takes into account many different licensing structuring options such as milestones, variable royalty rates, royalty stacking, division of fields of use licensing, and sublicensing potential.


Afternoon

You will be introduced to the Patent Valuation Gauntlet (PVG). In deriving the value of a patent, PVG takes into account commercial value, assertion value, blocking value, cross-licensing value, reputational value as well as patent invalidity risks and design around risks. The PVG worksheet contains more than 900 issues that should be considered when calculating the value of a patent.



Dec 1, 2016 (Day 1)

Valuation of Emerging Technologies


8:30AM

Registration and Orientation

9:00AM

Application of the Total Value Extraction (TVE) framework for valuing technologies

10:15AM

Tea Break

10:30AM

Comparison of TVE to traditional valuation methods such as

  • Cost Method
  • Market Method
  • Income Method
  • Decision Trees
  • Competitive Advantage Valuation
  • 25% Rule
  • The Monte Carlo Method
  • Real Options Method
  • Binomial Method
  • Probability Weighted Expected Return Method
  • Relief from Royalty Method
  • Excess Earnings Method

 

12:00PM

Lunch

1:00PM

Patent Valuation Gauntlet (PVG)

3:00PM

Tea Break

3:15PM

Additional Valuation Considerations

  • Citation Analysis
  • Enforceability
  • Current Impact
  • Claim Scope Breadth
  • Technology Strength
  • Validity Confidence
  • Litigation Avoidance
  • Science Strength
  • Partnering Licensing Potential
  • Innovation Cycle Time
  • Technology Cogency
  • Research Intensity

5:00PM

End of Day 1

 

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Day 2 (Dec 2)


Morning

You do not get the licensing agreement you deserve. You get the licensing agreement you negotiate.

Licensing intellectual property is extremely complex as there are potentially thousands of permutations to licensing agreements. Thus, tens of millions of dollars can be earned or lost at the negotiating table. Senior executives involved with licensing technology must have a firm grasp of cutting-edge negotiating strategies as well as the nuances of negotiating tactics.

Day 2 consists of a unique blend of general licensing issues that arise during licensing IP as well as strategies designed specifically for negotiating with Technology Transfer Offices and Patent Assertion Companies. Day 2 is replete with case studies and best practices that will provide you with practical insight for boosting returns on your licensing initiatives.


Afternoon

Patent assertion is a high stakes game. When tens or hundreds of millions of dollars are at stake, you must make the most powerful argument possible in seeking patent damages. In addition to discussing a host of creative damages theories, this course will review basic tenets of patent infringement.



Dec 2, 2016 (Day 2)

Negotiating Licensing Agreements for Maximum Returns and Calculating Damages Resulting From Patent Infringement


9:00AM

Licensing Issues

  • Royalty rates - minimums, phase-ins, ascending, descending
  • Upfronts and milestones
  • Granting options to take a license
  • Sponsored research
  • Royalty stacking
  • Improvement rights
  • Sublicensing issues (e.g. vetoes, audits)
  • Fields of use
  • Most favoured nation licensing
  • Have-made rights
  • Managing litigation
  • Royalty audits
  • Indemnifications
  • Maximising duration of license
  • Terminating license

 

10:15AM

Tea Break

10:30AM

Strategic negotiating issues

  • De-risking investment for licensee
  • Negotiating scorecard
  • Negotiating timeline
  • Technical validation
  • Role of outside lawyer
  • Non-disclosure agreements
  • Freedom of operations opinion letter
  • Memoranda of understanding

12:00PM

Lunch

1:00PM

Creative damages theories, and basic tenets of patent infringement such as

  • Reasonable Royalties
  • Lost Profits
  • Price Erosion
  • Entire Market Value Rule
  • Apportionment
  • Accelerated Market Re-Entry
  • Market Spoilage
  • The Georgia-Pacific Factors
  • The 25% Rule
  • Cost of Next Best Alternatives
  • Running Royalties vs. Upfront Payments
  • Milestone Payments
  • Cost of Designing Around
  • Compulsory Licenses
  • Anti-Trust Issues

 

3:00PM

Tea Break

3:15PM

Case Studies on relevant court rulings

  • Panduit v. Stahlin Bros. Fibre Works
  • State Industries v. Mor-Flo Industries
  • eBay v. MercExchange
  • Uniloc v Microsoft
  • Grain Processing v. American Maize Products
  • i4i v. Microsoft
  • Function Media v. Google
  • Mars v. Coin Acceptors
  • Lucent Technologies v. Gateway
  • Cornell University v. Hewlett-Packard

 

5:00PM

End of Programme


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Post Programme Webinar


Flexible ½ Day, and within 30 days of programme end

This segment dissects patents in order to ascertain their ability to withstand invalidity challenges, exclude others from practicing the art described in the patents as well as to determine their licensability.

Among the issues addressed in this course are:

Claims Analysis

  • Why do seminal studies suggest that the number of independent claims is the single most telling indicator of patent value
  • Getting the mix of independent and dependent claims right
  • Balancing broad versus narrow claims

Assessing the Rigor of Patent Prosecution

  • When is a long prosecution history indicative of patent quality
  • Interpreting the impact of office actions on patent strength
  • Determining risks of inequitable conduct

Citation Analysis

  • How do you measure the quality of one patent’s citations against the citations of another patent
  • When might examiner citations be more valuable than applicant citations
  • Are self-citations sound indicators of patent quality

Other Patent Analysis Issues

  • Is it better to have more patents each with fewer claims or fewer patents each with more claims
  • Selecting and the most appropriate terms
  • Impact of continuation filings on patent family value
  • Do patents filed in more (foreign) jurisdictions have more value that patents filed in a single jurisdiction
  • How do drawings impact patent value
  • Are patents that contain more classifications more valuable that those that contain fewer classifications
  • How do you determine how well the terms used in the descriptions sync up with the terms used in the claims
  • How does the number of inventors listed on a patent impact invalidity risks
  • How do you measure the risks and extent of possible patent value deterioration due to re-exam
  • How do you determine the quality of the examiner and the impact of the examiner on patent strength

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