Licensing Best Practices (eBook)

The Licensing Executives Society was founded in Florida in 1965 as a professional forum for the exchange of ideas and views on the licensing profession. The Society rapidly grew in North America and soon spread to Europe, Asia, and Australia, where new national organizations were established. In the early 1970s, the need to coordinate the global interests of the societies, their members, and their clients inspired the creation of LES International. Today, there are more than 10,000 members in LESI's 27 member societies.

Preface by Robert Goldscheider.

PART ONE: THE CHANGING LANDSCAPE OF LICENSING.

CHAPTER 1 EXPANDING BUSINESS OF LICENSING (Willy Manfroy).

CHAPTER 2 TECHNOLOGY VALUATION (Dr. Richard Razgaitis).

CHAPTER 3 THE EXPANDING ROLE OF TECHNOLOGYMANAGEMENT CONSULTANTS
(Robert Goldscheider).

CHAPTER 4 DREADFUL DRAFTING: THE DO S AND DON TSOF LICENSING
AGREEMENTS (John T. Ramsay, Q.C.).

PART TWO: NEW OUTLOOKS ON PATENTS,TRADEMARKS, COPYRIGHTS, AND TRADE
SECRETS.

CHAPTER 5 RECENT CHANGES IN PATENTINGPROCEDURES AND PROTECTION:
DEVELOPMENTSIN THE EUROPEAN AND U.S. PATENT SYSTEMS (Dr. Heinz
Goddar, Alan H. Gordon).

CHAPTER 6 THE CRITICAL ROLE OF TRADESECRET LAW IN PROTECTING
INTELLECTUALPROPERTY ASSETS (Melvin F. Jager).

CHAPTER 7 COPYRIGHT, SOFTWARE, AND WEB SITEISSUES IN THE INTERNET
WORLD (Michael A. Lechter).

CHAPTER 8 TRADEMARKS, TRADE NAMES,AND TRADE DRESS (Thomas M. Small,
Kenneth D. McKay).

PART THREE: ADVANCES IN INDUSTRY-SPECIFIC LICENSING.

CHAPTER 9 LICENSING IN THEBIOTECHNOLOGY INDUSTRY (Dr. Cathryn
Campbell).

CHAPTER 10 PHARMACEUTICAL LICENSING DURINGTHE REVOLUTION (Dr.
Thomas A. Picone).

CHAPTER 11 UNIVERSITY LICENSING TRENDS ANDINTELLECTUAL CAPITAL (Dr.
Louis P. Berneman, Dr. Kathleen A. Denis).

PART FOUR: FINANCIAL ISSUES, LEGAL PROTECTION,AND LITIGATION
DEVELOPMENTS.

CHAPTER 12 WHAT TO DO WITH TECHNOLOGY RIGHTSTHAT ARE FINANCIAL
ASSETS AND INSTRUMENTS (Dr. Nir Kossovsky, Bear Brandegee).

CHAPTER 13 IC-BASED CORPORATE CARVE-OUTS:STRATEGY, STRUCTURE, AND
FUNDING (James E. Malackowski, Suzanne Harrison).

CHAPTER 14 LICENSING AND LITIGATION (Ronald L. Grudziecki, Arnaud
Michel).

CHAPTER 15 ALTERNATIVE DISPUTE RESOLUTION:FIGHTING SMARTER,
SPENDING LESS (Tom Arnold).

PART FIVE: LICENSING IN THE GLOBAL COMMUNITY.

CHAPTER 16 IGNORE EUROPE AT YOUR PERIL! (Prof. Dr. Peter Chrocziel,
Nigel Jones, Thierry Sueur).

CHAPTER 17 CHALLENGES OF LICENSING TO ANDFROM CHINA AND HONG KONG
(Larry W. Evans, With a Contribution from Chi Shaojie).

CHAPTER 18 IS THERE A FUTURE FOR JAPAN? (Dennis Unkovic).

CHAPTER 19 LICENSING IN RUSSIA: OPPORTUNITIESAND PITFALLS (Dr.
Natalia Karpova).

CHAPTER 20 AUSTRALIA: LICENSING OPPORTUNITIESIN THE MEDICAL AND
BIOTECHNOLOGY INDUSTRY (Rodney DeBoos).

CHAPTER 21 CHALLENGES TO ARAB INDUSTRIESIN ACQUIRING AND SELLING
APPROPRIATETECHNOLOGIES (Talal Abu-Ghazaleh).

CHAPTER 22 THE SOUTH AFRICAN EXPERIENCE INECONOMIC DEVELOPMENT
(Alan Lewis, Don MacRobert).

CHAPTER 23 PROSPECTS FOR INCREASEDLICENSING IN LATIN AMERICA
(Fernando Noetinger, Gabriel F. Leonardos).

FURTHER READING LIST.

INDEX.

"When I first skimmed this book, I thought it was nothing more than
a collage of independent articles-but was I ever wrong! Bob
Goldscheider has masterfully pulled together an excellent
up-to-date position on licensing best practices in several
jurisdictions. The flow is excellent. The information I need is
well categorized and it's already proving to be an excellent
resource. Bob's choice of authors is exceptional. I personally know
all of them and take great stock in their advice that they so
willingly provide."

John H. Woodley

Past President

Licensing Executives Society

"A comprehensive digest of national and international advances
and developments in licensing! Licensing Best Practices is a
veritable anthology and compendium on general and industry-specific
licensing practices and licensable intellectual property assets. It
is a handbook every licensing executive and intellectual property
practitioner will want to peruse and keep on their desk!"

Karl F. Jorda

David Rines Professor of Intellectual Property Law & Industrial
Innovation

Franklin Pierce Law Center

Concord NH

"It was a great privilege to be given the opportunity to preview
this outstanding work. The Licensing Executives Society is the
world's leading organisation of technology licensing and management
professionals. Bob Goldscheider and his team have drawn upon the
rich resources of its members to produce a work of immediate impact
and lasting influence on a field of economic endeavor which, as the
work itself shows, is expanding exponentially. Don't leave home
without it."

Des Ryan

Consultant (and former Partner)

Davies Collison Cave, Patent Attorneys and Barristers and
Solicitors

Melbourne, Australia

"This book does serious double duty. It is a helpful primer for
business executives and people breaking into the licensing field
because it provides broad, often in-depth coverage. It also serves
a helpful purpose for seasoned licensing executives and lawyers:
first, it endorses many of the things that we do and think and
hence serves as a reality check; second, at a deeper level, it
proposes techniques and analyses, some of which are necessarily new
to each of us because the thing about licensing is that you learn
every time out. This book provides learning for even the most
seasoned."

Roger M. Milgrim

Partner

Paul, Hastings, Janofsky & Walker LLP

"Licensing Best Practices is a necessary book for any person
involved in licensing. The book provides valuable, practical
insights that can be readily utilized in licensing matters. The
comprehensive contents are set forth in understandable,
reader-friendly language. I highly recommend this work."

Michael A. Epstein

Chair, Intellectual Property and Technology Practice

Weil, Gotshal & Manges LLP

"Bob Goldscheider's [author and editor] books always combine a
solid and even scholarly knowledge of the law with the
practicalities of doing business in the complex world of licensing.
In this newest work, which will be of value to both industrial and
university licensing professionals, the emphasis is on 'how to do
it' in many different environments, with each chapter written by
renowned experts"

Lita Nelsen

Director, Technology Licensing Office

Massachusetts Institute of Technology