[筆記] Ethical Patent Licensing Practices@Innography

Event Page
Holder: Innography

Title: Ethical Patent Licensing Practices
Date: Thursday, February 05, 2015
Time: 11:00 AM Central Standard Time
Duration: 1 hour

Attend this webcast to learn:

• Why Conversant believes that a small handful of patent owners are threatening innovation and needlessly raising costs
• How principled patent licensing is a two-way street that requires licensors and licensees alike to conduct themselves ethically and responsibly 
• Key best practices in principled patent licensing

Summary:

Amidst growing calls from business and the United States Congress to rein in patent trolls, Conversant Intellectual Property Management developed a ground-breaking set of guidelines for ethical patent licensing practices – and called for public response. Conversant’s goal in proposing these guidelines is to spark conversation about how the IP industry should be operating. The company believes that a small handful of patent owners is threatening innovation and needlessly raising costs, particularly for small businesses and inventors. Principled patent licensing is a two-way street that requires licensors and licensees alike to conduct themselves ethically and responsibly in order to achieve mutual economic benefits. Mr. Burt will lead a conversation about principled patent licensing, including discussion of some key best practices.

Speakers:

Gene Quinn

Patent Attorney & Founder of IP Watchdog
http://www.ipwatchdog.com
Gene Quinn is a Patent Attorney and the founder of IPWatchdog.com, the widely popular intellectual property website. The American Bar Association has recognized IPWatchdog.com as one of the top 100 legal blogs five years in a row, from 2009 through 2013. In 2010, 2012 and 2013 readers of the ABA Journal voted IPWatchdog.com the top Intellectual Property Law Blog on the Internet. In January 2014, IPWatchdog.com was also inducted into the ABA Blog Hall of Fame.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He primarily works with start-up businesses throughout the United States and around the world. As an electrical engineer with a computer engineering focus he finds himself frequently assisting entrepreneurs and small businesses with software, computer implemented methods, business methods and Internet innovations. He also periodically works with inventors and businesses who have mechanical and electrical innovations. Between 2003 and 2007, Gene wrote a monthly column for Patent World and served on the Patent World editorial board. He has also previously taught a variety of intellectual property courses at the law school level, including patent law, patent claim drafting, patent prosecution, copyright law, trademark law and introduction to intellectual property. Between 1998 and 2008 Gene taught at Syracuse University College of Law, Temple
University School of Law, The University of Toledo College of Law, Franklin Pierce Law Center and Whittier Law School. Since 2010 he has been an Adjunct Professor at John Marshall Law School where he teaches a course on Patent Rules and Practice. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Scott Burt

Senior Vice President and Chief Intellectual Officer Conversant
Scott leads Conversant’s legal professionals, including the corporate counsel and secretary functions, ligation, and patent prosecution. He also heads the Company’s public policy initiatives, and in 2013 spearheaded the development of its Patent Licensing Principles document. He actively participates in patent licensing negotiations and patent acquisitions. Scott joined Conversant in 2012 and was named to his current role in 2014.

Scott is a 21-year veteran of Jones Day, one of the top IP firms in the United States and globally. At Jones Day, he led a diverse IP and technology practice focused on complex litigation, IP counseling, and IP transactions.  In the patent enforcement and litigation area, Scott’s practice emphasized patent analysis, global litigation and dispute resolution for clients in electronics, software, communications and other industries.

Scott holds a Juris Doctor, Order of St. Ives, from the University of Denver, and a BA in Mathematics with Computer Science from the University of Colorado.  He is a member of Illinois, Texas and Colorado bars, is widely published in professional journals and is a frequent speaker at legal and other conferences.  Scott belongs to the American Intellectual Property Law Association, Licensing Executives Society, and the Intellectual Property Owners Association, and was honored as an Illinois Super Lawyer – Intellectual Property Litigation, in 2005 and 2006.

Phil Hartstein

President and CEO of Finjan Holdings Inc.
Phil Hartstein is President and CEO of Finjan Holdings Inc. (NASDAQ: FNJN).  He oversees the direction and management of current assets and future investments while coordinating with the executive management team and Board to execute on the Company’s vision.

Mr. Hartstein has worked in a number of technology and intellectual property related roles for over a decade.  He started with a boutique IP law firm, worked as an in-house portfolio manager for a VC funded startup, spent time in IP consulting and IP brokerage firms, and prior to joining Finjan, spent four years bringing both private and public market capital, expertise, and credibility in licensing and enforcing patent rights on behalf of owners.

Mr. Hartstein holds a BS in industrial technology from California Polytechnic, San Luis Obispo.  He is a regular speaker on IP and policy related issues, participant in industry and trade organizations, and is a named inventor and patent holder with more than two dozen pending and issued patents across a number of disciplines.

Notes:
Demand letter vs. Notice letter
Demand letter通常只是想要要錢(financial demand), they are badly copied, and usually lacking of further information of the patent which they claimed you infringe.
while Notice letter其實是不大一樣的，當一般的IP擁有者在主張自己的權力時，信件中會更為軟性的提出建議、討論，遠先於提出金錢要求

Notice letter
which starts from the intent of the letter,
who we are
instead of giving hundreds of claims, presenting a few related ones are more likely to be moderate.
The point is initiate a dialogue to discuss if there's any misunderstanding but not demanding money.

Knowing who are you talking to
Remember don't talk business to a legal guy
and don't talk legal to a business guy

Record: Link (Link2)