8:00AM - 5:15PM, Breakfast & Lunch Included

8:00AM - 9:00AM
BREAKFAST & Registration

9:00AM - 9:15AM
CHAIRMAN’S OPENING REMARKS

Chairs
John Delaney (NY only)
Nan Wu (CA only)

9:15AM -10:45AM
Impact of Sarbanes-Oxley and Other Public Disclosures on IP Management Practices

Presenters
Gary Bender
Patrick Ellisen

• Impact of SOX and Exchange Act of 1934 on IP valuation and reporting
• Latest trends in class action IP litigation
• Sufficient disclosure of IP-related risks
• Satisfying investors through internal audits and internal controls
• Importance of not overlooking patent expirations
• What should internal audit and compliance teams look for in assessing IP controls?

10:45AM -11:00AM
Morning Break

11:00AM -12:00PM
Chosing the Optimal IP Strategy for Your Company: A Roundtable Discussion

Moderators
Mary J. Hildebrand (NY only)
Robert R. Sachs (CA only)

Panelists
David B. Bernstein (NY only)
Brian Burn (NY only)
Jeremiah Chan (CA only)
Derek Minihane (CA only)
Ludmila Yamalova (CA only)
Terry Ludlow (NY only)

12:00PM - 12:45PM
What is Your Intelectual Property Worth?
Methods for Determining Value

Presenters
Weston Anson (CA only)
David Drews (NY only)

• Infringement, transaction, bankruptcy: Why do I need to know the value?
• How should IP assets be viewed when valuing?
• What is the valuation process?
• How does context enter into it?
• What methods are available?
• What are the pros and cons of each?
• Which method is best for my situation?

12:45PM -1:45PM
Networking Luncheon

1:45PM -2:15PM
Innovative Royalty Structures for Licensing Deals

Presenters
Ira Blumberg (CA only)
John Delaney (NY only)

• Fundamental types of royalty structures
• Considerations for choosing a particular royalty structure
• Useful variations
• Real world examples

2:15PM - 2:45PM
Internal IP Management Audits and Controls

Presenter
David Bernstein

• Management of the IP Portfolio
  • Patents & applications: US and non-US considerations
  • Trademarks/service marks and applications
  • Confidentiality & other agreements
• Management of invention disclosures
  • Establishing priorities
  • Patent committee meetings
  • Managing patent prosecution
  • Roles of in-house and outside counsel
• Communication within your organization
  • IP education
  • Assisting in business decisions
• Communication outside your organization
  • Investors
  • Rule FD
  • Analysts
  • The Press
  • The World
• SOPs
• IP Audits
  • Due Diligence
  • SOX Compliance
    

2:45PM - 3:30PM
IP Securitization and Other Financing Tools

Presenters
William S. Veatch

• Overview of the growth of the IP receivable finance market and the growing interest of investment banks in these types of deals
• Structuring and documenting the license and royalty stream to make it attractive for financing by, or sale to, a bank, finance company, or securitization vehicle
• Structure and requirements of an IP securitization
• What are the advantages to a securitization?
• Non-securitization royalty finance structures: "true sale" vendor programs
• Overview of common structures to finance, and special issues relating to financing of:
  • Software royalties
  • Drug patent royalties

3:30PM - 3:45PM Afternon Stretch

3:45PM - 4:30PM
New Directions in Patents – Auctions and IP Acquisition Companies

Presenter
Andrew Ramer

• How can patent holders best monetize their patent assets?
• IAM v. (traditional) asset management
• The IP marketplace and IP auctions
• IP in investing and new IP-type financial transactions
• The IP marketplace post-eBay, MedImmune, KSR and AT&T

4:30PM - 5:15PM
The Role of Intelectual Property in Mergers & Acquisitions

Presenters
Karna J. Nisewaner (NY only)
William "Billy" Schwartz (CA only)

• The "downside" of careful due diligence
• "Viral" effects of a transactions, particularly as a result of portfolio-based patent licenses, commitments to standard-setting organizations, non-competes and MFNs
• Role of "catch all" licenses, particularly in spin-off and asset-based transactions
• Pitfalls of failing to "clean up" the past
• Investigating the value of patents and inventions
• Mitigating copyright issues caused by third party software through effective due diligence
• Understanding employment agreements and their impact on assets
• Strategies of effective integration