Also, according to some experts, over 85% of the market valuation of the S&P 500 is represented by intangible assets. Other evidence of the power of intellectual property includes:

• Ernst & Young reports that patent licensing alone should soar from the $110 billion it generated in revenue in 2000 to $500 billion by 2015.
• Qualcomm has generated as much as $430 million in licensing revenue in recent quarters while IBM earns more than $1 billion annually licensing its IP.

However, failing to manage intellectual property can be fatal. The Harvard Business Review concluded that more than $1 trillion annually is wasted in patent assets. Patents can be invalidated, injunctions on revenue-generating products can be granted, and patent litigation can endure for years and cost tens of millions of dollars. Recent examples of patent litigation include:

• Microsoft vs. Alcatel-Lucent - $1.5 billion
• Verizon vs. Vonage - $58 million
• Michelson vs. Medtronic - $1.35 billion
• Medinol vs. Boston Scientific - $750 million
• NTP vs. RIM - $612.5 million
• EOLAS vs. Microsoft - $520 million
• Paragon vs. Weyerhaeuser - $480 million
• @Home vs. AT&T - $340 million

The effective use of IP requires you to know how to inventory your IP. After taking effective inventory, you must be able to determine which IP assets should be licensed, sold, retained, spun-off, borrowed against, pooled and securitized.Don’t miss this unique opportunity to listen to world-renowned authorities discuss a multitude of methods for deriving value from intellectual assets. Be sure to hear the best strategies for managing and monetizing your patent portfolio. Learn how to transform your company’s IP portfolio from a dormant asset into a dynamic asset.

Intellectual Property is a Primary Driver of Corporate Value and is Corporate America’s Achilles Heel

Dear Colleague,

The Federal Reserve recently reported that American businesses now spend as much on developing and purchasing intangibles as they do on their equipment, plants, real estate and other physical assets. By another recent and rigorous calculation, America's total stock of intellectual property today is worth about $5.5 trillion, equivalent to about 45 percent of our gross domestic product and greater than the GDP of any other nation. The ability to introduce innovative products, to secure better production methods, to become the sole provider of particular merchandise all emanates from securing intellectual property rights.

Most institutional investors and corporate managers respect intellectual property as a legal construct. However, both Wall Street and Corporate America have failed to appreciate the value generating ability of IP. Thus, Corporate America has neglected to actively manage its IP portfolio and professional investors have been remiss in trying to assess the value of IP resident in the companies in which they invest.

Savvy business and portfolio managers are beginning to appreciate the fact that IP is more than a legal claim on ingenuity. IP is becoming a revenue producing asset, a crucial ingredient in enhancing corporate brand equity and a weapon to attack competitors. However, IP portfolios may be devalued by reverse engineering and patent expirations. Also, asserting rights to IP is often a necessary, albeit dangerous, proposition as such assertions can boomerang in viscous countersuits.

Don’t miss this unique opportunity to listen to leading IP professionals discuss best practices for managing intellectual property in terms of deriving shareholder value and in terms of using IP as a strategic weapon.

I look forward to meeting you in Philadelphia on May 19, 2009.

David Wanetick
Managing Director
IncreMental Advantage & The Business Development Academy

Agenda

May 19, 2009

Woodcock Washburn
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891

Registration & Networking

IP Asset Management – An Overview of Best Practices

• Understanding your IP portfolio in a business context
• Deploying known IP assets wisely
• Managing patent costs - redundant prior arts searches, centralized filing, litigation, dispute resolution
• Using IP as a revenue generator vs. bargaining chip
• Risk reduction strategies

The Role of Patent Reform and Recent Court Cases in Monetizing and Managing Your Portfolio

Patent reform legislation remains on the verge of becoming reality, with possible changes to damage awards, inequitable conduct, and post-grant review. In addition, the Robert's Court has taken an activist view of patent law, and the Federal Circuit has been more willing to address issues en banc. How does this changing judicial and legislative environment impact your portfolio? What strategies and best practices should you adapt to keep track of these fast moving changes? How responsive should you be in the day-to-day management of your portfolio and licensing activity to these developments?

Coffee & Networking Break

Best Practices for Strategic Licensing

• Aligning licensing strategy with corporate goals
• Freedom to operate
• Patent expiration and license terms
• Exclusive vs. non-exclusive rights
• Assignability and the authority to sub-license
• Risk allocation
• Representations and warranties
• Indemnification and limitations on liability
• Direct vs. contributory infringement
• Attacks on the licensed patent
• Cross-licensing and joint development

Lunch

The Roles and Responsibilities of Chief Intellectual Property Officers

The following are among the issues that will be discussed:

• Should your company create the position of CIPO? Why or why not? Under what circumstances is such a position appropriate?
  
• How can you most effectively lobby your senior management for the creation of a CIPO position?
• What criteria should be used in recruiting a CIPO?
• Where the CIPO should be placed on the corporate organization chart? To whom should the CIPO report?
• How should the position of CIPO be budgeted?
  
• How should the CIPOs performance be measured? How should the CIPO be incentivized?
• What should the CIPOs primary objectives be vis-à-vis the research team?
• What should the CIPOs primary objectives be vis-à-vis the business development team?
• What should the CIPOs primary objectives be vis-à-vis the legal team?
• What is the impact on attorney-client privilege associated with designating a lawyer as CIPO?
• To what extent should the CIPOs role be advisory versus giving the CIPO veto power over corporate initiatives?
• What kind of patent proliferation strategy should the CIPO advocate?
• How litigious should a CIPOs company be?
• What kind of licensing strategy should a CIPO support?

The Role of Litigation in Your IP Strategy

• When should you litigate aggressively
• When should settlements be reached
• When should the threat of litigation be used as a means to secure licensing agreements
• When should the threat of litigation be used as a means of making acquisitions
• How can expenses and reputation be best managed
• The impact on reputation and customer / industry relations

Networking Break

Commercialization Strategies In A Competitive IP Landscape

• What IP issues should be considered before launching a product?
• Is an opinion of counsel necessary after Seagate?
  
• Should an attempt be made to license third party patents?
• When should reexamination be used as a defensive tool?
• If reexamination is the route, should it be ex parte or inter partes?
• How do you prepare for potential litigation?

The Role of Intellectual Property in Merger & Acquisition Decisions

• Prioritizing due diligence in light of compressed time frames and budgets
• Determining what IP is secured (e.g. extensions filed and assignments made)
• Review of employment agreements to safeguard trade secrets
• Review of change of control provisions and indemnifications relating to licenses
• Review of patent claims and surrounding litigation
• Handicapping exposure to anti-trust challenges
• Exposure to open source violations
• Inventorying and managing acquired IP

Adjournment

agenda subject to change

Registration / Membership Coordinator,

at 609-919-1895 ext. 100 or neomi@incrementaladvantage.com