As part of her annual Best Practices in Intellectual Property Conferences, Kim Lindy organizes a number of “master classes” which are given simultaneously by different IP Professionals from different IP Firms.
The following classes were available:
- Master Class 1: “Preparing for and defending IP Diligence: Strategies to Maximize Value to Investors and for Exit” given by Adam Samansky of Mintz Ferris Popco, etc.
- Master Class 2: “Stratasys LtdMore Than Technically Correct – A Workshop for Learning How to Gauge Whether A Patent Offers the Complete Package” given by Michael Faibisch (Senior In-House counsel at Marvell).
- Master Class 3: “David versus Goliath. Can Your company Make Money from Patent Litigation? You have heard the stories, read accounts in the news.. but how does it happen without costing the company a fortune in advance?” given by Ronald Abramson and David Liston of and Naomi Assia.
- Master Class 4: “Valuable Patent Prosecution: Tips and Traps (*Plus – Win a GoPro!)”, given by Jeffrey A. Berkowitz and Elliot C. Cook of Finnegan (I am leaving these initials as I know that US professionals like having a middle initial so much that often it doesn’t even stand for anything).
- Master Class 5: “The use of patent information in a high tech companies, Actual Case Studies from International High Tech Companies” given by Daniel Ovadya of Questel and Sebastien Hermann of Stratasys Ltd.
Usually these are held the day after the IP Conference, but since the conference was held on Election Day where apparently people need a whole day holiday to make up their mind who they least don’t want to vote for, this year the Master Classes were held on the day before.
Another difference was that instead of being in the morning and finishing lunch time, these started at 1 PM and went on until 4 PM. This had two ramifications. Firstly, it was much easier to get there on time without hitting Tel Aviv traffic, and secondly, instead of croissants and bridge rolls with smoked salmon and cheeses, there were over-stuffed pastrami sandwiches and interesting combinations like sweet potato and eggplant for the vegetarians. Happily, the Sheraton Hotel was taking the opportunity to practice making its Kosher-for-Passover flour-free non-dairy desserts, which gave one a range of ideas for impressing guests over the then forthcoming, now recent, holiday. (Perhaps in light of the recent AIPPI fiasco, I should note that the food was Kosher).
All the classes are high quality. I usually leave it for Kim to decide which class I should attend. She tends to recycle the speakers, or rather the same sponsoring companies tend to showcase the same partners from year to year.
This time, I heard Adam Samansky from Mintz et al. Adam’s presentation was basically about IP Due Diligence, and in pleasant contrast to some ‘experts’ who present software that calculates the value of IP portfolios based on algorithms that look at number of patents and how many countries they are filed in, add in the date and multiply by a technology-specific value-added quotient, he simply went through the type of mines that lie in many patent portfolios that have a nasty habit of blowing deals out-of-the-water, or at least devaluating the value of the IP of a company.
The type of issues Adam raised included whether the patent was assigned to the company by the inventor, and if the company had been bought and sold, was each patent actually owned by the company trying to sell or license it, or was it owned by some defunct entity? Adam also showed concrete examples of boiler-plate NDA texts that include non-litigation clauses and other stuff that can subsequently come out of the woodwork and cause problems. What was clear was Adam was talking from experience.
I was pleasantly surprised to see that the audience (which was the same size as that of the recent AIPPI Annual General Meeting, despite a further 4 master classes taking place simultaneously) included junior members of established Israel patent firms. In other words, established firms are willing to invest in training for their professional staff, and see these events as appropriate. This is a positive and relatively recent development, where until now I have had the feeling that the larger firms were boycotting the event.
Often one needs to find a US attorney to opine on such issues, and I came away feeling that Adam was someone I could recommend as being thorough and knowledgeable. I realize that this is probably why Mintz sent him over to present. But it worked.
I can’t remember Adam’s anecdotes so will finish this report with two recent developments, both from this year:
- The inventor-founder of the company that was sued by an investor for not assigning the patent to the company. At the summations stage, the CEO of the company contacted me to look into what had happened. It was years since I’d written and prosecuted applications for the company, and I was a little apprehensive, but went into Public PAIR and so to my relief, that we had duly registered an assignment from the inventor to the company shortly after entering the national stage into the US. Back then, pre America Invents Act, applications HAD to be filed in the name of the inventor. Here’s the thing: the lawyer representing the Plaintiff didn’t do the two minutes due diligence to make sure that what his client had told him reflected actual events. The inventor was sued for a million shekels for not assigning the patent to the company and didn’t bother contacting the agent of record or the attorney who filed the patent to find out what had happened. As it happened, everything was in order, but this was a totally salvageable issue. We could simply have filed an assignment!
- The University Tech Transfer company that told me off for filing the patent in their name as recorded in the Company Register. Apparently they prefer to file in a different name that is more easily understood as linked to the university. I pointed out that I always check the official name to make sure that it is correct, and if we assign rights to a non-existent entity, then it could be very difficult to subsequently license those rights. The response was that other patent attorneys had raised this issue in the past, but the CEO likes to do it that way.
In summary, I feel perfectly competent to do due diligence for clients (and do so regularly). However, it happens that sometimes clients need a US licensed attorney for this purpose. Indeed, only a US licensed attorney is qualified to opine on matters of US law. If I need to sub-contract to someone in the US or to recommend them for this type of thing, I would have confidence in Adam Samansky.