Licensing Best Practices: Strategic, Territorial, and Technology Issues

"The LESI Guide to Licensing Best Practices, to which I was proud to contribute, has found solid acceptance in the international licensing community. The new volume of Licensing Best Practices maintains this high standard. It was designed to be complementary to its predecessor and broadens the scope of the scholarship. Standing alone, Licensing Best Practices is a valuable source of contemporary information. In combination with The LESI Guide to Licensing Best Practices, we have a very valuable source of insights and practical knowledge."
—Heinz Goddar Partner Boehmert & Boehmert

"Few if any other intellectual property references lay the required geographic foundation for the scientific, business, and legal issues presented. Goldscheider and Gordon demonstrate that tech transfer occurs in a global arena. The book lives up to its title: Licensing Best Practices."
—James E. Malackowski President & CEO, Ocean Tomo, LLC past president, LES–USA & Canada

An invaluable complement to the field's acclaimed book on licensing best practices

Spanning the globe, from Scandinavia to Japan and Mexico to Korea, Licensing Best Practices provides a comprehensive and user-friendly resource for professionals in licensing and technology management. Featuring contributions from some of the most highly regarded LESI professionals, this definitive guide includes detailed discussions on some of the hottest topics in licensing, including:

• Licensing and Technology Transfer to China
• Software Licensing as a Driver of the Indian Economy
• Secrets of Successful Dealmaking in Asia
• Licensing in Scandinavia—Home of Entrepreneurial Inventors, Industrialists, and Philanthropists
• Global Innovation and Licensing Opportunities on the Internet
• Energy and Environment Driving Technology and Licensing
• Licensing Nanotechnology
• Assuring Royalty Compliance in High Technology Licensing
• Intellectual Property Allocation Strategies in Joint Ventures
• Applications of Game Theory to IP Royalty Negotiations

The licensing discipline has steadily grown in importance since 1965, when the Licensing Executives Society (LES) was founded by ten Americans. During this time, licensing has evolved from a staff function performed by middle managers at relatively few technologically minded companies to robust operations of business of all sizes, universities, government agencies, and NGOs with a global focus, that frequently involved the most valuable assets owned by these proprietors. LES International (LESI), founded in 1974 as the coordinating body of all the national and regional LES Societies, has evolved in parallel into a dynamic professional organization, with over 14,000 members who operate vigorously in virtually every country of the world.

Licensing Best Practices contains accounts of experience and commentaries about the technical, industrial, and legal environments from a group of successful licensing executives and scientists who have freely volunteered to share their wisdom with their peers, both inside and outside LESI. Many of the writers have helped create the conditions described in their contributions to this book, adding to its relevance to readers. As an eclectic anthology, it covers a broad spectrum of interests.

The strategy of the editors was to provide a synergistic companion to its groundbreaking predecessor, The LESI Guide to Licensing Best Practices, the contents of which remain essentially accurate. This volume contains an entirely new collection of articles by many of the best and brightest thinkers and practitioners in contemporary licensing. The chapters are clearly written and entirely user-friendly.

The book is organized into three sections, Territorial Commentaries; Scientific Issues; and Business, Legal, and Professional Issues. The geographic areas in which important realities are examined include China, India, Korea, Japan (particularly its revitalization), other Asian countries, Mexico, and Scandinavia. Scientific issues addressed are the rapidly developing Internet, Energy and Environment, Biochemistry, Nanotechnology, and other cutting-edge technologies, as well as the physical analysis of sophisticated products. The Business, Legal, and Professional issues discussed include the challenges faced by a top multinational law firm, small companies, joint ventures, strategic alliances, Game Theory players, and examiners of performance inside license agreements.

Licensing Best Practices is designed to help generalists interested in technologically oriented businesses, as well as specialists with all kinds of expertise.

ROBERT GOLDSCHEIDER conceived and edited the first volume and is Coeditor of this book. He is an attorney and pioneer of the profession of technology management consulting. He heads the International Licensing Network, which was formed in 1975. He has also established precedence as an expert in litigation and has testified over fifty times. Mr. Goldscheider is the author of two treatises on licensing issues that are regularly update and has published over thirty articles on licensing-related subjects. He has been active in LES since 1967, has regularly lectured at LES and other meetings around the world, and believes he has taught more people about licensing than anyone alive.

Alan H. Gordon has thirty-five years' experience in the practice of intellectual property law. He established Alan H. Gordon & Associates after having been aprincipal/partner of Fish & Richardson, P.C.; a partner/shareholder with Arnold, White & Durkee (now Howrey, LLP); and an associate with Burns, Doane, Swecker & Mathis (now Buchanan Ingersoll P.C.). He earned his BS in engineering from Columbia University in New York City and his JD (with Honors) from The George Washington University in Washington, D.C. He is a registered patent attorney in the U.S. and a registered patent agent in Canada and the Philippines. He is an author and frequent lecturer in the intellectual property area and has appeared numerous times as an expert witness in patent, trademark, trade secret, and licensing cases. Mr. Gordon has served as a local chapter chair, committee chair, trustee, vice-president, and secretary of the Licensing Executives Society (USA & Canada).