Licensing IP can be both defensive and proactive. Uncertainty in patent quality and in the outcome of litigation suggests that usually it is better to be a licensee than an alleged infringer. But there are other reasons for licensing in the current fast-paced business environment, such as leveraging assets to achieve freedom to operate or to gain access to the developments of others in creating new products or services. The panel explored these issues as well as the following:
- Implementing and institutionalizing a licensing strategy that anticipates future competitors and fills technology gaps to compete effectively, all in a way that will serve your organization for years to come
- Selling management on a sustainable risk/reward approach to preemptive licensing
- Using pin-point licensing and cross-licensing as enablers in the marketplace, particularly when no one company has the resources to do it all
- Assessing patent quality in light of changes in USPTO patent examination, judicial interpretations by the courts, legislative proposals, and patent owner behavior, including leveraging from Supreme Court decisions in the Medimmune and KSR cases
- Using a variety of patent valuation techniques to negotiate and establish license payments
Panelists for this session included: Charlotte Copperthite, Senior Counsel Licensing and Litigation, Schlumberger Limited; Steve Fox, Of Counsel, Foley; Georgann Grunebach, Vice President, Intellectual Property, Fox Group Legal; and Todd Harrington, General Counsel, DTS Digital Cinema, Inc.