Opening Remarks from Chair
Franco Rossetto
Deputy Director and Legal Counsel, Technology Development and Commercialization, University Health Network

Examining Strategic Trends to Extract the Most Value from your Intangible Assets
Ron McCullough PhD MBA FCAE
Progrid Evaluation Solutions
Rob McLean CA
President, MatrixLinks International Inc.

Valuation of IP: Establishing a Context Specific Market Price for Innovative Intellectual Property
Andrew C. Harington, CA CFA CBV
Cole & Partners
William C. Dovey, FCA CBV CA CA•IFA
Cole & Partners

• Determining the context specific market price of IP
• What is a trademark worth?
• How important is it to take human effort into consideration when valuating IP?
• Negotiation tips relevant to establishing the price of IP
• How do you evaluate a new company that hasn’t started generating revenue yet?
• How do you best incorporate profit generation into the equation when you are dealing with a public research organization?

Scrutinizing Legal Options to Commercialize IP: Weighing the Pros and the Cons
Lenni Carreiro
Patent Counsel, Sanofi Pasteur Limited
Eileen M. McMahon
Partner, Torys LLP

• Understanding the legal options involved in taking a discovery from the point of discovery or invention to market:

- Patenting
- IP Licensing Agreements
- Other options
• Looking at various strategies:

- Licensing to keep it from competitors or use it for yourself
- Licensing-out versus licensing-in
- Exclusive and non-exclusive licenses
- Selling or transferring IP assets: understanding what’s best for the companies involved
• Advice to help you auction off your IP:

- What should a purchaser or a potential buyer look for in an IP auction?
- What are the legal considerations for the participants to the auction?
• Identifying and following the steps in the process to commercialization:

- Conducting an analysis of the “competitive landscape”
- Identifying the IP that needs to be acquired and the licenses that need to be secured to advance your project
• Considering the impact of the recession on commercializing IP:

- What impact will the economy have?
- Assessing the impact on negotiating power and financing?

Negotiating IP Rights in Joint Ventures and Partnerships to Optimize Proprietary Rights
Andrea Rush, Partner
Patent Agent, Trademark Agent
Heenan Blaikie LLP

• Negotiating proprietary rights over IP developed through a JV arrangement:
  - Which IP rights can you protect before entering an agreement?

- What happens to IP rights at the end of the agreement, or in a change of control?
- Can organizations share ownership of intellectual property that is produced in a joint venture?
• Managing IP licenses in joint ventures and partnerships:

- To what extent can you piggy-back on a partner’s license?
- How can parties in a joint venture share and coordinate licensing and usage rights?
- What rights can venture parties get to licensed IP technology?
- Calculating royalties
• Advice to help improve public/private relationships in R&D partnerships:

- What should researchers consider at an early stage?
- What should public bodies consider when looking at their product?
- What due diligence should be done?
- Best practices
- Overcoming frustrations

Applying Legal Protections to your Company’s R&D
Noel Courage
Partner, Patent Agent, Bereskin & Parr LLP

• Identifying triggers/signals indicating that a new discovery is afoot
• Establishing “Proof of Concept”

- How best to operate once proof of concept has been established
- Optimizing strategy
• Discussing business strategies driving:

- The decision whether or not to patent
- Advantages and disadvantages of patenting
• What elements should you trademark?
• Discussing the other protections available:

- Trade secrets
- Confidential information

Protecting IP Rights in the Product Development Pipeline
Stuart Ash
Partner, Gowling, Lafl eur Henderson LLP

• Examination of the product development pipeline
• What information do you need to provide experts to draft a strong patent?
• Walk through the legal issues and IP issues that arise at various stages of legal process as well as in the Research process
• Determining when to impose proprietary rights over the research being conducted?

Wednesday, December 2, 2009

Opening Remarks from Chair

Learning Tips and Best Practices by Dissecting Successful Commercializations
Dr. Gavin Zealey
Executive Director, Corporate Development, Sanofi Pasteur Limited

This session will be dedicated to learning from case studies of successful commercialization experiences. Dr. Zealey will lead you through a successful commercialization initiative and delve into a detailed analysis of the strategies and approaches that lead to success. Discuss the most effective tactics that contributed to success and improve your own prospects for a greater return on investment.

Post-Mortem of a Commercialization Failure
Marc Castel
Director of Commercialization, Ontario Centres of Excellence Inc.

Much can be learned by analyzing the mistakes and strategic errors that contributed to a commercialization failure. Identify the gaps in knowledge, fl awed strategy and mistakes that stood in the way of a successful attempt at commercialization.

Topics covered may include:

• What could have been done differently that would have made the project successful?
• How could the researchers have negotiated a bigger deal, or more rights?
• How could the purchasers have gotten a better deal?
• Understanding the failure:
- Was the IP over valued?
- Identifying erroneous assumptions
- Market misidentification

Best Practices in IP Due Diligence
Eric Boehm, Counsel
Torys LLP

• What are you looking for?
  - Has it been truthfully represented?
  - Do they actually own the rights to the research they’re selling? How can you make sure?
• Does the funding body have any rights over the research in question?
  - Examination of material agreements, interviews with key staff
  - Assessment of compliance with formalities
  - Containing costs in conducting due diligence

Essential Concepts and Practical Advice in IP Value Measurement
Rob Mclean, CA
President, MatrixLinks International Inc.

• Understanding why IP can have multiple values which are all different, but all valid:
  - Why IP value measurement is context-dependent
  - Typical contexts and their significance for measuring IP value
• Understanding why traditional “fair market value” for IP is not valid in concept or in practice
• Approaches for measuring and communicating information about IP value related to:
  - Transactions
  - Investment / resource allocation
  - Internal and external reporting

Financing Commercialization Agreements: Identifying Options and Minimizing Risks
Adam Armstrong
Partner, Torys LLP

• Identifying options in capital development and filling the funding gap
  - Funding your post-research initiatives
  - Finding investors
• Obtaining venture capital:
  - Analyzing the different structures of venture capital deals
  - Understanding the different elements of a financing
• Understanding venture capital and other funding agreement contracts:
  - What are the relevant details of a ven cap contract?
  - What are some of the main clauses and stipulations?
• How can you better negotiate a venture capital agreement from the perspective of a:
  - Research body
  - Financing partner
• What are the distinguishing characteristics of public/private partnerships with respect to financing?

Taking Advantage of Tax Benefits Available for R&D and Commercializing Intellectual Property
Oscar Cheng
Partner, Deloitte

• Tax breaks available for investing and participating in R&D in Canada
  - How do these tax deductions travel from party to party when IP is licensed?
  - Examination of the “special” tax breaks available for R&D conducted in Canada, and in Ontario
• Cross Border and international tax issues:
• Acquisition of companies overseas
  - Taxation of IP in Europe
  - International tax implications of moving IP assets across the world