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Licensing Best Practices
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Table of Contents

Preface by Robert Goldscheider. PART ONE: THE CHANGING LANDSCAPE OF LICENSING. CHAPTER 1 EXPANDING BUSINESS OF LICENSING (Willy Manfroy). CHAPTER 2 TECHNOLOGY VALUATION (Dr. Richard Razgaitis). CHAPTER 3 THE EXPANDING ROLE OF TECHNOLOGYMANAGEMENT CONSULTANTS (Robert Goldscheider). CHAPTER 4 DREADFUL DRAFTING: THE DO S AND DON TSOF LICENSING AGREEMENTS (John T. Ramsay, Q.C.). PART TWO: NEW OUTLOOKS ON PATENTS,TRADEMARKS, COPYRIGHTS, AND TRADE SECRETS. CHAPTER 5 RECENT CHANGES IN PATENTINGPROCEDURES AND PROTECTION: DEVELOPMENTSIN THE EUROPEAN AND U.S. PATENT SYSTEMS (Dr. Heinz Goddar, Alan H. Gordon). CHAPTER 6 THE CRITICAL ROLE OF TRADESECRET LAW IN PROTECTING INTELLECTUALPROPERTY ASSETS (Melvin F. Jager). CHAPTER 7 COPYRIGHT, SOFTWARE, AND WEB SITEISSUES IN THE INTERNET WORLD (Michael A. Lechter). CHAPTER 8 TRADEMARKS, TRADE NAMES,AND TRADE DRESS (Thomas M. Small, Kenneth D. McKay). PART THREE: ADVANCES IN INDUSTRY-SPECIFIC LICENSING. CHAPTER 9 LICENSING IN THEBIOTECHNOLOGY INDUSTRY (Dr. Cathryn Campbell). CHAPTER 10 PHARMACEUTICAL LICENSING DURINGTHE REVOLUTION (Dr. Thomas A. Picone). CHAPTER 11 UNIVERSITY LICENSING TRENDS ANDINTELLECTUAL CAPITAL (Dr. Louis P. Berneman, Dr. Kathleen A. Denis). PART FOUR: FINANCIAL ISSUES, LEGAL PROTECTION,AND LITIGATION DEVELOPMENTS. CHAPTER 12 WHAT TO DO WITH TECHNOLOGY RIGHTSTHAT ARE FINANCIAL ASSETS AND INSTRUMENTS (Dr. Nir Kossovsky, Bear Brandegee). CHAPTER 13 IC-BASED CORPORATE CARVE-OUTS:STRATEGY, STRUCTURE, AND FUNDING (James E. Malackowski, Suzanne Harrison). CHAPTER 14 LICENSING AND LITIGATION (Ronald L. Grudziecki, Arnaud Michel). CHAPTER 15 ALTERNATIVE DISPUTE RESOLUTION:FIGHTING SMARTER, SPENDING LESS (Tom Arnold). PART FIVE: LICENSING IN THE GLOBAL COMMUNITY. CHAPTER 16 IGNORE EUROPE AT YOUR PERIL! (Prof. Dr. Peter Chrocziel, Nigel Jones, Thierry Sueur). CHAPTER 17 CHALLENGES OF LICENSING TO ANDFROM CHINA AND HONG KONG (Larry W. Evans, With a Contribution from Chi Shaojie). CHAPTER 18 IS THERE A FUTURE FOR JAPAN? (Dennis Unkovic). CHAPTER 19 LICENSING IN RUSSIA: OPPORTUNITIESAND PITFALLS (Dr. Natalia Karpova). CHAPTER 20 AUSTRALIA: LICENSING OPPORTUNITIESIN THE MEDICAL AND BIOTECHNOLOGY INDUSTRY (Rodney DeBoos). CHAPTER 21 CHALLENGES TO ARAB INDUSTRIESIN ACQUIRING AND SELLING APPROPRIATETECHNOLOGIES (Talal Abu-Ghazaleh). CHAPTER 22 THE SOUTH AFRICAN EXPERIENCE INECONOMIC DEVELOPMENT (Alan Lewis, Don MacRobert). CHAPTER 23 PROSPECTS FOR INCREASEDLICENSING IN LATIN AMERICA (Fernando Noetinger, Gabriel F. Leonardos). FURTHER READING LIST. INDEX.

About the Author

The Licensing Executives Society was founded in Florida in 1965 as a professional forum for the exchange of ideas and views on the licensing profession. The Society rapidly grew in North America and soon spread to Europe, Asia, and Australia, where new national organizations were established. In the early 1970s, the need to coordinate the global interests of the societies, their members, and their clients inspired the creation of LES International. Today, there are more than 10,000 members in LESI's 27 member societies.

Reviews

"When I first skimmed this book, I thought it was nothing more than a collage of independent articles-but was I ever wrong! Bob Goldscheider has masterfully pulled together an excellent up-to-date position on licensing best practices in several jurisdictions. The flow is excellent. The information I need is well categorized and it's already proving to be an excellent resource. Bob's choice of authors is exceptional. I personally know all of them and take great stock in their advice that they so willingly provide." John H. Woodley Past President Licensing Executives Society "A comprehensive digest of national and international advances and developments in licensing! Licensing Best Practices is a veritable anthology and compendium on general and industry-specific licensing practices and licensable intellectual property assets. It is a handbook every licensing executive and intellectual property practitioner will want to peruse and keep on their desk!" Karl F. Jorda David Rines Professor of Intellectual Property Law & Industrial Innovation Franklin Pierce Law Center Concord NH "It was a great privilege to be given the opportunity to preview this outstanding work. The Licensing Executives Society is the world's leading organisation of technology licensing and management professionals. Bob Goldscheider and his team have drawn upon the rich resources of its members to produce a work of immediate impact and lasting influence on a field of economic endeavor which, as the work itself shows, is expanding exponentially. Don't leave home without it." Des Ryan Consultant (and former Partner) Davies Collison Cave, Patent Attorneys and Barristers and Solicitors Melbourne, Australia "This book does serious double duty. It is a helpful primer for business executives and people breaking into the licensing field because it provides broad, often in-depth coverage. It also serves a helpful purpose for seasoned licensing executives and lawyers: first, it endorses many of the things that we do and think and hence serves as a reality check; second, at a deeper level, it proposes techniques and analyses, some of which are necessarily new to each of us because the thing about licensing is that you learn every time out. This book provides learning for even the most seasoned." Roger M. Milgrim Partner Paul, Hastings, Janofsky & Walker LLP "Licensing Best Practices is a necessary book for any person involved in licensing. The book provides valuable, practical insights that can be readily utilized in licensing matters. The comprehensive contents are set forth in understandable, reader-friendly language. I highly recommend this work." Michael A. Epstein Chair, Intellectual Property and Technology Practice Weil, Gotshal & Manges LLP "Bob Goldscheider's [author and editor] books always combine a solid and even scholarly knowledge of the law with the practicalities of doing business in the complex world of licensing. In this newest work, which will be of value to both industrial and university licensing professionals, the emphasis is on 'how to do it' in many different environments, with each chapter written by renowned experts" Lita Nelsen Director, Technology Licensing Office Massachusetts Institute of Technology

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