October 4 6, Session IX. The legal Problems arising from Auctioning of IPRs. Saturday, October 6, to p.m.

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1 AIPPI FORUM SINGAPORE October 4 6, 2007 Session IX The legal Problems arising from Auctioning of IPRs Saturday, October 6, to p.m. Moderator: Jochen Bühling (Reporter General of AIPPI) Speakers: James Malackowski (Ocean Tomo) Anne Lakits-Josse (France) Terrence Brennan (Siemens) 1/7

2 Short description Recently,companies have found a new way of disposing of their IPR. Instead of selling IPR together with a part of their enterprise or separately to a specific buyer they are using the rather uncommon way of auctioning their IPR. Auction companies have specialized in the field of IPR selling patents and trade marks to bidders at special events. This gives the owner of an IPR the possibility to sell IPR at any time without going through the difficult process of finding the suitable buyer. On the other hand it opens up the access for potential buyers to IPR which they might otherwise not have. With this new way of technology transfer new legal problems may arise. Not only has the seller no influence on who the buyer could be. Moreover, questions of liability for the validity of the IPR and other guarantees on the seller's side have to be considered. Regarding the buyer there are mainly financial issues and aspects of using the auctioned IPR as well as rights conferred with the transfer of the IPR. Practitioners involved in auctions as well as companies using the auction system will give an insight in how they see the legal problems and how they can be resolved. 2/7

3 Curriculum Vitae James Malackowski James E. Malackowski is the President and Chief Executive Officer of Ocean Tomo, LLC, an integrated Intellectual Capital Merchant Banc firm providing valuation, investment and risk management, corporate finance and expert services. Ocean Tomo assists clients corporations, law firms, governments and institutional investors in realizing Intellectual Capital Equity value broadly defined. Subsidiaries of Ocean Tomo include: Ocean Tomo Auctions, LLC; Ocean Tomo Asset Management, LLC; and Ocean Tomo Capital, LLC -- publisher of the Ocean Tomo 300 Patent Index (Amex: OTPAT), the Ocean Tomo 300 Patent Growth Index (Amex: OTPATG) and the Ocean Tomo 300 Patent Value Index (Amex: OTPATV). Mr. Malackowski is an internationally recognized leader in the field of Intellectual Property ( IP ) management as well as a noted expert in business valuation and intellectual property strategy. He is a member of the IP Hall of Fame Academy and was recognized in 2007 as one of the fifty most influential people in intellectual property. Prior to forming Ocean Tomo, he served as a finance and investment advisor working with one of the Nation s oldest investment banks as well as Chicago s second largest private equity firm. Mr. Malackowski began his career spending fifteen years as a management consultant and forensic accountant focused on intangible assets. In this capacity Mr. Malackowski served numerous roles as a founding principal including President and Chief Executive Officer of his firm, growing the practice to the nation s largest before its sale. Mr. Malackowski has advised clients and counsel on business valuation issues as well as all phases of the technology transfer process. He has substantial experience as a Board Director for leading technology corporations as well as companies with critical brand management issues. Mr. Malackowski's expertise extends to intangible asset portfolios as well as business segments and complete entities. He has a unique appreciation for the hidden intellectual capital within emerging markets. Apart from his own firm, Mr. Malackowski has served in a leadership role with numerous corporate entities, both public and private. He is a member of the President s Council for the Chicago Museum of Science and Industry and a current Director of Invent Now, Inc., a subsidiary of the National Inventors Hall of Fame where Mr. Malackowski previously served as Trustee. Mr. Malackowski is Chair of the Membership Committee and Secretary Elect-nominee for The Licensing Executives Society International, Inc. He is a Past President of The Licensing Executives Society USA and Canada, Inc. and a former Director of the International Intellectual Property Institute as well as a prior Resident Advisor for the U.S. Department of Commerce and U.S. Information Agency on matters relating to intellectual capital. 3/7

4 On more than twenty-five occasions, Mr. Malackowski has served as an expert in Federal Court on questions relating to intellectual property economics, including the subject of business valuation and the impact of advertising programs. As an inventor, Mr. Malackowski has nine issued U.S. patents and an even larger number of pending applications. He is a Summa Cum Laude graduate from the University of Notre Dame majoring in accountancy and philosophy and a Certified Public Accountant in the State of Illinois. 4/7

5 Anne Lakits-Josse Specialized in intellectual property law. Specialised principally in trademark, patent, design and model law, areas in which she deals with all types of litigations, particularly in counterfeiting. Lawyer of most of the French auction houses and specialized in the liability of auction houses. Secretary of the French association for the protection of intellectual property, called AFPPI. Member of various associations for professionals in intellectual property law, such as AAPI, EPLAW. Co-author since 1998 of the French publication Annales de la propriété industrielle, artistique et littéraire. 5/7

6 Terrence Brennan PROFESSIONAL EXPERIENCE Siemens Munich, Germany Licensing Counsel 2005-present Identifying licensing projects through the analysis of patents, industries and specific target companies. Investigating and identifying third party infringement. Preparing claim charts for electronics and software technology. Analyzing patent strike-back potential through risk analysis. Leading negotiations with potential licensees. Monetizing non-core patents through licensing and sales. Siemens Orlando, Florida Patent Counsel Managed third party patent claims and litigation. Negotiated and drafted joint development agreements, software-license agreements and non-disclosure agreements. Provided compliance training to employees. Managed outside counsel s preparation of patent applications and opinions. Prepared and prosecuted patent applications for communications, electronics, and software technology. Oversaw an international portfolio of several thousand patents. Sonnenschein Nath & Rosenthal Washington, D.C. Associate Counsel Prepared and prosecuted patent applications for electronics technology, including semiconductors, computer hardware and software. Represented clients in appeals before the U.S. Board of Patent Appeals and Interferences. Prepared non-infringement and invalidity opinions. Provided support for patent litigation. Sughrue Mion Zinn Macpeak & Seas Washington, D.C. Associate Counsel Prosecuted patent applications for electronics technology, including communications systems and semiconductors. Counseled clients regarding patent infringement and validity. U.S. District Court for the District of New Hampshire Concord, New Hampshire Judicial Intern 1999 Conducted legal research and prepared draft court orders for the Honorable Judge Shane Devine. Assisted with trials and trial conferences. Gulf Controls Corporation Tampa, Florida Territory Manager Technical Sales Developed new sales opportunities for electronic, hydraulic and pneumatic components. Managed and developed key customer relationships. Provided design assistance to assist customers in implementing products. 6/7

7 EDUCATION Juris Doctor Franklin Pierce Law Center, Concord, New Hampshire (1999) Bachelor of Science, Electrical Engineering University of South Florida, Tampa, Florida (1992) Additional graduate-level engineering courses in digital signal processing, communication systems, random processes and complex analysis. PUBLICATIONS Purchasing Software: A Guide for Corporate Counsel, Intellectual Property & Technology Law Journal (2003) The United States and Brazil Agree to Disagree over Brazil s Patent Law, Intellectual Property & Technology Law Journal (2001) AFFILIATIONS Registered U.S. Patent Attorney (No ) Member of the D.C. Bar Member of the Florida Bar LANGUAGES English (native) Portuguese (advanced) German (intermediate) 7/7

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