In an era where intellectual property (IP) and innovation are more crucial than ever, Innventure recently sat down with Bob Held, CEO of the Licensing Executives Society (USA & Canada), Inc. (LES), for an exclusive interview about the upcoming LES 2024 Annual Meeting.

Scheduled for October 20-23 at the New Orleans Marriott, the LES Annual Meeting is set to be a cornerstone event for IP professionals, licensing experts, and technology transfer specialists. With over 500 attendees expected from around the world, the conference promises a diverse program covering everything from AI and life sciences to data use in complex SEP licensing and recent legal updates across the U.S. and Europe.

At the event, Innventure (Nasdaq: INV), a technology commercialization platform, will lead a workshop titled "Maximizing IP Value through Strategic Spin-Outs and Alternative Commercialization Approaches" on October 22 from 11:15 a.m. to 12:15 p.m. in Galerie 4 (2nd Floor).

In this exclusive Q&A, Held delves into the meeting's significance, the evolving IP landscape, and why such gatherings are increasingly crucial in today's rapidly changing technological environment. He offers valuable perspectives on the challenges facing IP professionals, from AI patents to the importance of developing robust IP strategies, providing a glimpse into the critical issues shaping the industry today.

As New Orleans prepares to welcome IP experts from around the globe, this interview provides a timely look at the state of IP and licensing and why the LES Annual Meeting is a must-attend event for anyone in the field.

Q: What is the significance of the LES Annual Meeting?

A: Bob Held: The LES annual meeting is truly unique in the world of IP events. It brings together people from all walks of the IP life - students, university professors, CEOs of corporations, startups, mid-size companies, university tech transfer offices, and government representatives. For instance, at our upcoming New Orleans meeting, we'll have a high-ranking official from the United States Patent and Trademark Office (USPTO) - the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

What sets the LES meeting apart is its focus on networking, instruction, and education. We have various educational components throughout the meeting. Unlike other conferences that might cater to specific groups like attorneys or trademark specialists, LES offers a more diverse and balanced community. It's not dominated by any single company or group, which ensures a wide range of perspectives and prevents any one entity from swaying the direction of our conferences or standards development activities.

This diversity fosters an environment where attendees can develop lasting professional relationships. I have connections from as far back as 2000 that continue to benefit me professionally.

The meeting serves as an excellent forum for the latest topics in intellectual property business and law, providing insights that genuinely help people improve in their roles. Moreover, you'll find a variety of participants beyond just legal professionals. We have consultants and companies, like Innventure, offering investment products. This mix of attendees from different sectors and specialties creates a unique opportunity for cross-industry learning and collaboration.

Ultimately, the LES Annual Meeting is a great platform for staying current with the latest developments in the IP world, expanding your professional network, and gaining knowledge that can directly impact your ability to do your job more effectively.

Q: How has the landscape of IP and tech commercialization evolved since you first became involved with LES?

A: Bob Held: When I entered the intellectual property field around 1998-2000, deal-making was considerably easier. As an electrical engineer with an MBA on the business side, I found that companies were more receptive to licensing discussions or potential acquisitions.

This landscape has changed dramatically due to several legal and regulatory shifts. The America Invents Act of 2011 introduced inter partes reviews and the Patent Trial and Appeal Board (PTAB) at the USPTO. When these changes first took effect around 2012, an estimated 90% of patents challenged through inter partes reviews were being invalidated. The eBay v. MercExchange Supreme Court decision in 2006 made it much harder to get injunctions in patent cases. Further complicating matters, the 2014 Alice Corp. v. CLS Bank International Supreme Court decision significantly hindered the ability to license software patents. These changes in case law and governmental regulations have made technology commercialization and licensing much more challenging than they were in the late 1990s and early 2000s.

In response to this evolving landscape, my company’s approach to monetizing intellectual property has adapted. Now, we prefer opportunities that include not just patents but also technology, know-how, and designs. We focus on bringing comprehensive, positive solutions to companies. This approach aligns with what Innventure is doing with high Technology Readiness Level (TRL) solutions.

Instead of looking at just patent plays, we're now considering technology solutions that can address unserved markets, products, or geographical segments. However, to successfully launch these solutions, we still need a robust IP portfolio, including patents, copyrights, and trademarks. This holistic approach allows us to offer more value to potential partners and increases the chances of successful commercialization in today's complex IP environment.

Q: What are some key challenges in managing and monetizing intellectual property assets?

A: Bob Held: One of the primary challenges is balancing C-level executives' expectations about portfolio monetization against the costs of maintaining it. There's often a tension between the desire for revenue generation and the reality of the expenses involved in managing an IP portfolio. To address this, we work with our clients and focus on streamlining processes to reduce costs while ensuring we have robust procedures in place to capture new inventions, review them adequately, and make informed decisions about whether to file patents or maintain them as trade secrets.

Another significant challenge is determining the best monetization strategy. We need to decide whether to pursue a licensing plan, where we try to license out patents or technology, or potentially consider a litigation strategy. Budget considerations often constrain these decisions, as the resources available directly impact what strategies we can pursue.

Getting buy-in from all business units within the company is also crucial and can be quite challenging. When you're hired to run the IP group, you're often entering an environment where different units have been managing their IP independently for years. Some units will eagerly seek your help, while others may resist until they encounter problems. Building relationships and trust with these various units takes time, especially in companies where business units own the assets. You need not only their approval but also their active participation to effectively license and monetize the IP.

Lastly, educating the organization about the value of IP and the processes involved in managing it is an ongoing challenge. It's critical to help everyone understand why certain procedures are in place and how they contribute to the overall success of the company's IP strategy.

In essence, successful IP management and monetization requires a delicate balance of strategic thinking, relationship building, and educational efforts, all while working within budgetary constraints and aligning with overall business objectives.

Q: How do you see organizations like Innventure contributing to the future of innovation and IP commercialization?

A: Bob Held: From my interactions with Innventure, both as a sponsor of LES and through opportunities they're reviewing for my clients, I see them looking at later-stage, fully developed technologies. I see Innventure participating on both ends of the spectrum, contributing in a very credible and positive way by bringing technologies to market. They have high standards to meet, which is appropriate given their investment of money, time, and effort. They're giving new life to technologies that might otherwise languish “on the shelf” or never reach the market.

Q: How can companies prepare for future changes in the IP landscape?

A: Bob Held: Predicting changes in the IP landscape is challenging because IP laws govern whether you can even get protection for copyrights or patents. One of the big issues right now is generative AI - can you get a patent or copyright on it? Did the programmer do more with the inventive step, or did the AI? In the next five to 10 years, AI is going to play a large role in intellectual property, presenting both opportunities and challenges.

It's also difficult to anticipate changes that come with new presidencies, new USPTO (United States Patent and Trademark Office) directors, or court cases that suddenly alter the landscape. Court decisions can have far-reaching effects; for instance, a ruling might make it nearly impossible to get injunctions, significantly impacting the leverage in IP disputes.

However, companies can prepare by actively participating in organizations like the Licensing Executives Society (LES). Attending LES conferences and joining LES committees provides invaluable opportunities to discuss these issues with your peers, who may be consultants, attorneys, and operating company executives. The more information and connections professionals have, the better they can navigate the changing IP landscape.

At the LES Annual Meeting, there will be a keynote at 4 p.m. on Tuesday titled “Top 10 Court Decisions of the Year Affecting Licensing.” This is a great presentation that will discuss recent court decisions and how they affect your ability to secure IP protection and monetize your IP.

Continual education is key. LES offers numerous courses on topics like the Certified Licensing Professionals exam review course, drafting licenses, negotiation skills, IP valuation, etc. We have five of these courses scheduled for the October meeting. All of these play a role in how effectively you can monetize IP.

Ultimately, staying informed about judicial rulings and court cases is crucial for anyone in this field. By actively engaging in professional development and networking opportunities, companies can better position themselves to adapt to future changes in the IP landscape when they stay informed.

Q: How important is a strong IP strategy, and what role does licensing play?

A: Bob Held: In my opinion, whether you're a startup or a hundred-billion-dollar aerospace company, you need a strong IP strategy. You need buy-in from top-level, C-suite executives who believe in the value of IP for driving new business and keeping existing business. For startups, this means pulling together and inventing, then finding capital to secure protection and continue building that out.

The importance of this strategy was highlighted in an example from an experience with a large company that won a telecommunications program for New York right after 9/11, enabling first responders to communicate effectively across different first responder networks. It was a huge program worth hundreds of millions of dollars. After winning, the CEO asked how we had protected the IP. Fortunately, this CEO understood IP's value, having previously closed a deal himself that brought in tens of millions just from a single IP transaction.

Licensing plays a crucial role because very few companies can address every single opportunity for a product or market around the world. If you're selling earbuds in the U.S., there might be a company that could sell them in Europe for you. You do a technology transfer and license, they sell the product, and you get a royalty. It's found money, as long as it doesn't erode your core markets.

Another example at one company I worked with, licensing was booked as 100% margin income. They might get 10-15% margins on government programs that could last 5, 10, or 20 years, with the risk of not receiving full payment due to performance issues over time. But if I licensed patents out of their portfolio for a $3 million upfront fee, that's equivalent to the margin on a $30 million program - with no performance risk and with the potential for ongoing royalties.

Licensing is a way to bring in income from assets you're not using or from core IP that could be used in other systems, products, or services that you're not addressing. It's a powerful strategy that can significantly boost a company's revenue and expand its market reach.

Originally published on Innventure.com

To learn more about Innventure's approach to technology commercialization and our involvement in the upcoming LES 2024 Annual Meeting, visit our website at www.innventure.com.

Interested in maximizing your IP value through strategic spin-outs and alternative commercialization approaches? Join Innventure's workshop at the LES Annual Meeting on October 22, 2024, from 11:15 a.m. to 12:15 p.m. in Galerie 4 (2nd Floor) at the New Orleans Marriott.

For the latest updates on Innventure's innovations and partnerships, follow us on LinkedIn.

© 2024 Innventure. All rights reserved.

‍