Business Basics by  Mike Volker

MOT/Biotech  BUS 771: Intellectual Property Contact: Mike Volker, Tel:(604)644-1926 mike@volker.org Website for this document: http://www.sfu.ca/~mvolker/mot/biotech.htm

BUS 771 Papers (Updated July 16, 2003)

There are three term papers required for completion of this course. Each will count 30% towards the final grade. The students will each present one of their papers to the class for a 10% credit on July 19th. Papers should be no more than 5 pages (i.e. 2500 words) in length (exceptions noted). They should be submitted in electronic form, preferably in PDF format.

Due Dates: June 21, July 5 and July 19.

Grading: Those papers which entail researching the literature and summarizing the results (e.g. Q6 & Q10) will be judged on the basis of how extensive and complete the research was done (50%) and the presentation of the findings in a clear and cogent manner (50%). Those papers which entail an analysis of a situation and recommendations arising from this (e.g. Q1) will be judged on how thoroughly the analysis was performed (50%) and the quality of the recommendations (50%). Those papers that involved the production of IP (e.g. Q8) will be judged on the problem definition (50%) and its solution (50%). Marks will be deducted for poor grammar. A well written paper should first state its purpose and then address same. Style-wise, I prefer a clear, simple well-written paper that is easy to read and understand and provides some new insights. 

Presentations: July 19.

1.Each student (names drawn randomly) should make a 15 minute presentation on one of their term papers. The presentation should take approximately 10 minutes with 5 minutes for Q&A. (e.g. 10 powerpoint slides at 1 minute each is a good general guideline). The paper's objective should be clearly stated: i.e. is it a tutorial on a particular IP subject, an analysis, or a prescriptive matter.

2.In terms of group presentations, e.g. where 2 or more students worked together on a paper, each student should speak for 10 minutes on some aspect of the paper's content.

3.The "audience" will be asked to make notes and comments (see form) on the presentations.

Some Topics:

1.The Lightyear Case (Confidential) - SFU licensed 3 patents (for 2-dimensional materials, Metal Dichalcogenides) to a start-up company which SFU subsequently sold to a related successor company. The company made various improvements and new developments resulting in a patent portfolio. The company eventually ran out of cash and failed to close on a substantial financing offer. The intellectual property is the main asset of this company yet the ownership of this IP is questionable due to conflicting agreements and a confusion as to which company has what rights. A number of mistakes were made both by the company's Board and possibly by SFU. An analysis of this case should lead to recommendations from which senior managers of technology firms in general can benefit and avoid such "disasters" in the future. (more details to be supplied)

2.Getting global patent protection is a minefield for today's inventor. There's talk about a global system. How likely is this to happen? Who is leading the charge? What are the current major differences among the world's leading patent regimes and how might these be reconciled? Under the current "system", what are the current choices (and costs) available to inventors?

3.You are a manager in an emerging biotechnology company and you've been assigned the responsibility for overseeing the company's intellectual property and for devising a policy for the company to protect its IP. What will you do to assess the current status of the IP within the company? What are some of the issues that you must deal with in proposing an IP policy?

4.Over the next five years the pharmaceutical industry faces the potential loss of billions of dollars in revenue to generic competition. The ever-increasing cost of drug development, now estimated to be in excess of $ $802 million per successful commercial launch, highlights the increasing connection between effective IP and patent management and R&D cost effectiveness. While scientists struggle to discover new drugs, disciplined patent management is required to achieve the promise of pharmaceutical innovation. What are pharmaceutical companies doing to successfully protect their intellectual property and brand-name patents? How are recent patent cases, high profile anti-trust lawsuits and legislative reform affecting the strategies that companies are pursuing?

5.Analyse a recent financial transaction (e.g. Forbes Medi-Tech's sale of its pharmaceutical fine chemicals business to a big pharma for U$1.9 million) with specific emphasis on the valuation of the IP.

6.What's a "fair" royalty rate on a licensing deal? Select a specific technology and analyze one (or more) licensing transactions with respect to how the royalty was determined.

7.Study an M&A that maximizes wealth by leveraging IP synergies. A good example of this is the merger of Alza & Sequus. This is a trend that is being observed in recent years in biotechnology. See the following article for a better picture: http://www.ipproonthego.com/ma.htm.

8.Prepare an "IP Manual" for a Biotech company (startup up and/or mature) that can serve as a guide for management and directors to ensure that steps are taken (e.g. could produce a checklist) to protect the company's IP assets (e.g. IP audit, inventory, rights, ownerships, board responsibilities, NDAs, etc, etc). (The 5-page limit does not apply here.)

9.Design a system for IP control (or evaluate existing systems - if you can find any). This could be a software program (i.e. a specification for a software program) that will help a company track its IP assets, e.g. starting with an inventory, ensuring that filings are maintained in good standing, managing royalty agreements (in and out), etc.

10.(new) What are some tax-related matters that the IP manager of a technology venture should be concerned about? Give some examples of how IP transactions are taxed. What are the merits to holding IP off-shore?

....maybe more to come! General suggestions welcomed.

Students are also encouraged to formulate their own topics and submit these for approval prior to commencing.