The EntreTech Forum: Patents, Licensing and Venturing - Collaboration to Commercialization June 17, 2008

Tuesday, June 17, 2008

Patents, Licensing and Venturing
Collaboration to Commercialization

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Meeting Overview

The EntreTech Forum's June 17th panel discussion focuses on intellectual property, licensing and the technology transfer process out of the region's leading academic programs. The core question put before our panelists will be: How is intellectual property managed via the patent and/or licensing process as academic research moves from concept to commercialization? The panel will be asked to bring meaningful examples to the discussion to emphasis the EntreTech Forum's focus on real-world inputs/outputs/incentives/issues.

Keynote:

Stan Schurgin, Partner, Weingarten, Schurgin, Gagnebin & Lebovici

As the Senior Managing Partner of the firm which he joined in 1967, Stan Schurgin's practice extends to all facets of intellectual property law. He is a specialist in the licensing of technology and patents and in counseling corporate and university clients in patent, licensing, trademark and other intellectual property matters, and has extensive experience in the establishment and maintenance of internal company procedures for the management of intellectual property. With over thirty-five years in practice, Mr. Schurgin is often called upon to evaluate intellectual property as part of start-up, acquisition and financing ventures, to conduct due diligence studies, and to render legal opinions on issues of infringement, validity and ownership of intellectual property. He also provides counsel in technological transactions and in the strategic use and protection of intellectual property. Mr. Schurgin began his career as a patent engineer and then as a corporate patent attorney at a large international electronics and communications company where he was engaged in the protection and analysis of a broad range of technology, particularly electronic systems, and in government contract patent and data requirements. He holds a Bachelor of Science Degree in Electrical Engineering from Northeastern University (1959) and obtained his law degree, cum laude, from the New England School of Law (1964), where he was an Adjunct Professor of patent law for ten years. He has organized and participates in numerous seminars, conferences and continuing legal education programs on many different intellectual property topics.

Moderator:

Jerry O'Connor, Partner, Foley Hoag

Jerry O’Connor has a wide-ranging business law practice that focuses on corporate finance transactions, mergers and acquisitions, securities law and intellectual property matters. He represents clients in a variety of industries, including software and information technology, advanced and renewable energy, manufacturing, pharmaceuticals, venture capital and professional services. Jerry represents buyers and sellers of public and private companies. He assists early-stage companies with formation, securities offerings, employment and intellectual property issues. He advises public companies and their directors and officers on securities law, Sarbanes-Oxley compliance and reporting obligations. Jerry’s practice has particular emphasis on advising early stage software and energy technology companies, representing them in negotiating and carrying out strategic alliance and joint venture agreements.

Panelists:

Tony Pirri, Director, Northeastern University Technology Transfer Team

Dr. Pirri is currently director of NEU’s Tech Transfer team, with shared responsibility for driving an increase in the number of university faculty/industry collaborations. Dr. Pirri has over 30 years of experience in the field of technology commercialization. After obtaining a doctorate in engineering from Brown University, Dr. Pirri went to work with a major corporate research laboratory for several years before co-founding a technology development company that was successful in commercializing technologies seeded with government funding.

Bruce Horwitz, President, TechRoadMap

Dr. Horwitz received his doctorate in Optics in 1976 and spent over twenty-five years in R&D and new product development activities, functioning at various times as an individual contributor, program manager, department manager at Itek Optical Systems, Vice President of R&D for MicroE Systems and Director of Optical Technology for AXSUN Technologies. Recognizing the need to bridge the gap between technologists and patent attorneys, Dr. Horwitz has been helping companies get the right patents, at the right point in the development cycle, since 2000, when he started TechRoadmap Inc.

Linda Plano, Associate Director, Massachusetts Technology Transfer Center

Dr. Plano is the Associate Director of the Massachusetts Technology Transfer Center (MTTC), an organization dedicated to the commercialization of technologies developed in the state's nonprofit research institutions. The MTTC has a number of programs designed to support entrepreneurs, including technology showcases such as the Conference on Clean Energy, Platform events in which entrepreneurs pitch their ideas to a small, hand-picked audience of investors and industry professionals for strategic feedback, and semiannual awards programs to provide prototype development funds to inventors in Massachusetts' nonprofit research institutions. Dr. Plano is committed to the development of the Clean Energy Cluster in Massachusetts and the region. She helped co-found the ESIG as well as serving as chair of the Ignite Clean Energy (ICE) Business Presentation Competition for the last two years, which has provided mentoring and networking opportunities to over 100 teams in its first three years as well as more than half a million dollars in cash and prizes to the winners. She is also a Visiting Scholar at the Laboratory for Energy and the Environment (LFEE) at MIT for her volunteer work in developing materials to communicate clean energy issues to the general public as well as training in entrepreneurship for student inventors. Dr. Plano did her undergraduate work in Physics at MIT, and earned her PhD at Stanford University in Materials Science and Engineering.

Official Website: http://www.entretechforum.org