We would like to welcome you to our first edition of our newsletter. Through this newsletter we hope to share all the exciting news at Global Intellectual Strategies. We look forward to providing you with various highlights and insights relating to our patent and technical analysis capabilities in support of your patent licensing and litigation. Enjoy the read…

GIS is pleased to announce the addition of Kevin Gibb to our semiconductor analysis team. Kevin’s deep knowledge of semiconductor processes combined with our existing expertise in semiconductor reverse engineering provides our customers with an unparalleled breadth of experience in the field.

Last June, GIS announced the commissioning of a wet lab facility, adding an additional 2,500 sq ft (230 ^m2) to its existing 7,800 sq ft (725 ^m2) facility. GIS also has relationships with the National Research Council of Canada, Western Ontario University, as well as other specialized facilities for providing additional testing capabilities such as SEMS, TEMS, SIMS, and Auger Spectroscopy.

Dr. Kevin Gibb: Semiconductor Physicist Developed sub-micron in-situ transistor probe techniques; Depth of knowledge in CMOS processes of 90 nm, 65 nm and 45 nm; CMOS processors, flash, DRAM, ferroelectric and PZT memories, CMOS and CCD image sensors, MEMS and photonic devices. PhD in Physics, 16 years of experience spanning semiconductor process analysis, product engineering, research and technology development

Alexander Sorkin: IC Microstructure Analyst and Sample Preparation Expert MOS IC Micro-surgery by Focus Ion Beam (FIB); IC circuit editing; Sample preparation using FIB, SEM/Dual beam, chemical wet/dry etching and polishing; IC structure and material analysis using EDX, TEM, dynamic & ToF SIMS, Auger spectroscopy, AFM, Raman Spectroscopy. 7 years of extensive experience as a CE analytical & lab tools expert.

SEM Image of a CMOS Imager

TOF-SIMS (Time of Flight Secondary Ion Mass Spectrometry)

This year’s Spring Meeting of the LES (Licensing Executives Society) is being held in Montreal, Canada. GIS is proud to be presenting and moderating at three sessions.

The first session discusses tips and pitfalls of planning a successful licensing program. Learn from the experiences of the industry experts. The second session deals with patent reviews. It is one of the basic tools of the trade but is often neglected or done half heartedly. The key is to tailor the reviewing to fit your particular situation. In the last session, we have a patent litigator, a Patent Agent and a reverse engineering expert discussing how choices made at the patent drafting stage affect your ability to license the patent in the future. See if common ground can be found between the three viewpoints.

We hope that you will be able to attend. Come see us at the meeting!

Session Information: http://www.usa-canada.les.org/meetings/2009spring/workshops.asp

Thursday, May 7th:

1. Tips & Best Practices: Designing a Successful Patent Licensing Plan
   
   Patent licensing, whether in-licensing, out-licensing, or cross-licensing, brings with it the possibility of large rewards, but at the same time if not done correctly, it can prove to be a very expensive endeavor.
   
   History has shown that the successful licensors are the ones who planned and prepared thoroughly. Required planning involves a complex mix of legal, business, and technical issues. Patents must be chosen, and validated against the particular situation. The players in the market must be evaluated both from the point of view of potential royalties and the possibility of retaliation. In negotiations, a clear, overwhelming case must be presented in order to conclude successfully.
   
   The discussion will examine all of the above issues based on experiences in planning and executing licensing programs. Different approaches and best practices will be presented.
   
   Moderator:
   David Fraser, Director - Patent Services, Global Intellectual Strategies
   
   
2. Effective and Intelligent Patent Evaluation
   
   Evaluating a patent portfolio of any size can be a challenging and expensive task, whether it be a small portfolio of 15 patents, or a larger one of 5000.
   
   Several evaluation techniques can be used to cost-effectively handle your portfolio. Some of these techniques might suit the business plan of a patent licensor, while some might be of greater interest to a patent buyer and others would be most pertinent for a patent seller. Each individual or entity will have different priorities with respect to the results that they would like to see emerge from their portfolio. The different analysis methods suited for these priorities will be presented.
   
   Three industry veterans will also discuss the value they see in the various analysis methods. Each of a patent licensor, a patent buyer and a patent seller/broker will outline their needs and the tools they prefer to employ in order to achieve their goals.
   
   Moderator:
   Stephen Powell, Analyst, Global Intellectual Strategies
   
   Friday, May 8th:
   
   
3. An Enforceable Claim, What It is and How to Build a Winning Portfolio
   
   A key feature of a successful licensing program is a portfolio with patents having claims that are enforceable. A number of factors can affect the enforceability of a claim. In this session, we will explore what makes claims enforceable and what should be considered during the process of building a portfolio of patents with enforceable claims. A set of panelists including a patent agent, a technical expert, and a litigator will provide their perspective on issues and considerations relating to the enforceability of claims and how it impacts filing strategies, drafting, prosecution, infringement analysis, and litigation. Commonalities and differences in point of views among these professionals are explored to define “an enforceable claim” and to establish key aspects to be considered when building a patent portfolio.
   
   Speakers:
   Marc Pépin, Patent Intelligence/R&D Manager, Global Intellectual Strategies

Global Intellectual Strategies has developed a strong Intellectual Property team that works together with GIS’ technical experts to provide exceptional IP services to its clients.

Currently, GIS has one Registered Patent Agent and three Patent Agent Trainees. These three Patent-Agents in training participate in an aggressive program for developing in-house IP expertise in various areas related to Intellectual Property, including Infringement, Validity, and licensing practices.

Patent Portfolio Mining
Patent Reviews
Patent Product Mapping
Product Procurement
Patent Infringment Analysis
Prior Art Searches
Technical Rebuttal
Expert Witness
Factual Witness
Depositions
Patent Valuation
Patent Portfolio Appraisal
Patent Landscape
Patent Divestiture
Patent Acquisition