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License Executive Society USA & Canada

Sharing the Benefits of Federally Funded and Academic R&D Investments with the Private Sector

  • 24 May 2023
  • 11:00 AM - 1:30 PM
  • KPMG

Complimentary LES Silicon Valley Chapter In-Person Event:

Sharing the Benefits of Federally Funded and Academic R&D Investments with the Private Sector

Wednesday, May 24, 2023
11:00 a.m.-1:30 p.m.
11:00 a.m. – 12:00 p.m. – Registration, Networking, Lunch
12:00 p.m. – 1:30 p.m. – Program

Location: KPMG
3975 Freedom Circle, Mission, Tower 1, 5th floor, Santa Clara, CA

Click here for complimentary registration:
REGISTER

Thank you to our host:

GENARO MEMPIN PRESENTATION
LALEH SHAVESTEH PRESENTATION

Program Recap, LES Viewpoints

PROGRAM:
Learn about the pipeline and business models for deep tech intellectual property: gain insights on intellectual property funded by the federal government and academic institutions, and the scope and business models available for licensing and commercialization by the private sector.

The federal government and universities fund a vast amount of leading-edge research at federally-funded research and development centers (FFRDCs) and academic institutions. The resulting intellectual property is available for licensing to the private sector, but matching the IP with commercial applications is complex. Come and find out from our expert panel what you need to know about the breadth and scope of the intellectual property, past successes and future opportunities. Hear about applications to industries, including semiconductors, energy, telecommunications, life sciences, climate change and environmental sustainability.

The program will cover:

  • Scene-setting: what are FFRDCs?
  • Licensing: how are inventions and intellectual property licensed to the private sector?
  • Success Stories: what are examples of business models and successful commercial outcomes?
  • Technologies: what are the fields of invention available for licensing and commercialization?
  • Commercial: what are emerging well-funded market opportunities where IP will determine the winners?
  • Strategy: how does the availability of federally funded intellectual property create opportunities for corporations, entrepreneurs and investors?

Take-aways:
When you leave the program, you will know more about:

  • How to search and discover pools of IP to accelerate and differentiate your product or service
  • What the business models are for licensing and technology transfer
  • The technology areas for the inventions, and pathways to commercial success
  • What are FFRDCs and government-funded labs

CLE: 1.5 hours California CLE available.

PANEL:
Genaro Mempin, Business Development Executive, Lawrence Livermore National Laboratory
Laleh Shayesteh, Director of Intellectual Property and Administration, Office of Technology Licensing, UC BerkeleyKatharine Ku, Chief Licensing Advisor, Wilson Sonsini Goodrich & Rosati
N. Darius Sankey, General Partner and Managing Director, Innovation Acceleration Capital LinkedIn
Nitin J. Shah, Moderator, Principal Innovator, MITRE Engenuity

ABOUT THE PANEL:
Genaro Mempin, Business Development Executive, Lawrence Livermore National Laboratory  LinkedIn
At LLNL, Genaro is responsible for the commercialization of technologies and management of intellectual property portfolios in the areas of advanced manufacturing and of instruments, sensors, and electronics. A tech transfer veteran of almost twenty years, he supports the Advanced Manufacturing Laboratory in the Livermore Valley Open Campus. He helped developed LLNS’s Equity Policy and the IPO Equity Procedure for accepting equity when licensing LLNL intellectual property. As a Certified Licensing Professional™ since the credential began in 2008, Genaro is also a member of the Licensing Executives Society and has been participating at the Federal Lab Consortium's annual Awards for Excellence in Technology Transfer, which he has won in 2007, 2008, and 2010. Prior to joining LLNL in 2004, Genaro worked for almost twenty years at Intel Corporation, starting as an industrial engineer and rising to R&D Operations Manager of the Extreme Ultraviolet, LLC, where he managed the Cooperative Research and Development Agreement (CRADA) with the Virtual National Laboratory. He received his B.S. magna cum laude in Industrial Engineering and Operations Research from the University of the Philippines, and his M.S. in Engineering-Economic Systems from Stanford.

Laleh Shayesteh, Director of Intellectual Property and Administration, Office of Technology Licensing, UC Berkeley  LinkedIn
Laleh is the Director of Intellectual Property and Administration in the Office of Technology Licensing where she develops UC Berkeley's IP strategy and oversees licensing for life sciences, chemistry, medical instruments, physical sciences, engineering, software technologies, and artificial intelligence. She also handles trademark and copyright matters, and open-source compliance. Additionally, she works with sister offices on IP matters for government grants and contracts, foundation grants and contracts, and sponsored research agreements. Laleh is a trained scientist and worked for several years in research before practicing law. Prior to joining UC Berkeley, she performed population genetics research at Stanford, pediatric brain tumor research and ovarian cancer research at UCSF, brain tumor research at University of Chicago, and comparative genomics research at Exelixis. She then embarked on a law career and became a patent agent at Exelixis, followed by a director of IP and assistant general counsel for IP matters at SRI. Laleh holds a Ph.D. in Biophysics from UC San Francisco and a J.D. from Concord Law School. She is registered to practice before the U.S. Patent and Trademark Office.

Katharine Ku, Chief Licensing Advisor, Wilson Sonsini Goodrich & Rosati  LinkedIn
Prior to joining WSGR in 2018, Kathy was Executive Director of Stanford University’s Office of Technology Licensing (OTL) for 27 years. She was President of the Association of University Technology Managers (AUTM) from 1988-90, and received the AUTM 2001 Bayh-Dole Award for her efforts in university technology transfer. In 1999, Stanford OTL received the Licensing Executives Society Achievement Award. Kathy is currently serving on the Visiting Committee for Advanced Technology of the National Institute of Standards and Technology (NIST). She is also an Advisor to the University of California Regents Special Committee on Innovation Transfer and Entrepreneurship. Kathy’s experience includes Vice President, Business Development at Protein Design Labs, Inc. and Research Associate positions at Sigma Chemical (now Sigma-Aldrich) and Monsanto Corporation (now Bayer.). She has a B.S. Chemical Engineering from Cornell University, an M.S. in Chemical Engineering from Washington University, St. Louis, and is a registered patent agent.

N. Darius Sankey, General Partner and Managing Director, Innovation Acceleration Capital LinkedIn
Darius is a seasoned executive in the venture capital and technology. He is currently a Managing and founding member of Innovation Acceleration Capital (IAC). IAC’s mission is to fuel open innovation by connecting the right people at the right times to solve challenging problems while rewarding both commercialization and the soup to nuts innovation behind it. Prior to IAC he served as the Co-President of Ocean Tomo China, an Ocean Tomo division operating in China in partnership with Sinofaith IP from February 2018 to December of 2019. He also served as the Chairmen and Director of 3Discovered, Inc. Darius has served as a Managing Director at Sway Ventures, and Ocean Tomo, leading their Innovation Management Practice. Before his work with Ocean Tomo, Darius served as a Senior Director of Portfolio Management at Intellectual Ventures, a Managing Director at DFJ – Zone Ventures, and has served as a board member for several companies including Unium, 3Discovered, Siimpel Corporation and Neven Vision (acquired by Google). Darius is also a member of the Finance Advisory Committee for SPIE (the International Society for Optics and Photonics), the advisory board and investment committee for Luminate, the largest optics and photonicsaccelerator within the Rochester based NextCorp incubator. Finally, Darius is also a board member for LES (Licensing Executive Societies Silicon Value Chapter. He has worked as a management consultant at McKinsey & Company, Inc. and held strategic planning, consulting, and R&D positions at RAND and AT&T Bell Laboratories. Darius holds a Ph.D. in Optical Engineering from the Institute of Optics (1993), University of Rochester and B.S. degrees in Physics and Electrical Engineering from MIT (1988). He is also has served as an adjunct professor and lecturer at the Rady School of Business at the University of California, at San Diego (UCSD) since 2008.

Nitin J. Shah, Principal Innovator, MITRE Engenuity  LinkedIn
Nitin is an inventor, innovator and strategist, with experience in technology development, corporate and product strategy, marketing, and business development. Currently Nitin is Principal Innovator at MITRE Engenuity, a not-for-profit tech foundation for the public good, based in Silicon Valley. He was the architect of a proposal for the National Semiconductor Technology Center, in support of the CHIPS Act and the resurgence of the U.S. semiconductor industry, working with corporations, start-ups, academia and financial institutions. He was also the lead for a proposal to the DoD Microelectronics Commons for 6G mobile communications. Nitin orchestrated a successful technology and business proposal to NASA’s Tipping Point program for an award to Nokia for deployment of the first ever 4G/LTE network on the lunar surface. Nitin was in Nokia’s Tech Ventures initiative, to commercialize IP and technology from Bell Labs via partners and incubators. Nitin’s career spans AT&T Bell Labs, Lucent Technologies, Nokia Bell Labs, several start-ups, and providing consulting and decision services for clients such as DoCoMo, Ericsson and Intel. He has expertise in mobile networking, digital media, consumer privacy and semiconductors. He has been an enthusiastic mentor and strategic advisor to founders and start-ups in the areas of cybersecurity and identity management, mobility AI/analytics for infrastructure and urban planning, datacenter cooling, design studio for complex r.f. and filter solutions, and next gen wireless infrastructure platforms. Nitin has a BA and MA in Natural Sciences and a PhD in Microelectronics from the University of Cambridge in England. Fun fact: Nitin is the sole inventor on a family of patents for “Airplane Mode.”

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