Weitere ähnliche Inhalte
Ähnlich wie IP Advantages Intro
Ähnlich wie IP Advantages Intro (20)
IP Advantages Intro
- 1. T o d a y ’’s I P ,, T o m o r r o w ’’s W o r lld TM
Today s IP Tomorrow s Wor d
IP
Advantages
LLC
IP
Portfolio
Management
and
Emerging
Market
Expansion
© 2009 IP ADVANTAGES LLC. All rights reserved.
- 2. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Have any of these questions ever come to your mind? If so, you are in
the right place to find out the answers…
1. How can my company compete and sustain fierce competitions in the market place?
2. How can my company maintain a competitive advantage in volatile market and economic
conditions?
3. How can we protect and shield ourselves from infringement attacks from our competitors
and patent owners?
4. How can I achieve the highest return when investing in ventures and start-ups?
5. How can I ride the wave of the ever-increasing economic growth of the emerging markets
such as China and India?
IP Advantages provides you with the answers and help you to reach
your objectives:
IP Advantages is dedicated to provide a bridge and turnkey solution to companies across the globe
to gain market competitive position and high return on investment (ROI) by growing and commer-
cializing their intellectual property (IP) assets globally. We zealously engage in:
1. Advising and assisting international clients on building global IP portfolios and growing in-
tangible assets to gain competitive and dominant market position;
2. Assisting clients to expand to a foreign market, providing comprehensive services from A to
Z;
3. Managing and commercializing IP portfolios using our proprietary methods in order to
maximize the market values of an organization’s intellectual assets.
IP Advantages is THE SOLUTION for all IP related issues:
1. Strategic IP mapping and R&D alliance;
2. IP assets generation and management and global IP portfolio procurement;
3. IP protection and enforcement, assertion and licensing negotiation, litigation manage-
ment and evaluation;
4. Competitive intelligence monitoring, analysis and market expansion.
© 2009 IP ADVANTAGES LLC. All rights reserved.
2
- 3. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Advisory Services:
It is well recognized the next generation of technology revolution will create significant impact on
our existing infrastructures, energy, telecommunications, way of doing business and people’s lives.
As we emerge to the next industrial revolution, the global market conditions are increasingly com-
petitive. Facing such a reality, no company can afford to ignore continued research and develop-
ment, let alone the effectiveness and efficiency of the research.
From building a winning brand to developing a cutting-edge patented technology, IP Advantages
provides comprehensive guidance to clients in growing their research projects from “garage” stage
to maturity. Whether be a fortune 500 company or a start-up, we assist you to establish a new mar-
ket niche or break into an existing market with competitive technologies and winning patent portfo-
lios.
IP Advantages has one mission: to assist our clients to promote innovation and gain market recogni-
tion and reward for their scientific and technological breakthroughs. With this mission in mind, IP
Advantages helps companies to assess their IP assets, manage and grow their IP portfolios, identify
opportunities and vulnerabilities and develop an execution strategy that delivers maximum returns
for their research investment. We apply analytical methods based on the technical, legal and finan-
cial expertise of our associates and consultants to assess the breadth, depth and quality of our cli-
ent’s IP assets, in order to identify the areas of most economic growth of their IP focus and invest-
ment.
Facing the competitive nature of today’s market, no one company is immune from the vulnerability
and risks of being attacked by competitors’ patented technologies. This is where IP Advantages can
make a difference. After conducting in-depth analysis, we help our clients to identify the areas of
their business that are most vulnerable to assertion risks and the most likely asserters, and assess the
future market focus of these potential threats. As a result we help our clients to defend their free-
dom to operate through strategic and targeted patent acquisitions, licensing, joint development and
other cooperative programs.
Further, we also assist private equity and venture capital firms who contemplate investments in
technology companies to perform due diligence analysis specifically relating to the IP assets of the
target companies in order to mitigate the risks associated with the investment. Specifically, IP Ad-
vantages assists with the valuation of the IP portfolio including calculating future revenues, profits
and cash flow prospects relating to the portfolio’s strength and growth.
© 2009 IP ADVANTAGES LLC. All rights reserved.
3
- 4. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
IP Advantages helps high-tech companies to identify opportunities to monetize their redundant or
underutilized technologies and IP assets. We develop an execution strategy that aims to maximize
the value of an IP portfolio through licensing or brokerage programs. Further, we focus on bringing
technologies across the globe to foreign companies who are interested in acquiring research projects
and technologies in different stages of maturity and we assist the acquisition entity to effectively
commercialize the acquired technologies. We believe the next generations of Alexander Graham
Bell, Thomas Edison and Albert Einstein will be created without any geographical borders.
Instead of burdening ourselves with a high administration overhead, we maintain a network of fi-
nancial, marketing, technological, and legal experts who possess extensive in-depth experience and
expertise from market analysis, technological development, industry standard, financial assessment
and structure, legal analysis and representation. A fact-based valuation of an IP portfolio, targeted
price and sales or acquisition strategy will be developed in each specific case. Our experienced
networks of brokers and portfolio managers develop compelling, buyer-specific portfolio packages
and conduct an efficient and professional sales process. We also represent buyers in acquiring key
patents to solidify their portfolio and gain freedom to operate positions. In each situation, we nego-
tiate the best possible outcome on behalf of our clients.
We are active in the global markets and have brokered and negotiated deals ranging from over 500
patents to as few as a single patent. In addition to getting the high end of what the market will bear,
we have also been able to negotiate deals that include free Grant Back licenses to sellers so they can
remain in business and can often get a percentage of the licensing revenue.
To promote and facilitate the unprecedented economic growth in China and other emerging markets
such as India, we are actively developing a practice that is specifically designed for the high-tech
boom in these emerging market economies. Our objective is to help high-tech companies and ven-
ture firms who focus on these markets to navigate through the complexities and risks of managing
and commercializing IP assets in order to maximize their ROI. Most global technology leaders op-
erate in extremely complex and multi-faced systems with commercial and competitive dynamics
that require in-depth knowledge base and sophisticated business acumen. IP portfolio management
often requires taking nuanced approaches based on in-depth strategic analyses, which call for a
combination of skills and discipline ranging from scientific, technical, legal, finance to policy
judgment. This is where IP advantages’ unique market knowledge and experience can help you.
Our proprietary IP portfolio management method not only serves to maximize the commercial val-
ues of innovations from the East and the West, but also helps to increase IP awareness and reduce
infringement of IP rights in emerging markets.
We focus on advising strategic acquisitions of cutting-edge technologies and IP portfolios, manag-
ing and growing them organically to create asset values and commercializing them by way of stra-
© 2009 IP ADVANTAGES LLC. All rights reserved.
4
- 5. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
tegically building companies to develop and manufacture products based on these technologies. In
addition, we also advise IP asset owners to strategically assert, litigate and license their IP assets in
order to maximize its market value.
Further, we assist clients in establishing the core business terms of a transaction in addition to advis-
ing on intellectual property rights allocation, licensing terms, warranties, indemnities, damage dis-
claimers, limitations of liability, and the like. We also actively assist clients in creating new busi-
ness models. We regularly work with clients in industries as diverse as hardware, software, semi-
conductor, biotechnology, medical devices, telecommunications, financial services, Internet and E-
commerce, entertainment, video games, and chemicals.
In addition, we serve as Chief IP counsels for young and growth type of high-tech enterprises that
may not wish to allocate legal expenses while growing its business. In this capacity, we step into
the shoes of the company and provide comprehensive services relating to all areas of IP practice,
from trademark registration, patent procurement, trade secret protection measurement to strategi-
cally structure a strong intellectual property portfolio that can fend off all assertion of alleged in-
fringements from competitors. More importantly, we help emerging market companies to commer-
cialize technologies developed in-house or through collaboration.
Specialized skills are needed to negotiate transactions involving the development, purchase, sale, or
licensing of technologies and technology focused businesses. Expertise in both intellectual property
and commercial law is required, as well as business acumen, technical savvy, and knowledge of in-
dustry best practices. Typical examples of counseling we provide are:
• Development, manufacturing, and commercialization agreements
• Intellectual property and technology acquisitions and divestments
• Joint ventures and strategic alliances
• Patent and technology licenses, including in adversarial contexts
• Sourcing arrangements, including off-shoring and BPO
• Distribution, supply, and OEM agreements
• Technology procurement
• Software licensing
• Internet law
• Open source development and distribution
• Reverse engineering projects
• Intellectual property management and audits
• Branding and marketing arrangements
© 2009 IP ADVANTAGES LLC. All rights reserved.
5
- 6. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
IP Advantages helps investors eliminate or ameliorate intellectual property risks. We value their
investments properly and identify opportunities to strengthen the IP assets underlying the invest-
ment. We provide accurate and thorough freedom-to-operate assessments; evaluations of the
strength of an investment’s proprietary technology position; and targeted advice to address key
business risks and opportunities in a venture investment’s licensing and partnering portfolio, includ-
ing possible litigation outcomes.
We also leverage our IP related experiences in traditional industries to the emerging area of clean-
tech sector. We assist venture capitalists and other alternative energy entrepreneurs and investors to
perform intellectual property due diligence on investments relating to technologies that rely on or
promote renewable and sustainable resources. We work actively in both start-up ventures and es-
tablished companies within the Cleantech sector in the creation and protection of patent portfolios
and property. We are currently actively involved in several projects ranging from coal to liquid,
coal gasification, batteries, mobile communications and solar technologies.
Services we provide typically include:
• Conducting due diligence;
• Evaluating and analyzing intellectual property portfolios;
• Developing and strengthening patent and technology portfolios;
• Strategically advising on how to deal with overlapping patent and technology positions;
• Identifying the competitive aspects of an investment’s technology;
• Performing detailed and complex freedom to operate analyses;
• Assessing business risks and challenges in licensing and commercialization agreements and
providing practical advice on addressing them;
• Strategically advising on how to best position a business through partnering and licensing;
• Creating innovative solutions to ameliorate IP impediments;
• Collaboration with experienced and insightful IP litigators to assess possible litigation out-
comes;
• Evaluating inventorship issues;
• Providing guidance on legal issues involving academia and institution oriented technologies;
• Identification of potential licensing opportunities.
© 2009 IP ADVANTAGES LLC. All rights reserved.
6
- 7. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Patent litigation is believed to be extremely costly, time consuming, whether asserting your own
rights against an infringer or defending from an alleged assertion. This is where IP Advantages ex-
cels. It uses its expertise in patent prosecution, litigation and licensing to monitor and manages the
entire litigation. We structure a cost-saving litigation plan with a strategically selected litigation
firm, and we manage and oversee the entire litigation process to ensure that cases are handled in the
most efficient and cost-effective manner for all aspects of the litigation from discovery to trial or
settlement negotiations. The end result: money saved, case won!
Having conducted numerous patent and technology licensing negotiations and patent litigations, we
recognize that outcomes in licensing negotiations are often intertwined and affected by the antici-
pated outcomes in a related litigation. Accordingly, we believe the most efficient use of skilled ad-
vocacy is to prevent, rather than conduct, litigation. Essentially, adversarial patent licensing nego-
tiations are settlements of litigations that have not yet been brought, and the key factor in settlement
calculus is to make and advocate reliable predictions about what would happen if litigation ensues.
This rationale results to our philosophy of developing an active, diverse and inclusive practice in
adversarial patent assertion, litigation and licensing negotiation.
The types of negotiations we conduct cover a broad range - from comprehensive cross-licenses of
hundreds or thousands of patents between large, multi-national electronics companies to negotiation
of settlements with individual inventors conducting licensing campaigns on an industry-wide basis,
to highly specialized bilateral negotiations over a single patent. The issues involved in such nego-
tiations have ranged from traditional validity and infringement evaluations, to issues concerning the
measurement of damages and reasonable royalties, to issues from legal specialties other than intel-
lectual property - such as antitrust - that sometimes affect licensing terms and strategies.
IP Advantages helps clients wade through the complexity surrounding various patent licensing is-
sues. We bring together the core expertise in patent portfolio evaluations, market analysis, reverse
engineering, proof package and claim chart construction to develop a strategy that will result in the
greatest value for its client’s patent assets. Additionally, we support our clients by actively assisting
them in the execution of monetization strategies.
© 2009 IP ADVANTAGES LLC. All rights reserved.
7
- 8. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Legal Practices
The firm provides an innovative and cost-efficient legal service mechanism as compared to tradi-
tional type of law firms. Instead of imposing a stringent hourly fee, we stand in client’s position,
and wear the business hats. Thus, we work together with clients in achieving their objectives in a
much more efficient manner. First, we structure an action plan based on client’s business objectives;
second, we propose a creative compensation plan for our legal services; third, we act with high effi-
ciency and business acumen to protect clients’ rights. We have played many significant roles in the
creation and protection of many significant patent portfolios in the areas of telecommunication,
semiconductor, wireless technologies, information technologies, and life science industries. In our
past experiences, we have worked with clients such as the Alcatel-Lucent technologies, IBM, Sony,
Computer Associates, Nokia, other fortune 500 companies.
Our patent prosecution and counseling service is unrivaled in its depth of experience, industry and
technical expertise and international scale. We are particularly skilled in strategic planning of patent
portfolios in alliance with business and market penetration, including drafting broad and in-depth
patent applications to capture complex technical intricacies and novel creations, in anticipation of
any possible future challenge to the validity of the patents.
We work closely with companies from the earliest stage of their technical development, offering
valuable advice on how to protect their inventions and ideas in view of business strategies. We are
called upon to advise clients on complex licensing, patent clearance, and adversarial matters, as well
as to provide strategic business counseling regarding the development of products or technologies
that may allegedly infringe patents held by competitors or require the negotiation of royalty pay-
ments.
When necessary, we assemble a network of experienced patent attorneys, patent litigators and tech-
nical experts to address unique business or IP issues that may arise in the US, China and the rest of
the world.
With the network of lawyers virtually associated, our services encompass a broad spectrum of tech-
nical fields, ranging from information and networking, software, Internet, telecommunications,
semiconductors, electronic storage media, digital signal processing technologies, as well as pharma-
ceutical and bioscience technologies. Along with the development of new age green technologies,
we are actively involved in the field of clean-tech, nanotechnologies and related alternative energy
technology development. Equipped with a network of experts in these emerging technical fields,
our practice is tailored to provide cutting edge patent prosecution and counseling advice.
© 2009 IP ADVANTAGES LLC. All rights reserved.
8
- 9. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
We also represent clients in a wide range of trademark-related matters, including:
• Trademark clearance, registration, counseling and enforcement;
• Trademark oppositions and cancellations;
• Trademark due diligence;
• Negotiation of licenses and co-existence agreements;
• Trademark and domain name disputes and litigation;
• Transactional trademark issues in connection with the formation, operation, financing, and
sale of businesses.
We help clients develop and protect the value of their trademarks and service marks by preparing,
filing, prosecuting, and maintaining trademark applications and registrations; conducting trademark
searches; working with clients to develop trademark protection strategies and to manage portfolios;
negotiating trademark licenses and co-existence agreements; and handling opposition and cancella-
tion proceedings. We can also represent clients in opposition and cancellation proceedings before
the Trademark Trial and Appeal Board. Collaborating with various established firms around the
world, we handle trademark filings, oppositions, cancellations, and litigation outside of the US. As
such, we help clients to develop internationally renowned marks.
The most valuable assets of a company typically include its intellectual property (“IP”) and confi-
dential information, and the employees entrusted with this information. Both IP and employees can
be highly mobile. We advise clients on how to protect against the theft of their IP from both exter-
nal and internal threats by implementing trade secret protection and information security programs.
Often, trade secret protection includes employee agreements and/or proprietary information agree-
ments, which contain restrictive covenants (e.g., non-competition, non-solicitation and non-
disclosure agreements). In today’s global economy, we assist clients in tailoring the appropriate re-
strictive covenants under laws that vary widely by state and international jurisdictions. With the
proliferation of technology in the workplace, we also assist clients to design and implement effec-
tive information security programs and policies to prevent intentional or inadvertent loss of data.
Our copyright practice focuses on firm is particularly experienced in the area of computer software,
including issues relating to the scope of copyright protection and business arrangements for research
and development, consulting, and licensing. Our network of of-counsels provides valuable advice
in all other types of copyrighted materials, including motion pictures, visual art, sound recordings,
and other literary, musical, dramatic, sculptural, pictorial, and architectural works.
© 2009 IP ADVANTAGES LLC. All rights reserved.
9
- 10. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Selected Representations
• Represented a hydrogen full cell company in the sales of IP assets;
• Engaged in an evaluation and sale of a patent portfolio relating to cosmeceutical de-
vices;
• Advised ArcelorMittal in its world-wide labor agreement relating to conflict of law
issues;
• Advised ArcelorMittal in a common law contract issue;
• Represented DTS in a licensing agreement dispute before CIETAC in Beijing and
Shenzhen;
• Represented DTS in a patent invalidation appeal in Beijing First Intermediate Court;
• Represented Lucent technologies in licensing negotiations relating to a microelec-
tronics patents;
• Represented Lucent technologies in licensing negotiations relating to optical net-
working technologies;
• Engaged in a litigation representing a Taiwanese company against Matsushita Elec-
tric;
• Engaged in an ANDA litigation representing a generic drug company against a
branded drug company;
• Drafted and Prosecuted patent applications relating to wireless communication tech-
nologies on behalf of Lucent technologies, Avaya, Nokia;
• Drafted and prosecuted patent applications relating to audio coding technologies on
behalf of DTS;
• Drafted and prosecuted patent applications relating to digital imaging technologies
on behalf of Ricoh;
• Drafted and prosecuted patent application on behalf of Samsung;
© 2009 IP ADVANTAGES LLC. All rights reserved.
10
- 11. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
• Drafted and prosecuted patent applications relating to digital imaging the recording
technologies on behalf of Sony America;
• Prosecuted applications relating to computer hardware and software on behalf of
Computer Associates;
• Represented DTS in various trademark infringement proceedings in the US and
China;
• Evaluated targets for acquisition on behalf of Lucent;
• Negotiated equity investment models in start-ups on behalf of Lucent;
• Evaluated targets for acquisition on behalf of DTS;
• Brokered and sold multiple IP assets for various companies and individuals.
© 2009 IP ADVANTAGES LLC. All rights reserved.
11
- 12. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
About Our People
Holly
Ying
Li
Holly Ying Li is the founding partner of IP Advantages, a boutique consulting firm and the Law Of-
fices of Holly Ying Li, both based in New York City. Ms. Li’s practice focuses on intellectual prop-
erty prosecution, litigation counseling and management, and licensing in a variety of advanced tech-
nologies including, semiconductors, wireless communications, software designs, optical networking,
nanotechnologies, and clean and alternative energies. She also counsels clients on strategic alliance,
technology acquisitions and market entry strategies.
A native of China, Ms. Li started her career in the IP field since 1990 when she worked for a China
based Sino-foreign consulting firm in the context of projects management and joint venture forma-
tion with technology licensing and transfer component. In 1994, Ms. Li pursued further studies in
the US. Shortly after, she was recruited by Lucent Technologies (Alcatel-Lucent) and became one
of the youngest patent licensing managers at the Intellectual Property Business Unit, during which
she worked closely with Bell Labs scientists and engineers on patent and technology licensing issues
in the areas of microelectronics, optical networking and wireless technologies.
Ms. Li’s law firm experience started when she worked as an international summer associate at the
international law firm Baker & McKenzie’s office in HK. After her legal studies in 2001, Ms. Li
practiced law with one of the oldest IP firm in New York, Cooper & Dunham, during which she
horned her skills in patent application drafting, prosecution, opinions and client counseling. In 2005,
Ms. Li joined Quinn Emanuel Urquhart Oliver & Hedges, a major US trial firm and engaged in pat-
ent litigation on behalf of Asian clients. In 2007 and 2008, Ms. Li served as a Senior IP Counsel to
head up an IP group at an entertainment technology development company based in California,
where she was able to combine her patent prosecution, litigation and licensing skills and managed
the corporation’s international IP portfolios and ensured appropriate protections worldwide. Aided
by local counsels, she successfully represented the company in winning several contentious and non-
contentious proceedings including patent invalidations and appeals, litigation, and arbitration in
China in various Chinese judicial and administrative forums.
EDUCATION
RUTGERS UNIVERSITY SCHOOL OF LAW - Newark, Newark, NJ
Juris Doctor, October 2001
PEIYANG-TIANJIN UNIVERSITY, Tianjin, P. R. of China
B. S. in Electronics Engineering, July 1990
Honors: Annual Student Honor for Excellency; Annual Student Award for Leadership
© 2009 IP ADVANTAGES LLC. All rights reserved.
12
- 13. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
BAR ADMISSIONS AND PROFESSIONAL MEMBERSHIPS
State Bar of New York;
State Bar of New Jersey; U.S. District Court of New Jersey;
United States Patent and Trademark Office;
Association of the Bar of the City of New York, Asian Affairs Committee;
American Intellectual Property Law Association;
Licensing Executive Society; and
ABA IPL Committee 102 Subcommittee on International Patent Practice.
PUBLICATIONS AND PRESENTATIONS:
• Transnational Trademark Protection in Cyberspace -- A Close Look at the Differences Between the
US and Chinese Trademark Laws and Practices, Presented at YALE JOURNAL OF INTERNATIONAL
LAW Young Scholars Conference, Yale Law School, New Haven, CT (March 24, 2001).
• The Patentability of Business Methods and Its Impact on E-commerce Companies, New Copyright
Laws for the Dissemination of Music Over the Internet, DICTUM, A Newsletter of the New Jersey
State Bar Association, Young Lawyers Division, Vol. 23, No.1, 16 (Nov. 2000).
• Joint Comments on Draft Amendments to the Patent Law of the People’s Republic of China, Member
of drafting task force, American Bar Association (March 2006 – September 2008).
LANGUAGES
Mandarin Chinese – fluent; French – basic
© 2009 IP ADVANTAGES LLC. All rights reserved.
13
- 14. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Eric
Parham
Mr. Parham is an experienced intellectual property lawyer and engineer. He advises clients on pat-
ent, trademark, copyright and unfair competition issues including application filings and prosecu-
tion, opinions, product clearances, licensing, and litigation support. His technical concentrations
include computer hardware and systems, controls, digital communications, electronics, semiconduc-
tors, and software. Mr. Parham has traveled internationally to interview inventors and advise clients,
and worked closely with foreign associates to coordinate and advance clients’ intellectual property
interests around the globe, especially in the Asia Pacific region. He has drafted, prosecuted and ob-
tained numerous strong US and PCT patents in various technical fields. He has also produced con-
cise patentability and infringement opinions that have greatly helped clients in their market entry
process and gaining competitive positions. In addition, Mr. Parham also negotiated advantageous
cross-licensing agreements for consumer products and advised clients on near and long-term IP is-
sues.
Education:
University of Connecticut, Juris Doctor, 1999;
Rensselaer Polytechnic Institute, New York, B.S., Computer & Systems Engineering, 1986;
University of Rhode Island, M.S., Electrical Engineering, 1990
Bar Admissions:
State Bar of New York;
State Bar of Connecticut;
U.S. Patent and Trademark Office
© 2009 IP ADVANTAGES LLC. All rights reserved.
14
- 15. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Paul
Diamond
Paul Diamond is a US Patent Attorney who provides a diverse range of intellectual property and pat-
ent legal services. Dr. Diamond’s patent practice covers all the life sciences, including biotechnol-
ogy, pharmaceuticals and drug discovery, and medicine. After earning his Ph.D. in Molecular and
Cellular Biology from Harvard University in 1998, Dr. Diamond worked for two years as a business
consultant for a firm specializing in servicing the health science industries. During this time, he was
involved in the evaluation of business opportunities and market areas for several leading companies.
In 2000, Dr. Diamond joined the intellectual property practice group of the worldwide law firm
White & Case LLP, in their New York City office. After four years at White & Case, Dr. Diamond
formed his own practice 2 years ago and recently joined IP Advantages.
Education:
Fordham University School of Law, Juris Doctor, 2003
Harvard University, Ph.D., 1998, Molecular and Cellular Biology
The Johns Hopkins University, B.A., 1990, Biology
Bar Admissions:
New Jersey
New York
U.S. Patent and Trademark Office
© 2009 IP ADVANTAGES LLC. All rights reserved.
15
- 16. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Martin
Kamerman
Martin Kamerman is active in the global patents field with expertise in monetization, commercializa-
tion, evaluation and analysis of patents. He has a very large base of buyers and sellers of patents.
Martin has been active in the patent business for many years. Prior to his involvement in the various
aspects of intellectual property he was an executive technology consultant for over 20 years. His
global client base included most of the major U.S. financial services companies including CitiGroup,
JP Morgan Chase, Bank of New York, and Mellon as well as smaller companies and startups. He
also worked extensively in the field of mobile communications. His clients included startups in mo-
bile couponing and extensive work in providing mobile services in Latin America including banking,
inventory control for PepsiCo and mobile services for various government agencies in Mexico, Gua-
temala, Argentina, and Peru.
He is a partner in IP Advantages and the founder and Managing Principal of I Buy Tech Patents
LLC, a leader in the business of technology oriented IP Transactions.
© 2009 IP ADVANTAGES LLC. All rights reserved.
16
- 17. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
Technical
Consultants:
Ian
Wylie
Mr. Wylie has been an avid inventor and experienced patent consultant with a proven track record of
innovation with many published scientific papers and 17 U.S. patents/applications. He has 15 years
of Intellectual Property related experience including research, inventing, supporting IP litigation,
negotiation, and IP strategy creation process in the areas of chemistry, semiconductors, and clean
energy. His most recent experience includes inventing and writing breakthrough patents in diverse
disciplines, inventor liaison work, prior art search for novelty, and patent prosecution. His
engagement includes serving as a IP and technical consultant at an Illinois based Diamond
technology research company focusing on advanced IC technologies for super-smooth ultranano-
crystalline diamond, conducting and supporting patentability search, freedom to operate, inventor
liaison and patent licensing search. Previously, Mr. Wylie has worked at several alternative energy
start-ups, including a hydrogen energy and fuel cell start-up company as an IP Director, where he
created and directed various IP and licensing matters in the fuel cell area. Prior to his involvement in
the alternative energy field, Mr. Wylie worked in the microelectronics areas for several large tele-
communication companies, including Lucent technologies, and Nortel Networks. In that capacity,
Mr. Wylie has conducted numerous reverse engineering projects in patent mining, assertion and
licensing contexts, and analyzed great numbers of competitor technologies for patent infringement
analysis.
INTELLECTUAL PROPERTY TECHNOLOGY BUSINESS
Patent + Technical Searching Semiconductor + IC Quality + Project
Technology Management
IP/Technology Analysis Materials Science + Supplier Management
Spectroscopy
Patent + Inventor Liaison Energy (Combustion + Energy Business Analysis
SAGD) Modeling
Patent drafting + prosecution Geochemistry + Clean Energy Competitor Analysis
Patent Licensing /Litigation Chemistry (Physical, Organic, M+A Technology
Analytical) Evaluation
IP Strategy (internal/external) Reverse Engineering Teaching and Training
Education/Professional Training
© 2009 IP ADVANTAGES LLC. All rights reserved.
17
- 18. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
BACHELOR OF SCIENCE (B.Sc.), Chemistry, Carleton University, Ottawa, Canada, 1981
MASTER OF SCIENCE (M.Sc.), Chemistry, Carleton University, Ottawa, Canada, 1984
“Laser spectroscopy of βeta-Carotene and FORTRAN simulation of high flux laser irradiation”
Semiconductor Device Physics, Integrated Circuit Technology 1988, 1990
Graduate courses in Electrical Engineering, Carleton University, Ottawa, Canada
CERTIFIED ADVANCED TECHNOLOGY MANAGER (CATM), 1997
High-Tech MBA equivalent, Learnsoft Corp. Course with traditional MBA materials plus recent
business analysis + lean manufacturing modules; e.g., strategic planning, marketing, IP, high tech
accounting etc.
PATENTS, PATENT APPLICATIONS & INVENTIONS
17 US P A T E N T S O R P A T E N T A P P L I C A T I O N S A N D 5 O T H E R I N V E N T I O N S I N T H E
A R E A S O F : N A N O -T E C H N O L O G Y , S E M I C O N D U C T O R T E C H N O L O G Y , C H E M I S T R Y ,
PLANARIZED DIAMOND AND ENVIRONMENTALLY FRIENDLY (AND EFFICIENT) HEAVY
O I L E X T R A C T I O N ( M O D I F I E D SAGD)
S A M P L E PAT E N T : US7091604 “T H R E E -D I M E N S I O N A L I N T E G R AT E D C I R C U I T S ”
PUBLICATIONS & REPORTS
20+ R E F E R E E D P U B L I C A T I O N S , M A J O R R E P O R T S O R I N T E R N A L D O C U M E N T S I N
C H E M I S T R Y , S E M I C O N D U C T O R T E C H N O L O G Y , Q U A L I T Y /R E L I A B I L I T Y , E N E R G Y , A N D
INTELLECTUAL PROPERTY
© 2009 IP ADVANTAGES LLC. All rights reserved.
18
- 19. IP
Advant ages
LLC
IP
PORTOFOLIO
MANAGEMENT
AND
EMERGING
MARKET
EXPANSION
For
more
information,
please
contact
us
at
the
following
ad‐
dresses:
IP
Advantages
LLC
51
Madison
Avenue,
22
Floor,
New
York,
NY
10010
NEW YORK
T:
+
1
212
849
7414
F:
+
1
212
849
7100
C:
+
1
917
535
3596
Email:
hyingli@ipadvantages.com
IP
Advantages
LLC
4
Rue
St.
Augustin
P A R IS 75002
Paris
T:
+
33
6
71
01
30
69
Email:
HYINGLI@IPADVANTAGES.COM
© 2009 IP ADVANTAGES LLC. All rights reserved.
19