Developments Since Sun Microsystems v. Microsoft: Building a License in Light of Current Case Law

TOPIC: It has been almost ten years since the important 9th Circuit Court decision in Sun Microsystems v. Microsoft. The speaker will highlight developments that influence licensing practice since that August 1999 decision.

SPEAKER: Chuck Valauskas Chuck Valauskas is a partner and founder in the firm, Valauskas & Pine LLC based in Chicago. He is legal counsel to companies and ventures with emphasis on start-ups based on new product and services, concepts, and technologies. Chuck is a patent attorney registered with the U.S. Patent and Trademark Office and a former adjunct law professor for intellectual property matters. He is affiliated with LES and Association of University Technology Managers (AUTM).

MEETING FORMAT: 5:30-6:30 pm Registration & Networking with appetizers and beverages

6:30-7:30pm Welcome by Chapter Chair, Michele Gunness Presentation

8:00pm Adjourn

From scribble on the napkin to product on the market, Louis Foreman will share knowledge from THE INDEPENDENT INVENTOR’S HANDBOOK and explain everything a potential inventor needs to know from raw concept to market reality.

On October 10th join us in Oregon as we engage with the Publisher of Inventors Digest Magazine and executive producer of the PBS Emmy® award-winning Everyday Edisons in a 3-hour workshop that will cover protecting, prototyping, licensing, and more.

Scam companies run rampant in the industry and inventors need to get real advice from real inventors. LOUIS FOREMAN, THE CO-AUTHOR OF INDEPENDENT INVENTOR’S HANDBOOK gives aspiring inventors the real deal.

Understanding the difference between a good idea and a marketable idea. Why investing too much money at the outset can sink you. Plus the effective investor pitch, questions to ask a prospective manufacturer, 14 licensing land mines to avoid, “looks-like” versus “works-like” prototypes, 10 things not to tell a potential investor, and how to protect your invention once it’s on the market.

Louis J. Foreman is a serial entrepreneur with a passion for innovation. He started his first business from his college fraternity room and, for the past 20 years, has been starting and building successful companies. He is the publisher of Inventors Digest magazine and executive producer of the Emmy® award–winning PBS show Everyday Edisons.

Please RSVP at the URL above!

Controversy over the last year concerning the publishing of a Dutch scientist’s research on smallpox points up the strategic concerns with the availability of sensitive information. Most companies recognize that U.S. export control laws apply to shipments of products or technical data out of the United States to another country.

Some companies still do not realize, however, that the sharing of technology or source code with a foreign national is also an export – even when the foreign national is within the United States. Under the "deemed export rule" in the EAR - Export Administration Regulations (or parallel prohibitions under the International Traffic in Arms Regulations - ITAR, which applies to exports of military items) , a transfer of technology or source code (except encryption source code) is "deemed" to be "an export to the home country or countries of the foreign national."

This rule has important implications for any company that employs foreign nationals or has business dealings with foreign companies. Universities can be covered if hosting foreign nationals, sharing research or if involved in academic exchanges. Recent revisions to U.S. Citizenship and Immigration Services' regulations require human resources personnel to have an understanding of the implications of a “Deemed Export” and understand when the employer/institution might be required to restrict a foreign national's access to any technology until a “Deemed Export” license is obtained. Companies that violate the rule with respect to transfers of commercial or dual use technology and software risk civil and criminal fines, potential loss of export privileges, and negative publicity.

This afternoon program will provide an overview of the deemed export regulations, proposed revisions and measures and practices necessary to comply with the rules. The presentation will cover the exceptions to the regulations and suggests ways in which to structure a compliance program so that company, university and research staff are aware of the regulations and their responsibilities. Presenters will include attorneys from Dorsey & Whitney, Ater Wynne and the Export Compliance Manager from Oregon Health Sciences University.

Scott Goddin Director U.S. Commercial Service-Portland Tel. 503-326-3001/5156 (direct) [email protected]