Successful IP Knowledge Transfer Panel Discussion

Successful IP Knowledge Transfer Panel Discussion

Organized by: IEEE SCV PACE

Eventbrite registration:

Event Time: April 22, 2013 (Monday), 5:00 PM – 8:3o PM (PT)


Ramada Inn, Silicon Valley

1217 Wildwood Ave, Sunnyvale, CA 94089



The IEEE Professional Activities Committees for Engineers’ Silicon Valley chapter is hosting an event with the In-house Intellectual Property Counsels from the leading technology corporations and academic institutions of the Bay Area and Texas to discuss today’s latest IP trends and issues. The event also features technology exhibits for licensing available from some of the universities during the networking session before the panel meeting.

The ultimate goal of this conversation is to assemble parties from both sides of the IP spectrum and to provide concrete feedback to local congressional representatives and professional organizations (IEEE, ACM,…) on what works and what doesn’t in today’s current IP climate.

A panel of 5-10 corporate and university In-house Intellectual Property Counsels will be held in front of several lead engineers, directors, and Vice Presidents who deal with IP issues on a regular basis. The discussion will be led by a PACE chair, covering the topics outlined below and concluding by a Q&A session. The opinions expressed in the panel discussion can be considered as attendee’s official opinion though all the opinions are aggregated without identifying a specific attendee when making the summary of recommendations to IEEE and other organizations.

Confirmed Panelists so far:

Eric Janofsky, Vice President, Intellectual Property, Lam Research,

Douglas Luftman, Chief Intellectual Property Counsel, Netapp,

Mary Fuller, Executive Director and Associate General Counsel, IP, Maxim Integrated Products, Inc.

Joshua McGuire, Senior Patent Counsel, Head of Strategic Android/Mobile Patents at Google Inc.

Linda Chao, Senior Licensing Associate, Office of Technology Licensing, Stanford University.


Confirmed Universities for technology exhibits so far:

Stanford University



Light food and refreshments will be available all night.

5:00pm-6:00pm = Networking

Featured technology exhibits for licensing available from universities (If you are from a university interested in hosting a table for exhibit of available technologies, please register for Table for exhibit of technology available for licensing. There is no charge for this)

6:00pm-8:00pm = Panel Discussion

8:00pm-8:30pm = Q&A session with Panelists


Preliminary topics include but are not limited to:

1. Including explicit patent filing action in professional or academic research publications

  • Should authors disclose more transparently that the material in the paper is patented or under patent review?

2. Corporate strategy of handling IP generated at academic institutions

  • If the corporate general counsel has the knowledge of the provisional patent by a university, what steps are being taken?
  • If the corporate general counsel has the knowledge of the patent application by a university, what steps are being taken?
  • If the corporate general counsel has the knowledge of the patent held by a university, what steps are being taken?
  • What is the guidance from the general counsel to an engineer?
  • If the large corporations are licensing from an unknown/small startup/small company, should the corporation follow due diligence in licensing the IP?

3. Commercializing IP originating from academia

  • If the universities come forward with the intention to transfer the knowledge for commercialization, what stops companies from going ahead with licensing?

4. Patent review & standards implications

  • Should there be a neutral board that consist of engineers and attorneys to identify the important patents in a particular field and determine the reasonable royalties based on the advantage of the invention?
  • Should this process be open to public review similar to how standards are defined?
  • Should fair, reasonable, and non-discriminatory terms (FRAND) be applicable to technologies that are not covered by standards?


Organized by: IEEE SCV PACE

IEEE Santa Clara Valley Section (Silicon Valley Section)–Professional Activities Committee for Engineers(PACE)

Please visit

Current PACE Officers 2013 :


Chair:  Manuel Ilagan 

Career and  Networking Chair, TreasurerNeeta S Srivastav

Technical Program Chair: Jean-François Merckling                                     

Social Networking Chair and Webmaster: Sanjeev Murthy

Adviser: Kiran Gunnam (2012 and 2011 PACE Chair)

  • September 2020
    M T W T F S S