TUT8: Aligning Intellectual Property Strategies with R&D and Commercial Goals – Part 1 of 2
Monday, March 25 | 10:30 am-12:30 pm

ABOUT THIS TUTORIAL:

This tutorial on innovation and intellectual property in energy storage provides an overview of strategies and tactics for successfully protecting and commercializing emerging technology. We start by emphasizing IP basics, the fundamentals that are key to giving you a fighting chance. The session will focus on best practices for developing an intellectual property portfolio that not only protects your company’s innovations but plays an integral role in your commercial strategy. However, in these turbulent times, effectively securing IP rights has become more challenging, so we will review the global advanced battery patent landscape including looking at recent trends that may impact the role IP plays in the market in general and your business in particular. Finally, we will provide you with a perspective and set of guidelines for treating IP holistically within the framework of your company, thereby maximizing the impact of your innovation and R&D dollars. While every company has its specific needs, the perspectives offered here will benefit executives, R&D professionals and innovators facing the challenges of commercializing new technology in a rapidly evolving energy storage market. 

INSTRUCTORS:

Daniel Abraham, PhD, Vice President, Science and Business Strategy, MPEG LA

Dan Abraham joined MPEG LA in 2012 as Vice President, Science and Business Strategy, where he is responsible for identifying new opportunities and creating new programs. Dan came to MPEG LA from Columbia University where he served as Director of Columbia Technology Ventures. Prior to Columbia University, Dan served as Vice President, Chief Technologist at GE Technology Development. He has also served as Vice President, Advanced Development for Veeco Instruments; Intellectual Properties Director and Senior Scientist at Phase Metrics, and conducted nanoscience research at The Institute for Materials Research, University of Nijmegen (The Netherlands), IBM Research Laboratory Zurich and AT&T Bell Labs. Dan earned his PhD in Physics from the University of California.

Matthew Rappaport, President, Intellectual Property Analytics, IP Checkups, Inc.

Matthew Rappaport co-founded IP Checkups in 2004 to assist companies in extracting maximum value from patent analytics, to increase organizational knowledge and to help strengthen companies' return on technology investment. Matt specializes in IP strategy, patent landscape analysis, analytics, valuations and market research to help companies align their IP strategy with their business objectives and monetize their IP assets.

Lisa Salley, President, Energy Systems & Safety Institute

Lisa Salley is the President of the Energy Systems & Safety Institute, a Washington DC-based hybrid think tank and incubator focused on eliminating scalability issues that impede evolution of critical technologies required for our 2040 and beyond electric grid. The ultimate mission is to improve scalability of energy systems such that mass adoption is accelerated. The Institute is specifically focused on microgrids and energy storage systems. Additionally, Lisa serves as the Senior Managing Partner of the Heritage Solutions Group. Just prior to starting HSG, Lisa was an award-winning entrepreneur. She founded Heritage Capital Services which has focused on financing in emerging and underserved urban markets. She has spent over 30 years in corporate America, including senior executive positions at GE, Dow, Underwriters’ Laboratories, and the American Petroleum Institute. Early career experiences were with DuPont. Her corporate appointments spanned from Materials Nuclear Engineer to Chief Strategy & Growth Officer to Senior Vice President. In 2017-18, Lisa lead a global team in Oil and Gas which yielded 34% improvement above plan without jeopardizing the 2018 financials. Prior experiences include doubling the size of a specialty chemical business within 5 years – including defining segment priorities and the roadmap to ensure global coordination and global execution of strategy – as well as leading the business development, design, and execution of the go- to-market strategy for a $13B market expansion opportunity in a highly regulated market. Earlier career experiences included worldwide leadership for overall growth and management of a $100M specialty chemical product line in an over-capacity market with double digit price erosion and 70% of sales outside the US. Results included 18% increased revenue, +3% price realization, on-time delivery rates at 99%, introduction of the first new product in 5 years, and launch of Asia-based operations. Lisa brings the following functional expertise: Growth/Restructuring/Operational Due Diligence; Strategy, P&L Leadership, Assessment, Alignment, & Implementation; Business Process Management & Improvement; Project Management & Six Sigma; Emerging/New Markets & New Products: Commercialization, Market Entry & Market Exit; Market Analysis: Sizing, Needs Assessments, Segmentation, Portfolio Gap Review; and Testing & Measurement: Effectiveness, Profitability, ROI. Lisa can be summarized as a “tale of two cities”. Specifically, she is both an award-winning entrepreneur and an award winning corporate executive. She has also developed human talent in 100-year-old industrial brands but also built, trained, and developed talent required in today’s fast paced technological world. And, she has mastered concurrent leadership of strategic revenue growth and sustainable cost structure improvement to yield double digit, sustainable results. She has been repeatedly recognized for leadership and execution abilities. She is most well known for innovation, profitable growth, and execution. Further, she is a Six Sigma certified Master Black Belt and has a BS in Metallurgical Engineering & Materials Science from Carnegie Mellon and an MS in Industrial and Management Engineering from Rensselaer Polytechnic Institute. She serves on several community boards, is an avid genealogist, and is a member of Alpha Kappa Alpha Sorority. In addition to her professional and civic responsibilities, Lisa is an ardent advocate for Alzheimer’s.

Victor A. Cardona, Partner, Heslin Rothenberg Farley and Mesiti

Victor A. Cardona, a partner with Heslin Rothenberg Farley and Mesiti, is experienced in enforcing, and procuring protection for, all types of Intellectual Property including patents, trademarks and copyrights. Prior to joining the firm in 1999, Victor gained    valuable experience as an Environmental Engineer with the New York State Department of Environmental Conservation where he spent over six years     evaluating the feasibility, effectiveness and implementation of environmental remediation technologies. Victor is a co-chair and co-founder of the firm’s Cleantech Practice Group. He has been a driving force behind the Group’s signature Clean Energy Patent Growth Index which tracks innovations in the Clean Energy area along with the top patent owners, countries and U.S. states for Clean Energy patents. He has spoken and written about this topic in various venues. He is also a member of the firm’s Mechanical and International Practice groups. Victor has extensive experience in procuring overseas Intellectual property protection for the firm’s clients, which is enhanced by his knowledge of Italian. Victor graduated with a Juris Doctorate cum laude from Albany Law School and has a Bachelor of Science in Mechanical Engineering from Clarkson University with a concentration in Environmental Engineering. He is admitted to the New York State Bar and is a patent attorney registered to practice before the United States Patent and Trademark Office. Victor enjoys coaching youth baseball along with running, fitness training, playing golf and watching the Yankees. He lives with his wife and 3 children in Guilderland. Victor is on the Board of his local neighborhood association. Industry Groups/ Legal Associations: Board Member of New York Battery and Energy Storage Technology Consortium, New Energy New York, Alliance for Clean Energy New York, Vice President, Italian American Bar Association, Greater Capital Chapter of New York.

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