COURSE NUMBER: MBA277.4

This course is cross-listed with the School of Law

COURSE TITLE: Intellectual Property: Decisions, Strategies, Business Models

UNITS OF CREDIT: 2.0

INSTRUCTOR: Robert P. Merges and Joseph Siino

E-MAIL ADDRESS: rmerges@law.berkeley.edu

CLASS WEB PAGE LOCATION: http://bspace.berkeley.edu

MEETING DAY(S)/TIME: Wednesdays 4:00 – 6:00 PM

PREREQUISITE(S): None.

CLASS FORMAT: Mixture of lecture, case study, and class discussion

REQUIRED READINGS: Mixture of case and problem materials, plus backgriound readings from professional publications

BASIS FOR FINAL GRADE: Combination of final and class participation

ABSTRACT OF COURSE'S CONTENT AND OBJECTIVES:

This course will examine financial and business issues centering on legally enforceable intellectual property (IP) rights. We begin with an overview of the major types of IP -- patents, copyrights, and trademarks -- and then look at common decisions that businesses make with respect to their IP rights: how many of these rights to acquire, how to use them to advance business goals (license, enforce, etc.), and how to form separate profit centers to "monetize" IP. Next we will consider a number of emerging IP-based business models: patent assertion companies (i.e., "patent trolls"); various entities designed to offset or combat trolls; IP-based "spinouts" from large companies; IP brokers; and others.

BIOGRAPHICAL SKETCHES:

Professor Merges is Wilson Sonsini Goodrich & Rosati Professor of Law and Technology at U.C. Berkeley (Boalt Hall) School of Law. He is also a co-Director of the Berkeley Center for Law and Technology, centerpiece of the Intellectual Property program at U.C. Berkeley. He is the co-author of leading casebooks on patent law and intellectual property, and has written numerous articles on the economics of intellectual property, in particular patent law. Professor Merges has worked with government agencies such as the Department of Justice and the Federal Trade Commission on IP-related policy issues. He has also consulted with leading law firms and companies, and is now a Managing Director of Ovidian Group, LLC, a Berkeley-based IP business and investment advisory company. He received his B.S. from Carnegie-Mellon University, a J.D. from Yale Law School, and Ll.M. and JSD degrees from Columbia Law School.

Joseph Siino is the principal founder and chief executive officer of Ovidian Group, LLC. Prior to founding Ovidian, Mr. Siino served as Senior Vice President, Global Intellectual Property & Business Strategy for Yahoo! Inc., one of the world’s leading Internet/media companies. At Yahoo!, Mr. Siino built and managed a global team of IP professionals responsible for Yahoo!’s large portfolio of patent, trademark and other IP assets, and personally led Yahoo!’s IP business strategy and a wide range of international deals.

Prior to Yahoo!, Mr. Siino spent approximately 20 years as an IP advisor, investor, entrepreneur and attorney. He has managed IP deals collectively worth billions of dollars and served as IP strategist for many of Silicon Valley’s largest technology companies, as well as a large number of startup enterprises.

Mr Siino previously founded and ran the IP Strategy and Technology Transactions practice at Brobeck, Phleger & Harrison, where he was listed as one of The World’s Leading Lawyers by Chamber’s Global, and also founded Siino Law & Technology Group, an innovative IP strategy boutique that represented companies such as SAP, Intel, Sun, and Quantum.

Mr. Siino has served many years as an adjunct professor at the University of California, Berkeley, where he designed and taught several courses focused on IP strategy and deals. Mr. Siino is an alumnus of both the London Business School, where he studied finance, and the University of California, Berkeley, where he received a bachelors degree in physics and a doctorate in law.