CSIS Case Study on US-China AI Technology Licensing

Case Study on intersection of IP licensing, export controls & CFIUS (licensed iStock photo)

Most have the luxury of spending their sabbatical year catching up on their reading, fly-fishing or vacationing in Europe. I did not have that. Instead I spent my sabbatical year pursuing fields that were outside the usual scope of my duties as a legal executive with my employer.

In the summer of 2018, I had the honor of advising one of the premier private equity firm based in Shanghai on licensing advanced cognitive AI technology from a California Institute of Technology spin-off (with contributing tech from the US Space Agency NASA). At the time this matter stood at the intersection of advanced technology licensing, US export control, CFIUS, the Bayh-Dole Act, and the geopolitical consequences from the US-China trade & technology wars. This was an extremely satisfying case for me because the deal occurred right smack in the middle of the passage of new US laws covering this field of ever growing importance: FIRRMA and ECRA. (I will cover these two laws and their ensuing regulations in separate articles.) I was called upon to advise on all of these issues in real-time when there were no precedents, guidelines or established protocols existing then.

The above matter quickly became a case study at the world-famous Washington DC think-tank the Center for Strategic & International Studies (CSIS) which invited my friend & client Chairman Mr. Michael Kuan to discuss and share the lessons learned from this case at the “US-China Innovation Forum” in April 2019 (which is why I can write in general about it here).

The video of Mr. Kuan’s public presentation is here.

https://www.youtube.com/watch?v=2h2Q94KPaPU&feature=youtu.be

Fast forward the video to time-mark 26’:33” to see case study presented by Chairman Kuan.

This is a rare opportunity to examine the legal, business, & commercial nuances of a high-profile licensing case as well as the psychology behind it.