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  • Contains 6 Component(s), Includes Credits Includes a Live Web Event on 04/30/2024 at 1:00 PM (EDT)

    This session will discuss transfer pricing best practices, including organization structures, valuations and the agreements that need to be put in place to help IP professionals support their organizations’ transfer pricing teams.

    Intercompany transactions involving the exchange of intellectual property are coming under heavy scrutiny from government tax authorities. Transfer pricing transactions involving the exchange of intellectual property are viewed as a commercial transaction that will create a tax liability to the enterprise. This session will discuss transfer pricing best practices, including organization structures, valuations and the agreements that need to be put in place to help IP professionals support their organizations’ transfer pricing teams.

    John Cheek

    Vice President, Intellectual Property & Legal Operations; Chief Intellectual Property Counsel

    Tenneco Inc.

    John Cheek is Vice President & Chief Intellectual Property Counsel for Tenneco Inc., a Fortune 200 designer, manufacturer, and marketer of automotive products for original equipment and aftermarket customersPrior to joining Tenneco in 2017, Mr. Cheek was a senior IP leader at Caterpillar Inc. for nearly 20 years, where he served in IP leadership roles in the United States and EuropeMr. Cheek received an undergraduate degree in Mathematics from Wabash College and completed additional undergraduate studies in Physics and Mechanical Engineering . He received a J.D. from the University of Dayton and an MBA from the University of Chicago’s Booth School of Business and has lectured on intellectual property strategy and management at the Kellogg School of Management at Northwestern UniversityHe currently serves as President of the Association of Corporate Patent Counsel (ACPC), on the Board of Directors of the Intellectual Property Owners Association (IPO), and on the Board of Directors of the IPO Education Foundation.

    James Ferguson

    Partner

    Mayer Brown LLP

    James R. Ferguson is a partner with Mayer Brown LLP, where he focuses his practice on intellectual property, complex commercial litigation and international arbitrationHe represents companies in the pharmaceutical, medical device, financial services, information technology and biotechnology industries in cases involving license disputes, patent claims, joint ventures, IT disputes and many other issues.   Jim also counsels companies on patent licensing structures, particularly structures involving multi-national affiliates.

    Megan Hall

    Partner

    Eversheds Sutherland (US) LLP

    Megan Hall is a partner at Eversheds Sutherland (US) LLP. She advises multinational corporations on international tax matters, including the tax aspects of acquisitions, mergers, internal restructurings and business formations. She has designed plans and led teams to complete international restructurings in advance of a spin-off of a division, initial public offering and acquisition by private equity. She is experienced in post-transaction integration and reporting, including implementing global transfer pricing strategies. Megan also advises employers in connection with tax-related immigration issues unique to global workforces. She provides cross-border tax planning related to short and long-term assignments, including the applicability of SOFAs. She advises on employer withholding obligations, employee exemptions from withholding due to visa status and has efficiently resolved employer withholding tax disputes with the Internal Revenue Service. Megan has advised US chemical companies for more than a decade and is a frequent presenter and author on the Superfund chemical excise taxes. Prior to joining Eversheds Sutherland, Megan served as a law clerk to The Honorable Marvin J. Garbis, United States District Court for the District of Maryland.

    David Lane

    Associate Patent Counsel

    Johnson & Johnson

    David Lane is Associate Patent Counsel at Johnson & Johnson. 

  • Contains 9 Component(s), Includes Credits Includes a Live Web Event on 04/24/2024 at 1:00 PM (EDT)

    During this webinar, panelists will discuss how to leverage your IP rights to assist in stopping illicit trade.

    During this webinar, panelists will discuss how to leverage your IP rights to assist in stopping illicit trade.

    Jake Feldman

    Chief Intellectual Property Counsel

    Kenvue

    Jake Feldman is the Chief Intellectual Property Counsel at Kenvue, maker of iconic brands such as Listerine®, Johnson’s®, BAND-AID® Brand, Benadryl®, Tylenol®, Aveeno®, and Neutrogena®. Jake is responsible for managing the Trademark, Patent, Global Brand Protection, and IP Operations teams at Kenvue. Jake also provides counsel on generative AI, social media, and on various policy issues.

    Zachary Keegan

    Attorney-Advisor in the Intellectual Property Enforcement Branch, Regulations and Rulings Directorate

    Office of Trade at U.S. Customs and Border Protection

    Zach Keegan is an Attorney-Advisor in the Intellectual Property Enforcement Branch, Regulations and Rulings Directorate in the Office of Trade at U.S. Customs and Border Protection. In this role, Zach provides guidance to CBP personnel stationed at the Ports of Entry regarding the detention and seizure of merchandise suspected of violating intellectual property rights. Zach also adjudicates administrative petitions seeking remission of goods that have been seized for infringing protected trademarks or copyrights. Finally, Zach reviews right holder applications for CBP’s IPR e-Recordation system and conducts domestic and international training on border enforcement of IPR. Zach holds a J.D. from The George Washington University Law School and a B.A. in Political Science & International Relations from The State University of New York, College at Geneseo. 

    Sanjiv Sarwate

    Senior Legal Director - Trademarks

    Dell Technologies

    Sanjiv Sarwate is Senior Legal Director - Trademarks with Dell Technologies and has been with Dell since April 2011. Before that, he was in private practice in Chicago specializing in trademark and copyright law. He is the primary attorney with responsibility over trademarks at Dell, with an emphasis on anticounterfeiting and online trademark enforcement. He is a frequent speaker on trademark issues, including before the US Patent and Trademark Office, the European Intellectual Property Office, and the Mexican Institute of Industrial Property, as well as a past chair and current member of IPO’s Anti-Counterfeiting Committee. He received his undergraduate and law degrees from the University of Illinois at Urbana-Champaign, and a masters’ degree from the University of Chicago.  

    Chris Weimer

    Member

    Pirkey Barber PLLC

    Chris Weimer practices trademark, unfair competition, trade secret, and copyright law with a focus on disputes and enforcement. He is a Member of Pirkey Barber PLLC and resides in Austin, Texas.  He currently serves as Co-Vice-Chair of the IPO Anti-Counterfeiting and Anti-Piracy Committee. 

  • Contains 9 Component(s), Includes Credits

    This webinar will explore various issues around the current hot topic of different work models and their impact on lawyers, law firms, and in-house legal departments. In particular, this webinar will include a robust discussion around the mental health impact on lawyers; the DEI impact on lawyers, law firms, and in-house legal departments; and the various pros and cons of lawyers working remotely, in a hybrid model, or 100% in-office. *CLE Note* VA has approved this course for 0.5 Well-Being credit & IL has approved this course for 0.25 Diversity & Inclusion Credit and 0.25 Mental Health and Substance Abuse credit.

    This webinar will explore various issues around the current hot topic of different work models and their impact on lawyers, law firms, and in-house legal departments. In particular, this webinar will include a robust discussion around the mental health impact on lawyers; the DEI impact on lawyers, law firms, and in-house legal departments; and the various pros and cons of lawyers working remotely, in a hybrid model, or 100% in-office.

    *CLE Note* VA has approved this course for 0.5 Well-Being credit & IL has approved this course for 0.25 Diversity & Inclusion Credit and 0.25 Mental Health and Substance Abuse credit.

    Carlyn Burton

    Partner

    Osha Bergman Watanabe & Burton LLP

    Carlyn Burton uses intellectual property in creative and strategic ways to help clients achieve their business goals. With more than 15 years of IP legal experience under her belt, Ms. Burton has represented a wide range of clients – from accomplished Fortune 500 companies to innovative start-ups.  As a scientist, she combines diverse technical knowledge with a strong skill set across multiple areas:  domestic and foreign patent prosecution and maintenance, IP counseling, licensing, and IP litigation in the fields of chemistry, materials science, and mechanical engineering, with an emphasis in oilfield technologies, specialty chemicals, polymers, nanotechnology, and pharmaceuticals.

    Shruti Costales

    Managing Member

    Shruti Law PLLC

    Shruti Costales (she/her)is the Managing Member at Shruti Law PLLC. Shruti is a licensed patent attorney and has worked in private practice, in-house, and with the Federal Government. She has 20+ years of deep legal experience in handling IP transactions, complex commercial transactions including drafting and negotiating XaaS agreements and handling FED/SLED agreements, product counseling, procurement agreements, due diligence and mergers & acquisitions related assessments, patent counseling, patent litigation, patent and trademark application drafting and prosecution. Her experience includes working in the technology (XaaS, IoT, AI,HW, and SW), microelectronics (e.g., semiconductors, integrated circuits/chips, microprocessors, memory devices, microelectromechanical systems (MEMS),optoelectronic devices, etc.), electronic devices, healthcare (including biotechnology, medical devices, and pharmaceutical – small molecule and large molecule), chemical (including catalysts and polymers), automotive, and petrochemical/energy technology areas. Shruti has a BS in Chemical Engineering from Purdue University and a JD from Franklin Pierce Law Center (now the University of New Hampshire School of Law). She is an Advisory Board member for Patent Pathways® and is the former co-chair of the DEI committee for the Intellectual Property Owners Association (IPO) where she co-authored many white papers and guides. Shruti loves reading mystery novels, writing poetry, and sewing.

    John Harrity

    Co-Founder & Partner

    Harrity & Harrity, LLP

    John Harrity is a co-founder and partner at Harrity & Harrity, LLP, a patent law firm renowned for its commitment to quality, innovation, and culture of giving back. With a background as a Patent Examiner at the USPTO, John's focus at the firm has been on electrical, mechanical, software, and business methods technologies. John's contributions extend beyond patent application drafting and prosecution through his work with the American Heart Association and the firm’s various initiatives that aim to improve inclusivity of the patent field.

    Mercedes Meyer

    Attorney

    Banner & Witcoff, Ltd.

    Mercedes K. Meyer, Ph.D., represents leading life science and technology companies maintaining an extensive biotechnology and pharmaceutical patent management, prosecution, opinion and due diligence practice. With a doctorate in virology and degree in chemistry, Mercedes has a deep understanding of complex biotechnology and scientific research, which is key for advising life science clients on commercializing and protecting product innovations as well as performing diligence for investing in new technologies, particularly in corporate joint development projects. Mercedes advises on developing patent strategies, managing the intellectual property rights, and making associated investments and acquisitions. Mercedes also handles patent reexaminations and inter partes matters.

  • Contains 2 Component(s)

    This webinar will feature a panel of who’s who of PTAB judges who will address many issues involving AIA proceedings. Whether you represent patent owners or petitioners you will want to attend the program. The judges will address the perceived success rates of petitioners, motions to amend, serial and parallel proceedings, use of secondary considerations evidence, proper use of expert testimony, Sotera stipulations, real parties in interest, discovery requests, Director review and more. The panel will also provide an update on proposed rule changes as well as dos and don’ts of brief writing and oral argument. *PLEASE NOTE that This webinar does not qualify for CLE.*

    This webinar will feature a panel of who’s who of PTAB judges who will address many issues involving AIA proceedings. Whether you represent patent owners or petitioners you will want to attend the program. The judges will address the perceived success rates of petitioners, motions to amend, serial and parallel proceedings, use of secondary considerations evidence, proper use of expert testimony, Sotera stipulations, real parties in interest, discovery requests, Director review and more. The panel will also provide an update on proposed rule changes as well as dos and don’ts of brief writing and oral argument.

    *Please note that this webinar does not qualify for CLE.

    Hon. Melissa Haapala

    Acting Deputy Chief Judge

    United States Patent and Trademark Office Patent Trial and Appeal Board

    The Honorable Melissa A. Haapala is currently serving as Acting Deputy Chief Judge.  She was appointed as Vice Chief Administrative Patent Judge to the Patent Trial and Appeal Board (PTAB) on September 27, 2021. Judge Haapala was appointed as an Administrative Patent Judge on November 17, 2014 and has served as a Senior Lead Administrative Patent Judge and a Lead Administrative Patent Judge. In addition to her executive management and supervisory responsibilities, Judge Haapala has presided over numerous inter partes reviews under the America Invents Act (AIA) and heard hundreds of appeals from adverse decisions of examiners in patent applications. Prior to joining PTAB, she worked as a staff software engineer for Storage Technology, practiced at several law firms, served as Senior Counsel at Sun Microsystems, and as Assistant General Counsel at Ricoh.  Vice Chief Administrative Patent Judge Haapala earned a law degree from the University of Denver College of Law, a Master of Science degree in Computer Information Systems, Management of Technology from Regis University, and a Bachelor of Science degree in Applied Mathematics from the University of Colorado. She is also the mother of three boys.

    Hon. Grace Obermann

    Administrative Patent Judge

    United States Patent and Trademark Office Patent Trial and Appeal Board

    The Honorable Grace Obermann is an Administrative Patent Judge of the Patent Trial and Appeal Board. Appointed to the Board in February of 2012, she has been paneled on approximately 500 trial cases involving patents in every major technical art. Judge Obermann is a former Assistant Director of the U.S. Department of Justice, where she supervised the trial attorneys that litigate patent, copyright, and trademark infringement lawsuits brought by or against the United States. During her tenure, she personally litigated scores of IP lawsuits involving everything from bombs and satellite systems to postage stamp art and insurance products. Judge Obermann holds a J.D. from George Washington University and a B.A. in Chemistry from Rutgers University. She clerked for the Honorable Raymond C. Clevenger, III, of the U.S. Court of Appeals for the Federal Circuit.

    Hon. Michael Tierney

    Vice Chief Patent Judge

    United States Patent and Trademark Office Patent Trial and Appeal Board

    The Honorable Michael P. Tierney serves as Vice Chief Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). Vice Chief Judge Tierney was appointed to the PTAB on July 31, 2000 as an administrative patent judge in the Chemical Section, where he handled ex parte appeals of chemical cases. Judge Tierney joined the USPTO as a patent examiner, where he primarily examined applications for chemical compositions. Since being appointed as an administrative patent judge, Judge Tierney worked as a member of the Interference Trial Section, where he worked on interferences, reexaminations, and supervised two patent attorneys working on ex parte appeals. As part of the USPTO implementation of the America Invents Act (AIA), Judge Tierney led the PTAB’s comprehensive effort on trial rulemaking. He worked closely with USPTO executive officials, trial judges, the patent community, and other members of the public to develop the trial rules and has given numerous presentations to educate the patent community on the statutory provisions, proposed rules, and final rules for the AIA administrative trials. Prior to his appointment to the PTAB, Judge Tierney served as an associate at Morgan, Lewis & Bockius, LLP, where his practice concentrated on patent litigation, opinions, and prosecution. Judge Tierney received both a Juris Doctor degree and a Bachelor of Science degree in Chemical Engineering from the University of Washington.

    Todd Walters

    Shareholder

    Buchanan Ingersoll & Rooney PC

    Todd Walters is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice-Chair of the Post-Grant Practice Committee of the Intellectual Property Owners Association (IPO), a past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and a past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. Todd was named the Best Lawyers ® 2020 Patent Law “Lawyer of the Year” in Washington, D.C. 

  • Contains 9 Component(s), Includes Credits

    This webinar will provide a recap of many of the key trademark cases from the Trademark Trial and Appeal Board and the Federal Circuit in 2023, highlighting decisions regarding failure to function as a trademark, use in commerce, standing, and more.

    This webinar will provide a recap of many of the key trademark cases from the Trademark Trial and Appeal Board and the Federal Circuit in 2023, highlighting decisions regarding failure to function as a trademark, use in commerce, standing, and more.

    Lara Ameri

    Associate

    Ropes & Gray LLP

    Lara Ameri is an associate in the intellectual property litigation group. Lara has a wide-ranging IP litigation practice that includes patent, copyright, trademark, false advertising, and trade secret matters across a variety of fields including wireless technology and telecommunications, e-commerce, software, retail, and data storage. Lara has experience in district court litigation from pre-suit analysis through trial preparation, including drafting pleadings, summary judgment motions, and briefs, preparing for fact and expert witness depositions, and assisting with damages assessments. Lara also has an active pro bono practice in which she works with clients to obtain asylum. 

    David Armendariz

    Senior Counsel

    Pirkey Barber

    David Armendariz practices trademark and copyright law with a primary focus on litigation and policing. David represents clients in contentious matters before the U.S. Patent & Trademark Office and federal courts throughout the country. His experience includes four years with Vinson & Elkins LLP. Before entering private practice, David served as a law clerk to the Honorable Debra H. Lehrmann on the Supreme Court of Texas. David earned his J.D. with High Honors from The University of Texas School of Law, where he was a Chancellor. David also served as Articles Editor for the Texas Law Review and was a member of the Order of the Coif.

    Peter M. Brody

    Partner

    Ropes & Gray LLP

    Peter Brody has been successfully litigating intellectual property cases and other complex disputes in federal and state courts across the United States for over 30 years. A member and former chair of Ropes & Gray’s intellectual property litigation group, Peter has litigated every type of IP case –patent, copyright, trade secret, trademark, and false advertising - as well as a wide range of constitutional, administrative, and contract disputes. Peter also has substantial experience in alcoholic beverage laws and regulations. In addition to his trial and appellate practice, Peter has served as lead counsel in numerous domestic and international arbitrations, as well as hearings and proceedings before federal and state administrative agencies. Peter’s broad-based litigation experience enables him to see the big picture and to present complicated and technical matters in a clear and easy to understand manner.

    Jon Jekel

    Senior Associate

    Pillsbury Winthrop Shaw Pittman LLP

    Jon Jekel is an attorney with Pillsbury Winthrop Shaw Pittman LLP and author in California, where he advises clients on a wide variety of domestic and international copyright, trademark, trade secret, patent, data privacy, and business-related matters. In his free time, he writes science fiction, practices yoga, rides a Peloton, kayaks around San Diego, builds furniture, and collect LPs.

  • Contains 9 Component(s), Includes Credits

    This webinar will address major relevant developments in generative artificial intelligence, such as ChatGPT, as related to patent prosecution. The panel will discuss some recent takeaways from case law, developments in AI tools, and practice tips for attorneys looking to begin implementing AI tools in their everyday work. In particular, the panel will continue a discussion started at the IPO Annual Meeting regarding the proper role of generative AI in prosecution, as opposed to “classic” AI approaches or human drafting.

    This webinar will address major relevant developments in generative artificial intelligence, such as ChatGPT, as related to patent prosecution. The panel will discuss some recent takeaways from case law, developments in AI tools, and practice tips for attorneys looking to begin implementing AI tools in their everyday work. In particular, the panel will continue a discussion started at the IPO Annual Meeting regarding the proper role of generative AI in prosecution, as opposed to “classic” AI approaches or human drafting.

    Joshua Davenport

    Attorney

    Banner Witcoff, Ltd.

    Joshua Davenport represents clients in a variety of intellectual property matters, including patent prosecution, litigation, and counseling. As an electrical engineer with expertise in nuanced industries, including cellular networks, green energy, video games, finance infrastructure, carrier networking, and television broadcast, his practice focuses on applying the law to complex technical issues, particularly in PTAB practice where he was recognized by Managing Intellectual Property magazine among the top-50 filers in inter partes review petitions. Joshua has a wide range of experience with emerging technology, serving a secondment as a patent portfolio manager with a Fortune 500 company managing an extensive machine-learning portfolio, presenting several CLE talks on generative AI issues, and even applying machine-learning modeling techniques outside work for many years in his analysis as co-host of a major college football podcast. 

    Ann McCrackin

    Adjunct Professor

    UNH Franklin Pierce School of Law

    Ann McCrackin is an expert in patent automation. She combines her extensive patent practice experience, deep insights in automation, and a passion for teaching to enhance the efficiency and quality of work for patent attorneys. With over 25 years in the field, she honed her patent prosecution skills at Schwegman, Lundberg & Woessner, PA. As the President of Black Hills IP, an IP docketing and AI/automation company, Ann dedicated 11 years to the integration of innovative technologies in legal practices. In her role as an educator, she has shared her knowledge of patent prosecution and the evolving role of technology in the practice with hundreds of students at UNH Franklin Pierce School of Law. Ann's expertise is evident in her ability to augment attorneys' legal skills with technology for optimal results. She is a firm believer in the strategic use of the right tool for the right task and recognizes that sometimes the most effective tool is still the human mind itself.

    Hersh Mehta

    Senior IP Litigation Counsel

    Hewlett Packard Enterprise

    Hersh Mehta litigates and tries patent cases throughout the country. He has experience before the Patent Trial and Appeal Board, the US International Trade Commission, the US Court of Appeals for the Federal Circuit, and federal district courts in California, Delaware, Illinois, Michigan, New York, Texas, Virginia, Wisconsin, and the District of Delaware.

    Ronald J. Ventola II, Esq.

    Counsel

    Panitch Schwarze Belisario & Nadel, LLP

    Ron Ventola is well versed in a variety of technologies, having prosecuted and advised on patents for industrial equipment, medical devices, manufacturing methods, tools, support structures, automotive components, devices and compounds for automobile repair and maintenance, wetlands restoration equipment, computer software, furniture, exercise equipment, and other mechanical devices. He also counsels clients on patent clearance and licensing and prepares agreements for both outbound and inbound assignment and licensing of patents and know-how. Ron represents and counsels clients in litigation matters and pre-litigation disputes, including disputes involving allegations of patent infringement, copyright infringement, and breach of agreements involving intellectual property.  

  • Contains 9 Component(s), Includes Credits

    This webinar will explore the evolving landscape of pharmaceutical patents, focusing on key issues facing the industry. Topics include emerging jurisprudence concerning induced infringement based on prescribing information, and challenges and strategies related to validity, including written description, enablement, and obviousness. Additionally, speakers will examine the latest USPTO guidance concerning the intersection of inventorship and AI, and delve into issues impacting patent term, in particular double patenting and continuation practice. Finally, panelists will provide an update on issues to be aware of concerning listing patents in FDA’s Orange Book.

    This webinar will explore the evolving landscape of pharmaceutical patents, focusing on key issues facing the industry. Topics include emerging jurisprudence concerning induced infringement based on prescribing information, and challenges and strategies related to validity, including written description, enablement, and obviousness. Additionally, speakers will examine the latest USPTO guidance concerning the intersection of inventorship and AI, and delve into issues impacting patent term, in particular double patenting and continuation practice. Finally, panelists will provide an update on issues to be aware of concerning listing patents in FDA’s Orange Book.

    Renée Fuller

    Senior Corporate Counsel

    Bristol Myers Squibb Company

    Renée Fuller is Senior Corporate Counsel in the Innovation Law Group at BMS and provides strategic counseling on all facets of patent and innovation law. Prior to BMS, Renée worked in-house at MyoKardia, Inc. and in private practice at Wolf, Greenfield & Sacks, where she focused on global patent procurement and strategy, transactions, diligence, and contested matters. Renée earned a B.S. in Chemistry from UNC-Chapel Hill, Ph.D. in Chemistry and Biomedical Engineering from MIT, and J.D. from Suffolk University Law School and completed a postdoctoral fellowship in Chemistry at Harvard University.

    James Sanner

    Senior Associate

    Leydig, Voit & Mayer, Ltd.

    James Sanner is a senior associate at Leydig, Voit & Mayer, Ltd. in Chicago. James focuses his practice on patent litigation, including Hatch-Waxman litigation, and also handles contested proceedings before the Patent Trial and Appeal Board and International Trade Commission. James holds a J.D. from the University of Illinois College of Law, a master's degree in Microbiology and Molecular Genetics from Rutgers University, and a bachelor's degree in Molecular and Cellular Biology from the University of Illinois at Urbana-Champaign.

    Steven H. Sklar

    Shareholder

    Leydig, Voit & Mayer, Ltd.

    Steven H. Sklar is a shareholder with Leydig, Voit & Mayer, Ltd. Steve has more than 27 years of experience representing clients in patent litigation in the pharmaceutical and biotechnology fields, in particular Hatch-Waxman litigation. Steve regularly advises on clients on issues of infringement, validity, and enforcement of pharmaceutical patents.  His many successes include a recent victory, both at trial and on appeal to the Federal Circuit, in litigation involving a leading opioid addiction treatment drug product. Steve graduated magna cum laude with a B.S. in Chemical Engineering from Washington University in St. Louis and earned his law degree cum laude from the Northwestern University School of Law.

  • Contains 9 Component(s), Includes Credits Recorded On: 02/01/2024

    On February 5, an en banc Federal Circuit will consider whether the current design patent obviousness test is overly rigid and should be revised. The Court has issued a series of detailed questions to be considered and this forthcoming decision could fundamentally change the issue of design patent obviousness as well as the perceived value of design patent protection. In preparation for the argument, this webinar will discuss an overview of the issues to be considered, a detailed dive into the United States’ brief and the amicus brief from Apple (both of which are expected to be important to the Court), and consideration of how this decision could affect the design patent obviousness question at the PTAB and the district court level in the future. The panel will also discuss details about what to expect during the oral argument. After the webinar, audience members will be armed with the knowledge they need to get the most out of the upcoming oral argument.

    On February 5, an en banc Federal Circuit will consider whether the current design patent obviousness test is overly rigid and should be revised. The Court has issued a series of detailed questions to be considered and this forthcoming decision could fundamentally change the issue of design patent obviousness as well as the perceived value of design patent protection. In preparation for the argument, this webinar will discuss an overview of the issues to be considered, a detailed dive into the United States’ brief and the amicus brief from Apple (both of which are expected to be important to the Court), and consideration of how this decision could affect the design patent obviousness question at the PTAB and the district court level in the future. The panel will also discuss details about what to expect during the oral argument. After the webinar, audience members will be armed with the knowledge they need to get the most out of the upcoming oral argument.

    Elizabeth Ferrill

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner LLP

    Beth Ferrill is a partner in Finnegan’s Washington DC officeShe counsels clients who hold design patents as well as those accused of infringement. Her practice includes prosecution of families of design patents before the USPTO, directing prosecution in foreign countries, arguing appeals before the PTAB, and taking design patent infringement cases through trial in district courtBeth is the recipient of Intellectual Property Owners Association (IPO)’s Carl B. Horton Distinguished Service Award and has been recognized by Intellectual Asset Management Patent 1000 as a leader in patent litigation and transactions in the D.C. area, and nationally for design patents. She is the Editor-in-Chief of Comparative Global Design Law, published by Bloomberg law, leads Finnegan’s veterans pro bono program, and serves as co-chair of Finnegan’s litigation section. 

    Brendan O'Dea

    Partner

    Womble Bond Dickinson

    Brendan O'Dea is a partner at Womble Bond Dickinson with a patent practice focused in the mechanical and electromechanical arts, as well as in industrial designs.  In guiding his clients from their initial concepts to concrete strategies for managing their intellectual property portfolios, Brendan practices at all stages before the U.S. Patent Office, provides legal opinions on patent validity and non-infringement, and advises with regard to commercialization and licensing.  Outside of his work with clients, Brendan teaches a course on patent prosecution in the engineering department at Georgia Tech.  Brendan received his B.S. degree in Mechanical Engineering from Lafayette College and his J.D. degree from Brooklyn Law School. 

    Perry J. Saidman

    Of Counsel

    Saidman DesignLaw Group, LLC

    Perry Saidman is a recognized pioneer in design law. He has more than 40 years of experience providing design protection and enforcement strategiesHis expertise in design patent prosecution issues facilitates resolution of difficult or unusual cases when it comes to enforcement. As a prolific author and speaker, and in his private practice, Perry takes on many seemingly intractable design law issues of the day, including functionality, anticipation, obviousness, infringement and damages. He is very active in bar associations, including the Design Rights Committee of the IPO and AIPLA’s Industrial Designs Committee which he founded in 1989. He has taught Design Law as an adjunct professor at G.W. Law School, and testified before the House Judiciary Committee regarding the auto replacement parts bill. His most recent papers involve the hot button issues of design patent anticipation, the written description requirement under sec. 112, functionality, and determining the article of manufacture under  35  U.S.C.  289.  He also  authors  a  blog  at designlawperspectives.com covering recent design law cases and happenings.

  • Contains 9 Component(s), Includes Credits

    During this webinar, panelists will discuss the guidelines and potential consequences of the proposal. Under Bayh-Dole, universities and other contracting organizations are given rights to intellectual property generated from federally funded research and enabled to license these inventions to private sector partners who can then commercialize them. It includes a “march-in” provision that permits the government, in specific and limited circumstances, to require the patent holder to grant additional licenses to the patented technology.

    The Biden Administration recently unveiled new guidance for exercising march-in rights under the Bayh-Dole Act. Under Bayh-Dole, universities and other contracting organizations are given rights to intellectual property generated from federally funded research and enabled to license these inventions to private sector partners who can then commercialize them. It includes a “march-in” provision that permits the government, in specific and limited circumstances, to require the patent holder to grant additional licenses to the patented technology.

    The proposed framework for the first time includes “reasonableness of the price and other terms at which the product is made available” as a factor agencies can consider. Many in the IP community quickly condemned this proposal as a poison pill for commercializing inventions created through government funded research, hitting universities and startups hardest while also creating problems for companies that traditionally have partnered with those entities to transform early-stage research into commercialized products. Despite the Administration’s linkage of the proposed framework to drug pricing, the proposed guidelines would apply equally to all federal agencies, not just the National Institutes of Health, and thus could affect numerous technology sectors. 

    During this webinar, panelists will discuss the guidelines and potential consequences of the proposal.

    Joseph Allen

    Executive Director

    Bayh-Dole Coalition

    Joseph Allen is Executive Director of the Bayh-Dole Coalition. As a professional staffer on the Senate Judiciary Committee to Sen. Birch Bayh (D-IN), he played a key role in successfully passing the Bayh-Dole Act of 1980 and its subsequent amendments. He later served as the director of the Office of Technology Commercialization at the Department of Commerce, which oversaw the implementation of Bayh-Dole and chaired the Interagency Committee on Technology Transfer.

    Emily Johnson

    Head of IP Policy & Advocacy

    Amgen, Inc.

    Emily Johnson is the Head of IP Policy & Advocacy for Amgen, one of the world’s leading biotechnology companies.  Emily is responsible for influencing the development of sound public policy with respect to IP protections that are important to Amgen’s long-term success. Emily collaborates cross-functionally with Amgen’s IP, litigation, regulatory, antitrust, commercial, and government affairs teams to develop IP policy positions.  She also engages with external trade organizations and government agencies and identifies and develops amicus brief opportunities in cases that raise significant IP issues for Amgen.  Prior to Emily’s policy role, she litigated U.S. and foreign patent disputes, proceedings before the USPTO’s Patent Trial and Appeal Board, and appeals to the Federal Circuit.  Emily had the privilege of clerking for the Honorable Arthur Gajarsa (now retired) at the US Court of Appeals for the Federal Circuit.  Emily chairs the Pharmaceutical & Biotechnology Issues Committee of Intellectual Property Owners Association and serves on the Board of the Federal Circuit Bar Association.     

    Mercedes Meyer

    Attorney

    Banner & Witcoff, Ltd.

    Mercedes K. Meyer, Ph.D., represents leading life science and technology companies maintaining an extensive biotechnology and pharmaceutical patent management, prosecution, opinion and due diligence practice. With a doctorate in virology and degree in chemistry, Mercedes has a deep understanding of complex biotechnology and scientific research, which is key for advising life science clients on commercializing and protecting product innovations as well as performing diligence for investing in new technologies, particularly in corporate joint development projects. Mercedes advises on developing patent strategies, managing the intellectual property rights, and making associated investments and acquisitions. Mercedes also handles patent reexaminations and inter partes matters.

    Corey Salsberg

    Vice President and Global Head of IP Affairs

    Novartis

    Corey Salsberg is Vice President and Global Head of IP Affairs for Novartis, one of the world’s leading biopharmaceutical innovators. He is a globally recognized attorney, strategist and thought leader in the fields of intellectual property (IP) and innovation law and policy. An experienced practitioner and advocate, Corey is a frequent speaker and contributor around the world. His recent engagements include testifying before the United States Senate Judiciary Subcommittee on IP regarding AI and intellectual property (June 2023); public remarks at the USPTO Listening Sessions on AI and Inventorship (April 2023) and USPTO-FDA Collaboration Initiatives (January 2023); testifying before the United States Senate Judiciary Subcommittee on IP on the state of patent eligibility law in the US; public appearances before WIPO, the WHO, and other government and multilateral bodies; and a variety of keynotes and public podcasts. Corey is also proud to be an Officer and Member of the Board of Directors of the Federal Circuit Bar Association, a Member of the Board of Directors of IPO, a Member the Board of Directors of California Lawyers for the Arts, and a founder and member of the Steering Committee of the WIPO-World Economic Forum Inventors Assistance Program. He is featured in the 2021 and 2022 IAM 300, a list of the world's leading IP strategists, and has been named as an IP Corporate Star in Managing IP for each of the last three years.

  • Contains 9 Component(s), Includes Credits Recorded On: 01/24/2024

    A panel of highly experienced patent attorneys from the US, Europe and Japan will discuss recent court decisions on patent enablement, the impact for future decisions, and strategies for addressing enablement in patent applications and litigation. They will provide a brief overview of patent enablement in each country and discuss recent decisions including the US Supreme Court decision in Amgen and the Amgen cases in Europe and Japan. In addition, they will compare and contrast the patent enablement requirements for each country and provide strategies for complying with enablement.

    A panel of highly experienced patent attorneys from the US, Europe and Japan will discuss recent court decisions on patent enablement, the impact for future decisions, and strategies for addressing enablement in patent applications and litigation. They will provide a brief overview of patent enablement in each country and discuss recent decisions including the US Supreme Court decision in Amgen and the Amgen cases in Europe and Japan. In addition, they will compare and contrast the patent enablement requirements for each country and provide strategies for complying with enablement.

    John Augustyn

    Shareholder

    Leydig, Voit & Mayer, Ltd.

    John Augustyn is a shareholder in Leydig’s Chicago office.  He successfully represents clients in high stakes litigation, opinions, licensing, due diligence, and prosecution. In the Amgen, Inc. v. Sanofi case at the US Supreme Court.  John was Counsel for Amicus Curiae, Intellectual Property Law Association of Chicago (IPLAC).  He has provided over 30 CLE seminars for attorneys, has authored numerous articles and chapters for books, and has appeared on multiple television and radio programs.  In the evenings, John has taught several law school courses.  Prior to attending law school, he worked in engineering and management at two Fortune 100 companies.  John has received several honors including Best Lawyers, Super lawyers, IAM Patent 1000, and Fellow of Litigation Counsel of America.  For more info, see https://www.leydig.com/professionals/john-augustyn/

    Cass Dottridge

    In-House Counsel

    Cargill, Inc.

    Cass Dottridge has more than twenty-five years’ experience in intellectual property, with qualifications to practice in three jurisdictions (the UK, Europe and the US). She worked as an Examiner in the UK, and as an attorney in private practice, before moving to Belgium to join global food company Cargill as in-house counsel. She is now part of the IP Leadership Team for Cargill based in Minneapolis, where she works closely with both business and R&D leaders to drive growth though innovation. She was recently appointed co-chair of the IPO’s European Practice Committee.

    Toshinao Yamazaki

    Group Leader for Corporate Group IP Department

    Sumitomo Chemical

    Toshinao Yamazaki has had a long, successful career in IP, starting in 1999 as Patent Examiner in the field of chemistry at the JPO; the International Division of JPO as a coordinator, responsible for Japan US EP Trilateral Cooperation and IP 5; Visiting Researcher at Department of Aerospace Engineering of UCLA; Japan External Trade Organization (at Dusseldorf office in Germany); International Policy Division of JPO, as a negotiator, responsible for EPA; Deputy Director in Policy Planning and Research Division of JPO; Administrative judge in 25 the department (of Board of Appeal of JPO); Director in Information Technology Management Department of JPO; Director in International Policy Division of JPO, responsible for EPA, WTO and WIPO; Director in Information Economy Division of Ministry of Economy, Trade and Industry and currently is with the Intellectual Property Department of Sumitomo Chemical.