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Contains 9 Component(s), Includes Credits
Protecting company innovations is a critical part of any organization's long-term success. This webinar will examine how employee non-compete agreements fit into a trade secret management program following the rise and apparent fall of the FTC's ban on non-compete clauses. Areas that will be covered include: backdrop to FTC's non-compete ban; the FTC's rule; and the litigations invalidating the FTC's rule; the current state of restrictions and impediments to reliance on employee non-compete agreements ; other steps to prevent employee misuse of your client's trade secrets.
Protecting company innovations is a critical part of any organization's long-term success. This webinar will examine how employee non-compete agreements fit into a trade secret management program following the rise and apparent fall of the FTC's ban on non-compete clauses. Areas that will be covered include:
- Backdrop to FTC's non-compete ban; the FTC's rule; and the litigations invalidating the FTC's rule
- The current state of restrictions and impediments to reliance on employee non-compete agreements
- Other steps to prevent employee misuse of your client's trade secrets.
Kenneth Corsello
Trade Secrets Counsel
IBM Corp.
Ken Corsello is IBM’s US Trade Secrets counsel, where he also focuses on various other IP issues, including drafting and negotiating agreements for patent transactions. Prior to joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C. He has a B.S. from SUNY Stony Brook, J.D. from Catholic University, and LL.M. from George Washington University. A frequent speaker on trade secrets issues, Ken was chair of IPO’s Trade Secrets committee for 6 years and the principal drafter of IPO’s 2023 comments in response to the FTC’s proposed rule banning non-compete agreements.
Robert Surette
Shareholder & President
McAndrews, Held & Malloy, Ltd.
Robert Surrette is a Shareholder and serves as President of McAndrews. He focuses his practice on the resolution of intellectual property and technology-related disputes with an emphasis on patent, trademark, trade secret and trade dress litigation. For the last 20 years, Bob has counseled a leading global medical device manufacturer on numerous litigation and transactional matters.
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Ethics for IP Practitioners: Case Law, Conflicts, Avoiding Inequitable Conduct, and More (RECORDING)
This webinar will review recent case law from various jurisdictions and tribunals involving legal ethics issues for both outside and in-house counsel.
This webinar will review recent case law from various jurisdictions and tribunals involving legal ethics issues for both outside and in-house counsel. After completing this session, participants will be able to:
- Spot ethical issues arising in patent practice through an exploration of case law
- Identify and ameliorate the potential risks associated with ethical issues
- Proactively avoid potential conflict of interest problems
- Understand the most recent jurisprudence on ethical issues such as inequitable conduct
Kirk Goodwin
Associate General Counsel, IP
Tektronix
Kirk Goodwin leads Tektronix's world-class, high-tech Innovation IP and cybersecurity legal team.
Gina Johnson
Chief Legal Officer
The Ridge Wallet, LLC
Gina Johnson is the Chief Legal Officer of The Ridge Wallet, LLC, where she manages all litigation and legal issues for the business. At Ridge, Gina is currently overseeing and actively appearing in several district court litigations in which Ridge alleges patent infringement, copyright infringement, and other intellectual property violations by domestic and foreign infringers in the compact wallet market. Most recently, Gina led a team that secured a General Exclusion Order, Limited Exclusion Orders, Cease and Desist Orders, and 100% bond at the International Trade Commission. Prior to joining Ridge in May of 2023, Gina was a partner in the patent litigation group at the law firm of K&L Gates LLP, where she litigated complex patent disputes in various district courts and at the International Trade Commission.
Sanjay Murthy
Shareholder
McAndrews, Held & Malloy, Ltd.
Sanjay Murthy is a nationally recognized trial attorney who has been involved in more than 15 trials. He has deep experience representing leading life science and technology companies in federal district courts, before the Patent Trial and Appeal Board, and in Section 337 investigations in the U.S. International Trade Commission (ITC). In addition to an active litigation practice, he manages patent portfolios for several leading pharmaceutical and medical device companies. He also leverages his trial experience to assist his clients with freedom-to-operate matters, due diligence investigations, patent portfolio audits, and licensing and collaboration transactions.
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Contains 10 Component(s), Includes Credits
This webinar will explore the USPTO guidance on inventorship of AI-assisted inventions and in what situations a natural person can be considered to have made a significant contribution to the invention. The panel will look at potential issues that could arise in a litigation context, and compare guidance from other jurisdictions. The panel will also provide strategies and tips that could help stakeholders navigate how to properly determine inventorship for different types of inventions produced using AI as a tool.
This webinar will explore the USPTO guidance on inventorship of AI-assisted inventions and in what situations a natural person can be considered to have made a significant contribution to the invention. The panel will look at potential issues that could arise in a litigation context, and compare guidance from other jurisdictions. The panel will also provide strategies and tips that could help stakeholders navigate how to properly determine inventorship for different types of inventions produced using AI as a tool.
Eric Arnell
Shareholder
Leydig, Voit & Mayer, Ltd.
Eric Arnell is a Shareholder at Leydig, Voit and Mayer, based out of Frankfurt, Germany, where he predominantly advocates for the intellectual property interests of European-based clients doing business in the United States. Eric’s practice has included patent preparation and prosecution, performing patentability and freedom to operate investigations, and representing clients before the U.S. Patent Trial and Appeal Board and U.S. Federal Courts. Eric obtained his JD and BS in Electrical Engineering from the University of Texas at Austin.
Dr. Malte Köllner
European Patent Attorney
Köllner & Partner
Malte Köllner is a German and European patent attorney. Recently, Malte triggered the DABUS project, naming an artificial intelligence named DABUS openly as inventor for an invention. The aim was to put the topic of AI-generated inventions on the agenda of patent offices and courts. He has authored and co-authored numerous publications on intellectual property, among others a handbook for the PCT (patent cooperation treaty). He is editor-in-chief of the scientific journal of the German chamber of patent attorneys, the leading journal on patent law in German speaking countries.
Naman Seth (Moderator)
Associate
Leydig, Voit & Mayer, Ltd.
Naman Seth is an associate with Leydig, Voit & Mayer. He has 8 years of experience representing clients in patent prosecution, primarily in the electrical, software, mechanical, chemical, and biomedical technology areas. He has also been part of litigation support teams collaborating closely with client technical experts to craft robust non-infringement and invalidity arguments. He is studying the growing impact of Artificial Intelligence in the US patent landscape. Naman graduated with a B.S. in Electrical and Computer Engineering from Carnegie Mellon University and earned his law degree from Fordham University.
Lisa Ulrich
Counsel, Intellectual Property Law
IBM Corp.
Lisa Ulrich works as an intellectual property attorney for IBM in North Castle, NY. Ms. Ulrich’s body of work encompasses standard-essential patents, policy issues related to artificial intelligence, and mergers and acquisitions. Prior to joining IBM, Ms. Ulrich was a patent litigator and prosecutor for an intellectual property law firm in NYC. Ms. Ulrich serves as co-chair of IPO’s Standards Setting Committee and was a former chair of IPO’s Trademark Office Practice Committee.
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Contains 7 Component(s), Includes Credits Recorded On: 08/21/2024
As we approach the one-year anniversary of the Federal Circuit’s landmark opinion in In re Cellect, this webinar will provide an in-depth review of the decision, analyzing the arguments from both sides and its broader implications on patent prosecution strategies. Our panel of experts will delve into the challenges posed by obviousness-type double patenting (ODP), including how these challenges affect jointly owned assets. The discussion will highlight practical strategies for mitigating ODP risks through careful patent portfolio management. Speakers will also explore the recent Federal Circuit decision in Allergan USA v. MSN Labs, issued on August 13, 2024, which appears to narrow the impact of Cellect, offering fresh perspectives on how this ruling may influence the evolving legal landscape of ODP. This timely discussion will equip attendees with valuable insights for navigating these ongoing challenges in patent law.
As we approach the one-year anniversary of the Federal Circuit’s landmark opinion in In re Cellect, this webinar will provide an in-depth review of the decision, analyzing the arguments from both sides and its broader implications on patent prosecution strategies. Our panel of experts will delve into the challenges posed by obviousness-type double patenting (ODP), including how these challenges affect jointly owned assets. The discussion will highlight practical strategies for mitigating ODP risks through careful patent portfolio management. Speakers will also explore the recent Federal Circuit decision in Allergan USA v. MSN Labs, issued on August 13, 2024, which appears to narrow the impact of Cellect, offering fresh perspectives on how this ruling may influence the evolving legal landscape of ODP. This timely discussion will equip attendees with valuable insights for navigating these ongoing challenges in patent law.
Paul Berghoff
Founder
McDonnell Boehnen Hulbert & Berghoff LLP
Paul Berghoff, founder of McDonnell Boehnen Hulbert Berghoff LLP, has three decades of experience as lead trial counsel in complex patent litigation – both jury and bench trials and PTAB proceedings – concentrating in litigation involving pharmaceuticals, medical devices, biotechnology, electronics, and software. He has successfully tried scores of patent cases and has successfully argued dozens of times before he US Court of Appeals for the Federal Circuit. He services as Chair of the firm’s Litigation & Appeals Practice Group. He is Vice-Chair of IPO’s Amicus Brief Committee.
Gary Gershik
Partner
Amster, Rothstein & Ebenstein LLP
Gary J. Gershik specializes in global patent procurement and enforcement, serving a range of clients from academic institutions to Fortune 500 companies. His expertise spans biotechnology, chemistry, and pharmaceuticals. He manages intellectual property and regulatory strategies, provides opinions on patentability and infringement, and has extensive experience in drafting and prosecuting patents domestically and internationally. Gary also handles litigation in U.S. Federal Courts and administrative proceedings before the U.S. Patent and Trademark Office, including Inter-Partes Review (IPR) and Post-Grant Review (PGR), as well as international patent offices.
Jennifer Richie
IP Attorney
Leydig, Voit & Mayer, Ltd.
Jennifer (Jen) Richie is an intellectual property attorney at Leydig, Voit & Mayer, Ltd. Jen’s practice focuses on patent prosecution, due diligence, and intellectual property transactions. Her technical areas in patent prosecution include biotechnology, biomedical compositions and devices, and the chemical arts.
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Contains 10 Component(s), Includes Credits
This panel will include UK patent attorneys from four firms who have first-hand experience of UPC litigation who can provide insight into the opportunities offered by Europe’s new litigation regime.
Patent litigation in Europe has undergone a dramatic change with the advent of the Unified Patent Court (“UPC”). Currently around 25% of granted European patents are resulting in a Unitary Patent and there are over 100 Unitary Patents being litigated at the UPC. Injunctions (including preliminary injunctions), damages, and costs are available within rapid timescales, with first instance decisions and appeals within 12 to 15 months.
Eighty-five percent of UPC representatives are patent attorneys and the United Kingdom has over 1,000 registered UPC representatives – the second largest number in Europe. Many of them represent U.S. clients before the UPC. This panel will include UK patent attorneys from four firms who have first-hand experience of UPC litigation who can provide insight into the opportunities offered by Europe’s new litigation regime.
Simon Curtis
Partner-Patent Attorney
Potter Clarkson
Simon Curtis is a Partner in the Chemistry practice at Potter Clarkson, working with corporates and SMEs to develop and build IP strategies to support their growing businesses. He is a frequent and accomplished advocate before the European Patent Office’s Opposition Divisions and Boards of Appeal and is able to apply his experience to present dependable advice on patent validity. He is also a certified UK Higher Courts Litigator and has advised clients in patent litigation proceedings before the UK High Court and Court of Appeal, including in cases with multi-jurisdictional aspects and involving interplays with concurrent European Patent Office proceedings.
Laura Ramsay
Partner & Patent Attorney
Dehns
Laura Ramsay is a European and UK Patent Attorney and an Authorized Representative before the Unified Patent Court (UPC). In 2003 she graduated from the University of Cambridge with a First Class MSc in Physics and Materials Science, after which she joined Dehns and became a Partner of the firm in 2013. Laura is currently representing a multinational medical device company in a revocation action at the UPC central division in Paris, while also handling three related EPO oppositions for the same patent family. She is also involved in the related infringement action at the Mannheim local division and related matters at the UPC Court of Appeal. She is well-accustomed to working as part of a global litigation team. She previously acted for AutoStore AS multiple times at EPO opposition and appeal hearings during their dispute with Ocado Innovation. Although the parties have since reached a settlement, she was the defendant’s UPC representative named at the Nordic-Baltic regional division and observed the subsequent case taken to the Court of Appeal regarding public access to written pleadings and evidence. Laura draws upon her experience of more than 20 years in regularly attacking and defending patents during EPO opposition and appeal proceedings. Clients value her strategic thinking and clear-cut advocacy.
Pamela Tuxworth
Partner, Patent Litigator
J A Kemp
Pamela Tuxworth is a European and UK Patent Attorney based in the J A Kemp Oxford office. She has more than 20 years’ professional experience at J A Kemp. Pamela handles work across a broad range of biotechnology and life sciences subject matter, including antibodies and their uses, oncolytic viruses, vaccines, peptide vaccines, therapeutic RNAs, stem cells, personalized medicine, diagnostics and next generation sequencing. Pamela has worked on several high profile biotechnology drugs from inception to beyond commercialization, working with inventors in drafting patent applications, prosecuting worldwide patent portfolios, carrying out freedom to operate searches, defending patents before at the European Patent Office, and clearing the way by opposing competitors’ patents. Pamela has also been involved in due diligence leading to public listing or acquisition of biotechnology companies. Pamela’s client base includes large pharmaceutical companies, biotechnology companies and academic institutions, located in the UK, US, Japan and elsewhere. Pamela is a regular visitor to Japan. Pamela joined J A Kemp in 1999 and became a partner in 2008.
Daniel Wise
Partner
Carpmaels & Ransford
Daniel Wise led the team that filed the first ever revocation action at the UPC, part of the long-running global litigation between Sanofi and Amgen relating to PCSK9 antibodies. Outside of his UPC work, Daniel specializes in EPO oppositions and appeals in the biotech and medicinal chemistry fields, and has supported national patent litigations across Europe. He also works on strategic prosecution strategies for the EPO and beyond, and is a regular speaker on EU Supplementary Protection Certificate (SPC) law and practice.
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Contains 6 Component(s), Includes Credits
This webinar will address the recent changes to U.S. design patent practitioner designations and practitioner application requirements, as well as the possible implications to current trademark, patent, and copyright practices. Speakers will look at how the recent rule changes may open the patent bar to a diverse pool of practitioners and look at jurisdictions outside the U.S. to see how they handle such requirements.
This webinar will address the recent changes to U.S. design patent practitioner designations and practitioner application requirements, as well as the possible implications to current trademark, patent, and copyright practices. Speakers will look at how the recent rule changes may open the patent bar to a diverse pool of practitioners and look at jurisdictions outside the U.S. to see how they handle such requirements.
*This webinar is sponsored by Leydig, Voit & Mayer, LTD.
Sarah Burstein
Professor of Law
Chicago-Kent College of Law
Sarah (Fackrell) Burstein is a Professor of Law at Chicago-Kent College of Law. She is an internationally-recognized expert in design patent law. Prior to becoming a law professor, she worked as a federal law clerk and as an IP associate at Kirkland & Ellis LLP. She has a law degree from the University of Chicago and a B.A. in Art & Design from Iowa State University.
Barbara K. Müller
Attorney at Law & Partner
Wild Schnyder
Barbara K. Müller is a partner of Wild Schnyder AG, one of the oldest and most prestigious IP boutique law firm of Switzerland. After her education in Switzerland, Barbara worked in Austria and the US. Barbara holds an LL.M. degree of Northwestern University in Chicago and Dr. of the Zurich university. Barbara is active in several areas of intellectual property law, including trademark, design, and copyright law. She advises and litigates for domestic and foreign clients. Barbara has a broad experience in strategic consulting, contractual work and litigation. In addition to her practical work, Barbara publishes regularly, among other things on trademarks in the njus.ch book series and as co-editor and co-author of the copyright commentary in the Stämpflis Handkommentare series. Barbara is an active member of INTA.
Claudia Stangle
Partner
Leydig, Voit & Mayer, LTD.
Claudia Stangle is a partner at Leydig, Voit & Mayer in Chicago with over 25 years of experience and specializes in trademarks, trade dress, copyrights, false and comparative advertising, Internet law, trade secrets, licensing, and right of publicity. Ms. Stangle has significant experience in complex inter partes proceedings before the TTAB, has represented clients in federal courts around the U.S. including in the Ninth Circuit, and has won numerous UDRP proceedings. She also has experience in patent infringement and trade secret litigation. She represents clients in a wide variety of industries including in the life sciences, automotive, insurance, reinsurance, financial, car rental, commercial real estate, software, AI, consumer and luxury goods, entertainment, cannabis, alcoholic beverages, and industrial products space. Ms. Stangle currently serves as the Chair of the Recruiting Committee and was previously Chair of the DEI committee and a member of her firm’s Board of Directors. She is also Vice-Chair of IPO’s D&I Committee. Ms. Stangle is a frequent guest lecturer speaking about a variety of intellectual property topics, has been a regional oral argument judge for the Saul Lefkowitz Moot Court Competition and has served as an Adjunct Professor at Widener Law School teaching law students about copyrights and trademarks. She has three boys and loves to run and bike in her spare time.
J. Bradley White
Partner & Chair of the National IP Department
Osler
J. Bradley White, a partner and Chair of Osler’s National Intellectual Property Department, heads the firm’s patent litigation and patent/design prosecution practices. Brad has significant expertise in complex patent litigation, particularly in the pharmaceutical sector, where he has adeptly navigated proceedings under the Patented Medicines (Notice of Compliance) Regulations. His leadership at Osler and his impact on the industry are evident in the successful outcomes he has achieved for his clients and the respect he commands among his peers. Brad’s strategic acumen in enforcing patent rights is well-regarded, as is his ability to coordinate and manage prosecution and litigation strategies across multiple jurisdictions. His appearances as lead counsel include the Federal Court of Appeal, Federal Court, and Ontario Superior Court. Moreover, his international credentials are solidified by his role as worldwide coordinating litigation and IP counsel before the US International Trade Commission. As a Registered Canadian Patent Agent, and to practice before the USPTO, Brad’s proficiency extends to both Canadian and foreign patent and industrial design prosecution. His services encompass strategic IP portfolio reviews, patentability assessments, and the provision of opinions on patent infringement and validity. Clients benefit from his worldwide patent portfolio management and enforcement advice. His editorial insights have also been featured in the Canadian Patent Reporter, where he served as a past associate editor.
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Contains 11 Component(s), Includes Credits
On May 21, 2024, the Federal Circuit sitting en banc issued its opinion in LKQ v. GM, striking down the forty-plus year-old Rosen-Durling test for design patent obviousness, and announcing a new framework based on Graham v. John Deere. This webinar will explore where stakeholders go from here. The discussion will include a comparison of how the Graham analysis has affected utility patent determinations of obviousness, and what this could mean for design patent applications during prosecution. Panelists will also consider how the new framework may affect design patent litigation, including claim construction, discovery, summary judgment, and trial. Finally, speakers will consider whether a new system for protecting designs could offer an alternative to the uncertainties created by the LKQ decision.
On May 21, 2024, the Federal Circuit sitting en banc issued its opinion in LKQ v. GM, striking down the forty-plus year-old Rosen-Durling test for design patent obviousness, and announcing a new framework based on Graham v. John Deere. This webinar will explore where stakeholders go from here. The discussion will include a comparison of how the Graham analysis has affected utility patent determinations of obviousness, and what this could mean for design patent applications during prosecution. Panelists will also consider how the new framework may affect design patent litigation, including claim construction, discovery, summary judgment, and trial. Finally, speakers will consider whether a new system for protecting designs could offer an alternative to the uncertainties created by the LKQ decision.
Elizabeth Ferrill
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Beth Ferrill is a partner in Finnegan’s Washington DC office. She 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 court. Beth 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 strategies. His 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.
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Contains 11 Component(s), Includes Credits
This panel will discuss issues for in-house counsel to consider in guiding business teams interested in leveraging new generative AI tools. Attendees will leave with a checklist for establishing a considered approach to using AI within their company.
This panel will discuss issues for in-house counsel to consider in guiding business teams interested in leveraging new generative AI tools. Topics to be addressed include:
- Potential copyright infringement liability risks
- Copyright ownership considerations for AI-generated output
- Data privacy considerations
- Concerns around accuracy and bias
- Transparency and disclosure requirements
- Insurance coverage considerations
- Structural/procedural frameworks for corporate governance around use of AI.
Attendees will leave with a checklist for establishing a considered approach to using AI within their company.
Anna Chauvet
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Anna Chauvet leads Finnegan’s copyright practice and leverages significant experience in tackling cutting-edge issues relating to copyright. She has testified before the U.S. Copyright Office regarding artificial intelligence and copyright, and advised on potential legislative efforts regarding copyright and copyright-adjacent issues. Prior to rejoining Finnegan, Anna served as associate general counsel at the U.S. Copyright Office, where she advised on litigation strategy to inform the U.S. government’s views regarding novel questions of copyright law pending before the U.S. Supreme Court. After that, she served as vice president of public policy at the National Association of Broadcasters (NAB), where she was integral to policy development, advocacy strategies, and reaching consensus among members and congressional offices in the areas of artificial intelligence, music licensing, and antitrust. Anna holds an undergraduate degree from the University of California, Berkeley and a J.D. from American University, Washington College of Law.
Sean Park
Senior Associate
Day Pitney LLP
Woo Sin "Sean" Park is a senior associate at Day Pitney LLP. Sean helps clients with all aspects of litigation related to patent, copyright, trademark and trade secret matters. His works involve a number of subject matters, including toys, video games, artificial intelligence, websites, life science devices, aerospace components, wireless communication devices and software. He has briefed and argued personal jurisdiction, venue, intellectual property validity/invalidity, claim construction, infringement/non-infringement, fee shifting and other issues. Sean serves as adjunct faculty at the University of Connecticut School of Business, where he developed and teaches a class on the legal and ethical environment of Name, Image, and Likeness (NIL) representation. In the course, he covers the role of contract law, data privacy and integrity, and intellectual property laws, as well as laws regulating false advertising and celebrity endorsements in relation to NIL representation.
Edward Ryan
Associate Partner
Tutunjian & Bitetto, P.C.
Ed Ryan is an associate partner at Tutunjian & Bitetto, P.C., in Long Island, NY. His work as a patent prosecutor in neural network technologies and other forms of artificial intelligence systems gives him a valuable perspective on how these systems operate. Ed has spoken and written on the topic of AI-generated artwork previously, following the developments of case law and the Copyright Office’s position on the subject. He is now a member of the IPO’s Artificial Intelligence & New Emerging Technologies committee, and is working with the policy sub-committee to advance IPO members’ interests as this new body of law advances.
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Contains 9 Component(s), Includes Credits
In this session, speakers will provide an update on various harmonization areas, such as global assignment, e-signatures, and artificial intelligence (AI). Global assignment relates to the creation of a recordable IP assignment form, along with the institution of a central depository where the form could be filed and recognized by multiple jurisdictions. E-signature efforts explore legal pathways for the IP Offices to broadly accept use of electronic signatures by applicants provided that certain minimum requirements are met. Finally, AI harmonization efforts aspire towards common treatment of AI-related inventions and are furthermore directed to using AI to facilitate the patent grant process.
The IP5 Industry group continues to engage with the IP5 offices in efforts to improve efficiency and reduce costs by making national processes around the world more uniform. In this session, speakers will provide an update on various harmonization areas, such as global assignment, e-signatures, and artificial intelligence (AI). Global assignment relates to the creation of a recordable IP assignment form, along with the institution of a central depository where the form could be filed and recognized by multiple jurisdictions. E-signature efforts explore legal pathways for the IP Offices to broadly accept use of electronic signatures by applicants provided that certain minimum requirements are met. Finally, AI harmonization efforts aspire towards common treatment of AI-related inventions and are furthermore directed to using AI to facilitate the patent grant process.
Jessica Patterson
Senior Advisor and Director for International Work Sharing
Office of International Patent Cooperation
Jessica Patterson, as Senior Advisor and Director for International Work Sharing in the Office of International Patent Cooperation (OIPC), coordinates Patents’ international relations activities and leads work sharing and harmonization efforts, including the Patent Prosecution Highway (PPH) and the Collaborative Search Program (CSP) pilot. She oversees OIPC's IP5 activities and efforts, including leading USPTO's efforts with Industry. She leads Patents’ bilateral and multilateral stakeholder collaboration efforts, ensuring the organization establishes and builds relationships and coalitions with offices and users globally. Prior to this role, she served as the Director of International Outreach and Administration (IOA), overseeing the administrative needs and outreach in support of the organization. Jessica directed OIPC's outreach programs, analytical functions, and program management for the numerous international programs under the purview of OIPC.
Philip Soo
IP Counsel
3M Innovative Properties Co.
Philip Soo is the current Secretary, chair of the Procedural Harmonization subcommittee, and a long-time member on IPO’s International Patent Law and Trade committee. As in-house IP counsel, Phil supports 3M’s Display Materials and Systems business and 3M Engineering, and has been deeply involved with IP generation matters for 3M’s industrial businesses over many years. Phil also leads 3M’s IP Case Law practice group and serves as the IP subject matter expert on trade secrets, government R&D contracts, export controls, standard-setting organizations, and intercompany agreements. Phil holds a B.S. in Materials Science and Engineering from Cornell University, a Ph.D. in Materials Science and Engineering from the Massachusetts Institute of Technology, and a J.D. from Loyola Law School (Los Angeles).
Dan Staudt
VP, Chief IP Counsel
Siemens Corp.
Daniel J. Staudt is Vice President and Chief IP Counsel of the Siemens Corporation’s Intellectual Property Department, covering all Intellectual Property legal matters for the Siemens North American Operating Companies. Mr. Staudt’s practice focuses upon managing all of Siemens Corporation IP attorneys and staff that manages all the Intellectual Property assets for Siemens and its affiliates. He is located at Siemens’ offices in Orlando, Florida. Previously, he was Chief Counsel for the IP operations in Munich, where he managed the group that covered IP issues for the Munich-based Siemens AG businesses and prior to that he was division IP counsel for the Siemen Energy Division’s US Business. Mr. Staudt is a Past President (2020-2021) and sustaining board member of the Intellectual Property Owners Association.
Thomas Valente
Senior Director for Global Affairs
Intellectual Property Owners Association
Thomas S. Valente is the Senior Director for Global Affairs at the Intellectual Property Owners Association (IPO) in Washington, DC. IPO is an international trade association representing companies and individuals in all industries and fields of technology who own, or are interested in, intellectual property rights. Mr. Valente is the IPO staff lead on international IP matters. During his career, he has also practiced with law firms, both big and small, covering a wide range of IP issues. He is a graduate of the University of Virginia School of Law and served as a law clerk for the Honorable Peter W. Hall of the U.S. Court of Appeals for the Second Circuit.
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Contains 13 Component(s), Includes Credits
The panel will focus on various ethical concerns and obligations of which counsel should be aware when using AI tools, such as confidentiality, competence, candor, supervision, and bias. The panel will also focus on applicable ethical regulations pertaining to using AI tools in the IP space, including the positions of practice before the USPTO and district courts.
This webinar will cover the ethical use of generative AI in IP practice. The panel will focus on various ethical concerns and obligations of which counsel should be aware when using AI tools, such as confidentiality, competence, candor, supervision, and bias. The panel will also focus on applicable ethical regulations pertaining to using AI tools in the IP space, including the positions of practice before the USPTO and district courts.
Emil Ali
Partner
McCabe & Ali, LLP
Emil J. Ali is a partner at McCabe & Ali, LLP where he focuses his practice on helping lawyers understand their obligations under state and federal law. As a registered patent attorney, a significant focus of his practice involves advising lawyers and law firms on all aspects of the intersection of IP and ethics matters. Emil’s work includes counseling clients on lateral transitions, malpractice avoidance, expert opinion and testimony, and respondent’s defense work before various bars and courts. You can view his musings on IP ethics issues at www.ipethicslaw.com.
Naman Seth
Associate
Leydig, Voit & Mayer, Ltd.
Naman Seth is an associate with Leydig, Voit & Mayer. He has 8 years of experience representing clients in patent prosecution, primarily in the electrical, software, mechanical, chemical, and biomedical technology areas. He has also been part of litigation support teams collaborating closely with client technical experts to craft robust non-infringement and invalidity arguments. He is studying the growing impact of Artificial Intelligence in the US patent landscape. Naman graduated with a B.S. in Electrical and Computer Engineering from Carnegie Mellon University and earned his law degree from Fordham University.
Robert Wittmann
Shareholder
Leydig, Voit & Mayer, Ltd.
Robert Wittmann is a shareholder with Leydig, Voit & Mayer, Ltd. He has 24 years of experience representing clients in patent prosecution and patent litigation primarily in the electronic, electrical, software and mechanical technology areas. Robert regularly advises clients on issues of patent procurement, infringement, validity, and enforcement of patents. He routinely handles patent prosecution and post grant proceedings before the United States Patent & Trademark Office, and he has litigated patent infringement actions on behalf of patent owners and accused infringers in many jurisdictions throughout the United States. Robert graduated cum laude with a B.S. in Electrical Engineering from Marquette University and earned his law degree from DePaul College of Law where he graduated with honors.
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