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Contains 5 Component(s), Includes Credits Includes a Live Web Event on 01/09/2024 at 1:00 PM (EST)
This session will consider laws – such as the EU AI Act, EU Data Act, right to repair laws, TRIPS/WTO IP waiver, and privacy laws – that could compel owners of trade secrets to provide the otherwise secret information to governments, consumers and competing companies. Speakers will discuss increasingly restrictive government policies that limit the flow of information to certain nations (e.g., Chips and Science Act), and efforts to use trade laws and other mechanisms to penalize trade secret theft (e.g., Protecting Intellectual Property Act of 2022). In addition, this panel will also address the push in the US to reduce employee non-compete restrictions, which have the goal of increasing employee mobility but which make it harder for companies to protect trade secrets.
With proprietary information continuing to grow in importance and value as an asset across the world, trade secrets have recently been the focus of new enacted and proposed laws and regulations. This session will consider laws – such as the EU AI Act, EU Data Act, right to repair laws, TRIPS/WTO IP waiver, and privacy laws – that could compel owners of trade secrets to provide the otherwise secret information to governments, consumers and competing companies. Speakers will discuss increasingly restrictive government policies that limit the flow of information to certain nations (e.g., Chips and Science Act), and efforts to use trade laws and other mechanisms to penalize trade secret theft (e.g., Protecting Intellectual Property Act of 2022). In addition, this panel will also address the push in the US to reduce employee non-compete restrictions, which have the goal of increasing employee mobility but which make it harder for companies to protect trade secrets.
Kenneth Corsello
Trade Secrets Counsel
IBM Corp.
Ken Corsello is IBM’s U.S. Trade Secrets Counsel. He is a member of IPO’s Trade Secrets committee, which he chaired from 2016 to 2021, and a member of the Standards Setting committee and IP Licensing and Related Issues committee. Ken is a frequent speaker on Trade Secrets topics and in 2018 he testified on behalf of IPO about the Defend Trade Secrets Act at a hearing of the U.S. House of Representatives, Commerce Committee, Subcom. on Courts, Intellectual Property & the Internet. During his 17 years at IBM, Ken’s work has included patent procurement, litigation, client counseling, product clearance, and transactional matters. Before joining IBM, he 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.
Dawn Mertineit
Partner
Seyfarth Shaw LLP
Dawn Mertineit is a Partner at Seyfarth Shaw LLP. For more than a decade, Dawn has represented corporations and their directors and officers in a number of industries in complex commercial litigation, litigating partnership, franchise, real estate, and whistleblower disputes, with a special emphasis on noncompete and trade secrets litigation. She understands that many clients rely on noncompete and nonsolicitation agreements to protect their most valuable assets, while others face hurdles in recruiting and onboarding new employees bound by such restrictive covenants. Dawn brings her experience and knowledge of state and federal laws to help her clients navigate these issues, from drafting agreements and executing rollout and enforcement strategies, to analyzing competitor agreements and proposing recruitment and onboarding plans, and prosecuting or defending against claims related to misappropriation of trade secrets or breach of restrictive covenants.
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 4 Component(s), Includes Credits Includes a Live Web Event on 12/12/2023 at 12:00 PM (EST)
In this webinar, we will discuss the disparity in demographics of inventors, an overview of the Patent Pro Bono Program and its impact on inventor demographics, as well many other opportunities for low-resourced inventors through the USPTO’s Council on Inclusive Innovation and other programs. Patent Pro Bono Volunteers can share their skills and talents for intellectual property protection, while knowing that their clients have access to many resources for commercializing their invention.
The demographics of inventors on USPTO issued patents does not match the demographics of the United States population. This is true whether considering gender, race, ethnicity, or economic status. The Intellectual Property community through associations like IPO, the USPTO, Bar Associations, Universities, and others are working to make access to the patent system more inclusive. Participation in the Patent Pro Bono Program is a way to make a concrete impact on access to the patent system for low-resource inventors that allows Patent Attorneys to use their unique skill sets to satisfy their pro bono responsibilities. We will discuss the disparity in demographics of inventors, an overview of the Patent Pro Bono Program and its impact on inventor demographics, as well many other opportunities for low-resourced inventors through the USPTO’s Council on Inclusive Innovation and other programs. Patent Pro Bono Volunteers can share their skills and talents for intellectual property protection, while knowing that their clients have access to many resources for commercializing their invention.
Grant Corboy
Staff Attorney - Patent Pro Bono Program Administrator - Office of Enrollment and Discipline
USPTO
Grant Corboy joined the Office of Enrollment Discipline (OED)as a Patent Attorney in 2016. As a member of the Patent Pro Bono Team, he is dedicated to making sure that all inventors have access to the patent system, including those who are financially under-resourced. In addition to his Patent Pro Bono responsibilities, Mr. Corboy also serves as a Staff Attorney investigating discipline and enrollment matters. Mr. Corboy was a Primary Patent Examiner for the United States Patent and Trademark Office (USPTO) and, prior to joining the USPTO in 2010, he worked for fifteen years in industry as a design engineer, project manager and government contracts manager with DuPont and Lockheed Martin. Mr. Corboy is a member of the Maryland bar, and he is registered to practice before the USPTO. He graduated, cum laude, from The University of Baltimore School of Law and received a Bachelor of Science in Mechanical Engineering and his Masters of Science in Structural Engineering from the University of Delaware.
Jennifer Knight
Attorney and Of Counsel
Clements Bernard Walker (CBW)
Dr. Jennifer Knight joined Clements Bernard Walker (CBW) as Of Counsel in 2018. Prior to joining CBW, Jennifer managed a solo law practice for two years after completing a successful thirty-year career with Eastman Chemical Company. While at Eastman Chemical, Jennifer spent seventeen years in various technical and managerial roles, three years in law school and law internships, and ten years as Intellectual Property Council. Jennifer is a member of the Tennessee and North Carolina bars, and she is registered to practice before the USPTO. She graduated summa cum laude from the University of Tennessee College of Law, earned a Bachelor of Science in Chemical Engineering at the University of Tennessee, and a Doctor of Philosophy in Chemical Engineering from the University of Massachusetts. She is also a Patent Pro Bono volunteer and Patent Pro Bono Co-chair for the North Carolina Bar Association, Intellectual Property Law Section. Jennifer lives in Charlotte with her husband and in close proximity to six grand people (ages 3 to 7) and their parents.
Sandra Nowak
Associate Chief IP Counsel - 3M’s Health Care Business Group
3M Innovative Properties Co.
Sandra Nowak is Associate Chief IP Counsel of 3M’s Health Care Business Group, which connects people, insights, science, and technology to solve problems and make better health possible. Since joining 3M in 2005, Ms. Nowak held positions of increasing responsibility within the 3M Legal Affairs Department. In her various roles, Ms. Nowak has worked on various patent, trademark, domain name, and trade secret litigation matters; negotiated numerous global IP agreements; and has filed and/or prosecuted over a hundred patent applications. Ms. Nowak began her legal career as an IP attorney with Stoel Rives LLP in Portland, Oregon. Prior to law school, Ms. Nowak performed chemical research for the United States Department of Agriculture. Ms. Nowak has a JD from the University of Oregon law school and a BA (Chemistry) from Franklin and Marshall College. Ms. Nowak is also passionate about diversity in innovation. She helps lead this effort at 3M and around the world in her role as co-chair of the Intellectual Property Owners Association’s (IPO’s) Women in IP Committee and Diverse Inventors Subcommittee, where she works with a global group of IP professionals and inventors to advance diversity in the legal profession and in the innovation ecosphere. In April 2019, Ms. Nowak testified before the United States Senate Judiciary Committee on the topic of Trailblazers and Lost Einsteins: Women Inventors and the Future of American Innovation.
Warren Tuttle
Open Innovation Director & Author
Tuttle Innovation
Warren Tuttle has for many years overseen the Open Innovation product programs for several industry leading companies including publicly traded Lifetime Brands in the housewares and tabletop arenas (Farberware, Kitchen Aid and 40 other brands), Techtronics Industries Power Tool Group in the power tool and hardware industries (Ryobi, Rigid, Hart Tools and other brands) and Merchant Media in the Direct Response Television category (True Touch and other brands). He was also the person behind the launch of several highly successful consumer products including MISTO, The Gourmet Olive Oil Sprayer and the SmartSpin Storage Container System. Currently Warren is the Open Innovation Director for MarketBlast, the premier platform for innovators submitting new, unique & innovative products directly to leading companies. Warren personally interacts with thousands of inventors every year and has initiated well over 100 new consumer product licensing agreements that have collectively generated more than a billion dollars in retail sales. Warren is also a well-known advocate for inventor rights. He served for 12 years as the President of the United Inventors Association Board of Directors, a national 501c3 non-profit with high ethical standards that helps inventors through education, advocacy and the sponsorship of inventor booth pavilions at industry trade shows such as the National Hardware and Housewares Shows. Warren is also a member of the National Pro Bono Patent Council (PBAC) and the Department of Commerce Council for Innovation Inclusion (CI2). He also co-chairs the Creator Committee for the US Intellectual Property Alliance (USIPA). Warren’s book, Inventor Confidential: The Honest Guide to Profitable Innovation, is published by Harper Collins and available on Amazon. He lives with his wife Lynn in Southern Connecticut and has three wonderful daughters, all well-educated and pursuing inspiring careers. He enjoys skiing, motorcycling, golf and travel. Please visit Warren’s website www.tuttleinnovation.com or email him at wwtuttle@yahoo.com.
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Contains 6 Component(s), Includes Credits
Come listen to a lively discussion between a designer, a seasoned litigator and design patent prosecutor as they explore and consider various aspects of industrial design law including the ordinary observer, obviousness, indefiniteness, and the impact of other legal interpretations on industrial design rights. Hear the panel speak to how the law can advance the work of the industrial designer whose manufactured product is shaped to fit the people who use it as well as the processes that produce it – while striving to provide a distinctive elegance that attracts consumers to buy it.
Ever wonder about the designer’s perspective on protection and enforcement of his/her design rights? If so, this webinar is perfect for you. Come listen to a lively discussion between a designer, a seasoned litigator and design patent prosecutor as they explore and consider various aspects of industrial design law including the ordinary observer, obviousness, indefiniteness, and the impact of other legal interpretations on industrial design rights. Hear the panel speak to how the law can advance the work of the industrial designer whose manufactured product is shaped to fit the people who use it as well as the processes that produce it – while striving to provide a distinctive elegance that attracts consumers to buy it.
Tim Fletcher
President
One BusinessDesign, LLC
Tim Fletcher is an experienced expert witness in design patent, utility patent and trade dress cases. Venues include Federal Court, The International Trade Commission and the PTAB. With over 33 years of experience in industrial design, he has worked in corporate, consulting and academic environments in the US as well as internationally. He has been working with manufactures and clients in Asia and Europe since 1989. He holds 14 design patents and 4 utility patents in the US and Europe. He was an Assistant Professor at the School of Design at The Hong Kong Polytechnic University and also has taught design topics in several schools at Carnegie Mellon University. Tim has been a member of the Industrial Designers Society of America since 1989. He has worked in several elected and appointed positions within the organization. In 2009 he was inducted into the IDSA Academy of Fellows, the highest honor bestowed by the organization.
Anthony Prenol
Founding Partner
CPST Intellectual Property
Anthony Prenol is a founding partner of CPST Law LLP and its related patent and trademark agency firm, CPST Intellectual Property Inc. He is a lawyer, patent agent and trademark agent. Anthony's practice covers the full range of intellectual property protection, enforcement and commercialization. He has acted as trial and appellate counsel in a wide variety of patent, trademark and copyright litigation matters. Anthony is responsible for the prosecution of patent, trademark and industrial design portfolios for clients in a wide variety of industries. In particular, he has extensive experience in the energy and financial services sectors. He regularly advises clients in areas such as trademark clearance, freedom-to-operate opinions, data protection for innovative drugs, comparative advertising, official marks, and matters arising under the Patented Medicines (Notice of Compliance) Regulations.
Richard Stockton
Attorney
Banner & Witcoff, Ltd.
Richard S. Stockton advises clients on all aspects of intellectual property law, including tactical and strategic counseling, portfolio management, litigation and prosecution matters. Richard earned a Bachelor of Science degree in Electrical Engineering from the University of Illinois at Urbana-Champaign (UI) in 1997. He graduated from the UI College of Law cum laude in 2000. Richard also has governmental relations and policy experience. He has prepared draft legislation, and served as a legislative extern to the Illinois House of Representatives. Richard also interned in Congress.
Mina Stricklin
Senior Counsel (Senior Director) - Design Patents
Nike, Inc.
Mina Stricklin is an experienced Assistant General Counsel with a 20+ year demonstrated history of in-house multifaceted patent practice in the consumer products industry. She is currently living the dream in Portland, OR while managing the patent team responsible for global protection of Nike's innovative product designs. Mina attended the University of Dayton where she received her B.S., Environmental/Chemical Engineering Tech and received her law degree from the University of Cincinnati College of Law.
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Contains 9 Component(s), Includes Credits
This webinar will address Third-Party Preissuance Submissions under 35 U.S.C. 122(e) and how they can be strategically employed to curtail the issuance of overly broad US Patents. A case for when and how to take advantage of the power to participate in the patent prosecution of competitors will be laid out. Benefits vs. drawbacks and potential pitfalls will be outlined. Finally, a model third-party submission regime will be proposed, including publication monitoring, prior art development, and strategic drafting of third party submissions with be detailed. Presenters will include both in house and law firm counsel with extensive third-party submission experience to provide a diverse set of perspectives.
This webinar will address Third-Party Preissuance Submissions under 35 U.S.C. 122(e) and how they can be strategically employed to curtail the issuance of overly broad US Patents. A case for when and how to take advantage of the power to participate in the patent prosecution of competitors will be laid out. Benefits vs. drawbacks and potential pitfalls will be outlined. Finally, a model third-party submission regime will be proposed, including publication monitoring, prior art development, and strategic drafting of third party submissions with be detailed. Presenters will include both in house and law firm counsel with extensive third-party submission experience to provide a diverse set of perspectives.
Michael Burleigh
Patent Attorney
Leydig, Voit & Mayer, Ltd.
Michael Burleigh is a patent attorney in Leydig’s Boulder office whose practice focuses primarily on patent prosecution, due diligence and trademark matters. His diverse range of patent prosecution experience encompasses materials science, chemistry, biotechnology, computer science, and mechanical engineering. His prior career as a process engineer in the pharmaceutical industry informs his legal approach and grounds him technically.
Nathan Frederick
Director, IP Services
Cardinal Intellectual Property
Nathan Frederick is the Director of IP Services for Cardinal Intellectual Property. Within this role, he manages Cardinal's corporate and law firm accounts. His concentration focuses on IP search, e-discovery, valuation, monetization, and competitive monitoring of products and services. He received his Bachelor of Science, Electrical Engineering from Valparaiso University and his law degree at the University of Iowa.
Dimitry Kapmar
Director Counsel, Patent Operations
Zebra Technologies Corporation
Dimitry Kapmar is an Intellectual Property attorney with an emphasis on patent portfolio management and patent litigation. He also has extensive prior engineering experience in the wireless telecommunications arena. His specialties include patent portfolio management, patent litigation, patent opinions and due diligence, patent prosecution, and trademark counseling. He received his B.S., Electrical Engineering from the Illinois Institute of Technology and his law degree from the University of Illinois Chicago School of Law.
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Contains 7 Component(s), Includes Credits Recorded On: 09/21/2023
This webinar will explore this burgeoning field from a variety of angles, including objective facts relating to funders and their cases, insurance and lending efforts, as well as perspectives of investors, defendants, and other market participants. Bringing together these diverse perspectives will help attendees better understand this significant new development in patent litigation and IP monetization.
Litigation funding and prevailing secondaries markets have quickly come to undergird huge swaths of U.S. civil litigation today. This is particularly true in U.S. patent litigation, although financing efforts surrounding patents are not exclusively limited to enforcement efforts. Indeed, studies show that up to a third of all modern patent litigation is now funded, making patent litigation the highest-growth area in litigation funding. Some argue that litigation funding has enabled small players and individual inventors to realize the value of their intellectual property holdings. Others have raised concerns about the impact of funding on litigation, pointing especially to a lack of transparency in litigation financing. This webinar will explore this burgeoning field from a variety of angles, including objective facts relating to funders and their cases, insurance and lending efforts, as well as perspectives of investors, defendants, and other market participants. Bringing together these diverse perspectives will help attendees better understand this significant new development in patent litigation and IP monetization.
Thomas A. Brown
Senior Legal Director
Dell Technologies
Tom Brown is a Senior Legal Director at Dell, where he leads Dell’s talented intellectual property litigation team, and manages a docket of IP litigation and post-grant review proceedings. Tom has overseen scores of cases from inception through appeal, in the PTAB and in courts across the country. Intellectual property policy also forms a substantial component of Tom’s role at Dell, where he plays a leading role shaping and articulating Dell’s policy positions. In this capacity, Tom drafts and manages amicus briefs, PTO comments, and other advocacy designed to promote a balanced, effective, and efficient regime for the protection of intellectual property. Tom currently serves as chair of IPO’s Damages and Injunctions Committee and on the steering committee of the Sedona Conference Working Groups 9 and 10 on Patent Damages, Remedies, and Litigation. He is also the Counselor of the Alan D. Lourie Boston IP American Inn of Court. Before joining Dell, he was a litigation principal at Fish & Richardson, and was previously a software design engineer at Microsoft.
Michael Gulliford
Managing Partner & Co-Founder
Soryn IP
Michael Gulliford has more than two decades of experience in the intellectual property arena as an investor, advisor, dealmaker and former law firm partner. At Soryn IP Capital Management, Michael oversees the firm's portfolio of private credit, legal finance and other IP-specific investments. Prior to Soryn IP Capital Management, Michael founded Soryn IP Group, an intellectual property advisory and finance firm that guided the management of private and publicly traded companies with respect to patent strategy, and that closed more than $175 million in patent-centric deals. Prior to founding Soryn IP Group, Michael was a partner in the IP litigation group at Kirkland & Ellis LLP, where he counseled clients on IP issues in a host of industries. Michael holds a BA in Neuroscience from Columbia University and a JD from the Seton Hall University School of Law. Michael regularly speaks and publishes on the latest IP monetization and finance developments. Among various industry distinctions, Michael has been recognized as a Global Leader in Intellectual Property, as one of the Leading IP Strategists in the World and as a Patent Master. Chambers and Partners has also repeatedly recognized Michael as a top practitioner of IP Litigation Finance.
Jonathan Stroud
General Counsel
Unified Patents, LLC
Jonathan Stroud is General Counsel at Unified Patents, LLC, where he manages a growing team of talented, diverse attorneys and oversees a docket of administrative challenges, appeals, licensing, pooling, and district court work in addition to trademark, copyright, administrative, amicus, policy, marketing, and corporate matters. Prior to Unified, he was a litigator with Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and prior to that, he was a patent examiner at the USPTO. He earned his J.D. with honors from the American University Washington College of Law; his B.S. in Biomedical Engineering from Tulane University; and his M.A. in Print Journalism from the University of Southern California. He enjoys teaching, writing, and speaking on Federal Courts, patent, and administrative law.
Ryan Zurek
Managing Director
Ocean Tomo, a part of J.S. Held
Ryan Zurek is a Managing Director in the Investment Group of Ocean Tomo, a part of J.S. Held. Mr. Zurek leads the firm’s Advisory Services practice which is composed of IP Transaction Advisory, Investments, and non-securities Investment Banking. He holds the FINRA Series 7 and 63 license. Mr. Zurek plays an integral role in all aspects of the firm’s investment banking and asset management initiatives, including facilitating IP-driven transactions, mergers and acquisitions, IP monetization strategies, financing and IP-based special situations investments. Mr. Zurek has significant experience in IP valuation, licensing strategy, market research and cash flow analysis. Prior to joining the Investments practice, Mr. Zurek spent 5 years with Ocean Tomo’s Expert Testimony practice where he spearheaded engagements involving the valuation of intangible assets across a broad spectrum of technologies. Mr. Zurek holds a B.S. in Finance from Indiana University’s Kelley School of Business.
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Contains 2 Component(s)
IPO’s Patent Search Committee published a white paper titled “Traps for the Unwary in Search Patents: When to Consider Using a Professional Patent Searcher”. As discussed in the white paper, there are many vagaries in patent searching that fool the untrained searcher into believing that they have completed an adequate search. Depending upon the reason for the search and how it will be used, a professional patent search may need to be critical to answering your questions. This webinar will address how to recognize when engaging a professional patent searcher is beneficial or necessary. Speakers will also discuss when you need someone with deep searching expertise, knowledge of the searching tools and databases (especially including what they can deliver and what they cannot deliver), and how best to leverage that expertise. They will also explain how to recognize when you need to go to the next level.
IPO’s Patent Search Committee published a white paper titled “Traps for the Unwary in Search Patents: When to Consider Using a Professional Patent Searcher”. As discussed in the white paper, there are many vagaries in patent searching that fool the untrained searcher into believing that they have completed an adequate search. Depending upon the reason for the search and how it will be used, a professional patent search may need to be critical to answering your questions. This webinar will address how to recognize when engaging a professional patent searcher is beneficial or necessary. Speakers will also discuss when you need someone with deep searching expertise, knowledge of the searching tools and databases (especially including what they can deliver and what they cannot deliver), and how best to leverage that expertise. They will also explain how to recognize when you need to go to the next level.
Note: IPO will not be applying for CLE credit for this webinar.
Ford Khorsandian
President & Founder
TPR (Technology & Patent Research) International, Inc.
Ford Khorsandian is President and founder of Technology & Patent Research (TPR) International, Inc. TPR was established in 1995 and specializes in the searching of patents and scientific literature for patentability, landscape, infringement, and validity/opposition in the fields of chemistry, life sciences, high-tech and engineering. TPR also provides patent analysis, and competitor intelligence studies. Ford holds a B.S. in Electrical Engineering from the U.K. and started his career in Europe with Derwent/Thomson Reuters (now Clarivate). Since moving to the U.S. he has held the positions of Vice President of Derwent North America, and Director at Chemical Abstracts Service (CAS), a Division of the American Chemical Society. He has also been the Vice Chair of the Patent Information Users Group (PIUG), as well as the Chair of the PIUG Nominations Committee. Ford is founder and board member of the International Patent Information (IPI) Institute, and Pharma-Bio-Med Institute. Since its inception, he has also been serving as the Vice Chair of the Patent Search Committee within IPO.
Matt Luby
Group Director, IP Analytics
Techtronic Industries North America, Inc. (TTI)
Matthew Luby is the Group Director, IP Analytics for Techtronic Industries North America, Inc. (TTI). TTI is a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. At TTI, Matt helps the IP teams and their stakeholders understand and manage their IP assets. Matt also helps measure and refine Key Performance Indicators through the use of analytics and communicate relevant IP metrics throughout TTI business units. Prior to TTI, Matt was a US Patent Examiner and then worked for Landon IP/CPA Global, where he helped to create and lead the IP analytics consulting team. Matt is the author of several articles related to IP analytics and was selected as one of IAM’s top 300 IP strategists from 2016-2020.
Vipul Mendiratta
Law, Security & Public Policy - IP Analytics
Caterpillar Inc.
Vipul Mendiratta is the Lead at IP Analytics for Caterpillar Inc. Caterpillar Inc. is the world’s leading manufacturer of construction and mining equipment, off-highway diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. At Caterpillar, Vipul collaborates with the IP Legal and R&D teams understand and manage their IP assets. Vipul also assists capturing and refining innovative ideas working with inventors and business units. In roles prior to Caterpillar, Vipul created and lead the IP consulting teams for about 15 years at Evalueserve Inc. Vipul is a registered attorney with New York bar and has a law degree and a mechanical engineering degree from India.
Jessica M. Sinnott
Vice President and Chief Intellectual Property Counsel
DuPont
Jessica Sinnott is Vice President and Chief Intellectual Property Counsel, DuPont Legal. This role includes leadership responsibility for DuPont intellectual property work and Legal Operations. Prior to joining DuPont in 1999, she was Sr. Patent Attorney at Mobil Business Resources Corporation. She is admitted to the bars of New Jersey, New York, Virginia, and Delaware (limited practice under DE Rule 55.1), and registered to Practice before the United States Patent and Trademark Office. She was s a Co-Author, Sinnott, World Patent Law and Practice; Baxter, World Patent Law and Practice (pubs) 1987 – 2020; and European Patent Practice, 2015-2018. Jessica received a BA Degree in Chemistry from Sweet Briar College and JD from New York Law School.
Jonathan Skovholt
Founding Member & Head of Search Operations
Ensemble IP
Jonathan Skovholt is a founding member and Head of Search Operations at Ensemble IP, an intellectual property consulting firm providing patent search services to corporations and law firms worldwide. At Ensemble IP, Jonathan works to blend human expertise with advanced technology tools to provide the most reliable and comprehensive patent search results. Jonathan is focused on assessing AI search systems, the convergence of Boolean and AI based techniques, and the continuing evolution of patent searching. Prior to joining Ensemble IP, he managed, designed, and delivered training for Landon IP and CPA Global where he taught analysts the finer points of searching, examining, and classifying. He is a former faculty member of Patent Resources Group (PRG) and at the NIH Foundation for Advanced Education in the Sciences. Jonathan has taught individuals on the art of prior art searching to audiences on four continents. He is also a former patent examiner. Jonathan has a BA in Physics from Gustavus Adolphus College, an MS in Physics from the University of Delaware, and a graduate certificate in Instructional Systems Development from the University of Maryland, Baltimore County.
Martha Yates
Senior Principal Information Scientist & Science Fellow
Bayer Intellectual Property GmbH
Martha Yates is a Senior Principal Information Scientist and Science Fellow for Bayer CropScience. She does patent searching and patent information management. She is a US patent agent and a Qualified Patent Information Professional (QPIP). Martha has a BA in biology from Colorado College and a MS in Biochemistry and a MSLS from the University of Kentucky. She is the current chair of the IPO Patent Search Committee.
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Contains 2 Component(s)
The Patent Agent Committee will host Part 2 in a webinar series on “Effective Use of Patent Agents.” In Part 2, speakers will provide background and answer questions on current case law around Patent Agent privilege. Speakers will also explore strategies and considerations related to best practices for using patent agents in-house. Note: IPO will not be applying for CLE credit for this course.
The Patent Agent Committee will host Part 2 in a webinar series on “Effective Use of Patent Agents.” Patent agents are increasingly being used in-house as members of patent teams as well as leaders of those teams. In the United States, Patent Agents hold the credentials to practice in legal matters, specifically patent matters, before the US Patent and Trademark Office. However, the job duties of a Patent Agent are increasingly extending well beyond the immediate practice of patent law, ranging from being a drafting and prosecution professional, to an IP portfolio manager, R&D advisor, or project manager. Given the narrow scope of the practice of patent law and all the responsibilities a Patent Agent may hold, there is an inherent lack of clarity on where Patent Agent privilege begins and ends. In Part 2, speakers will provide background and answer questions on current case law around Patent Agent privilege. Speakers will also explore strategies and considerations related to best practices for using patent agents in-house.
Part 1 was held on June 29 where speakers addressed the benefits of having a patent agent program including how patent agents can support legal/business work outside of preparation and prosecution. You do not have to listen to Part 1 in order to participate in Part 2.
Note: IPO will not be applying for CLE credit for this course.
Gary Ganzi
Senior Director and Head of Intellectual Property
Evoqua Water Technologies LLC | Xylem
Gary Ganzi is the Senior Director and Head of IP for Evoqua | Xylem. Gary serves on the Board of Directors of IPO and is part of the Audit Committee, Board Liaison to Corporate IP Management Committee. He has a 50-year career in water treatment that include employment at Ionics, Millipore, Ionpure, USFilter, Vivendi, Veolia, Siemens, Evoqua & Xylem. He was named inventor on over 40 US patents in the field of water treatment, including pioneering work in commercialization of electrodeionization technology and is the Chair of ASTM subcommittee D19.08 on Membranes and Ion Exchange.
Kate Helmich
Patent Agent
Cargill, Inc.
Kate Helmich has been with Cargill, Incorporated for 3 years and is currently the Patent Agent Team Lead. Kate is one of the Vice-Chairs of the IPO Patent Agent Committee and is passionate about advocating for Patent Agents and getting more STEM students into this career path. Prior to joining Cargill, Kate worked at Quarles & Brady in Madison, WI. Kate has a PhD in Biochemistry from the University of Wisconsin – Madison and a BA in Chemistry from St. Olaf College. Kate and her husband recently moved to the Twin Cities and are enjoying more time with family and friends and gearing up for next hockey season.
Jenifer Lake
Patent Agent and Senior Manager
Charles Schwab & Co., Inc.
Jenifer Lake is a graduate of Western Michigan University with a double major in Health Chemistry and Biomedical Sciences where she interned at Pharmacia and UpJohn (now Pfizer) working on a new class of antibiotics to combat antibiotic resistant bacteria. Jenifer began her career at Dow AgroSciences (now Corteva) in Indianapolis as a synthetic organic chemist where she spent the next decade working in fungicides, developing new methods of rapid molecule synthesis, and eventually transitioning into regulatory and quality assurance. Upon moving back to Michigan, Jenifer pivoted toward patent law by joining a local boutique law firm for about five years and becoming a registered patent agent. From there, Jenifer moved in-house, first joining BISSELL’s IP team before moving to Charles Schwab Co., Inc. She has been with Schwab for about 14 months getting their formal patent program off the ground and managing their existing patent portfolio.
Jonathan Tolstedt
Patent Agent
3M Innovative Properties Co.
Jonathan Tolstedt is a Patent Agent for the 3M Office of Intellectual Property (OIPC) in Maplewood, MN. Jonathan started his career at Rockwell Collins in Cedar Rapids, Iowa, first as a Technical Writing Group Lead (2 years) and then as a Software Systems Engineer (6 years). Jonathan then moved to the John Deere Electronics Solution group in Fargo, ND, as a software engineer and business development specialist (12 years). While employed with John Deere, Jonathan began studying for the patent bar exam and passed the exam in 2006. In 2008, Jonathan became a licensing associate for the NDSU Research Foundation (5 years), and then moved to Appareo Systems (Fargo) as their Intellectual Property Officer (2 years). Before his move to 3M, Jonathan worked as a patent agent for the law firms of Dorsey & Whitney and Davis Wright Tremaine in Seattle (2.5 years). Jonathan also had a consulting business (a moonlighting gig) providing patent drafting and prosecution services for individual inventors and startup companies in the Fargo area, starting in 2005 through 2015.
Chad Walter
Assistant General Counsel - IP
Chevron Phillips Chemical
Chad Walter is the Assistant General Counsel - IP at Chevron Phillips Chemical, managing the company’s IP department which includes 4 attorneys, 3 patent liaisons, 2 IP paralegals, and 2 administrative assistants. Following graduation from Texas A&M with a Chemical Engineering degree, Chad practiced in the environmental and process engineering fields for six years. After graduating law school at the University of Houston, Chad practiced at Carstens and Cahoon, an IP boutique in Dallas, TX prior to joining Chevron Phillips Chemical in 2010.
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Contains 7 Component(s), Includes Credits Recorded On: 08/01/2023
This webinar will examine ways to incorporate Alternative Dispute Resolution (ADR) into intellectual property disputes from using arbitration clauses in license agreements to strategies for going to mediation. The pros and cons of various approaches will be discussed as will consideration of what attributes to look for in a neutral third party.
This webinar will examine ways to incorporate Alternative Dispute Resolution (ADR) into intellectual property disputes from using arbitration clauses in license agreements to strategies for going to mediation. The pros and cons of various approaches will be discussed as will consideration of what attributes to look for in a neutral third party.
Frank Gao
Registered US Patent & Trademark Attorney & Chemist
Ladas & Parry LLP
Frank Gao is a registered patent attorney and chemist. Prior to joining Ladas & Parry LLP, Mr. Gao worked for another prominent Chicago patent law firm and he was in-house patent counsel at Sandvik. Before Sandvik, he was a patent agent/attorney at a law firm in California. Before entering law school, Mr. Gao worked at Chemical Abstracts Service (CAS) editorial division, where he analyzed and built database entries for patents in fields of pharmaceuticals, polymer, and material science. Mr. Gao also worked at Princeton Biomolecules where he synthesized customized peptides via solid-state synthesis. Frank is an active Mandarin Speaker and obtained undergraduate and graduate degrees in China, a Ph.D. student at Weizmann Institute of Science in Israel and also an Ohio state University graduate. Frank is a Lanham Act Mediator before the United District Court of Northern District of Illinois.
Hon. Faith Hochberg
U.S.D.J. (ret.)
Hochberg ADR LLC
Judge Hochberg served many years as a federal judge in the District of New Jersey. In 2015, she founded Hochberg ADR [www.JudgeHochberg.com],to serve as a Mediator, Arbitrator, Special Master, Mock Court Judge and Monitor in complex U.S. and international litigation. Judge Hochberg has served as a court-appointed Monitor in international cybersecurity cases, and is currently serving as a court-appointed Special Master in many cases in both federal and state courts, including patent, antitrust, trade secrets and multi-district litigation (MDL cases). Judge Hochberg is a distinguished neutral admitted to the rosters of the AAA, ICDR, ICC, CPR, and WIPO; she is a Fellow of the College of Commercial Arbitrators and a Fellow of the Chartered Institute of Arbitrators. Her expertise broadly spans many areas of law: patent and other intellectual property litigation and licensing; class actions; corporate contract; insurance; banking & financial institutions; securities; antitrust; trade secrets; pharmaceutical development and licensing; merger and acquisition transactions; partnership disputes, and many more. Judge Hochberg graduated from Harvard Law School, magna cum laude, where she was an Editor of the Harvard Law Review. She earned a B.A., summa cum laude, from Tufts University, where she was elected to Phi Beta Kappa. She also attended the London School of Economics.
Betty Morgan
Mediation and Arbitration Services Specialist
The Morgan Law Firm I P.C.
Elizabeth Ann “Betty” Morgan is board certified by the Florida Bar as a specialist in in intellectual property law through 2023 and was certified business litigation from 1997 to 2007. Admitted to the Pennsylvania Bar, Ms. Morgan also is admitted to all federal district courts in Florida and in Georgia, to the Eleventh Circuit Court of Appeals and to the United States Supreme Court. Ms. Morgan has handled cases in Arkansas, California, Colorado, Delaware, Florida, Georgia, Illinois, Mississippi, Minnesota, Michigan, New Jersey, North Carolina, Nebraska, Oregon, Pennsylvania, Texas and the Virgin Islands. Ms. Morgan has significant jury trial experience in federal court, including patent, trademark, copyright and employment matters. Ms. Morgan has handled more than 100 matters before the Trademark Trial and Appeal Board.
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Contains 7 Component(s), Includes Credits
This webinar will cover recent developments in case law over the past six months. The first half of 2023 saw no less than four IP decisions from the Supreme Court. The panel will also cover notable decisions issued by the lower tribunals in the first half of the year.
This webinar will cover recent developments in case law over the past six months. The first half of 2023 saw no less than four IP decisions from the Supreme Court. In Amgen v. Sanofi, the Supreme Court addressed the enablement requirement for patent claims directed to antibodies, an increasingly important class of medical treatment. The trademark discussion will focus on the two Supreme Court decisions issued this term concerning trademark law: Abitron Austria GmbH v. Hetronic International and VIP Prod. LLC v. Jack Daniel's Properties, Inc. Abitron considered the territorial limits of the Lanham Act, with potential implications for brand owners’ foreign policing efforts. The Jack Daniel’s decision examined the interplay of the First Amendment and Lanham Act protections where the junior user claims parody and humorous expression. And in the realm of copyrights, the Supreme Court addressed a fair use dispute between the Andy Warhol Foundation and a well-known rock-and-roll photographer, Lynn Goldsmith. The panel will also cover notable decisions issued by the lower tribunals in the first half of the year.
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.
Gregory Castanias
Partner
Jones Day
Greg Castanias is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.
Wendy Larson
Member
Pirkey Barber
Wendy Larson practices trademark law with a focus on litigation. She focuses specifically on issues relating to the internet, including cybersquatting and brand protection challenges involving social media platforms and smartphone applications, keyword advertising, service provider liability, and personal jurisdiction relating to foreign online actors. She practices in federal court, before the Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), and with dispute resolution service providers such as the Forum and the World Intellectual Property Organization (WIPO) handling domain name disputes under ICANN’s domain name dispute resolution policies. Wendy also assists clients in a variety of prosecution and other litigation matters. Wendy is a member of IPO’s Amicus Brief Committee.
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Contains 2 Component(s)
The role of patent agents has evolved over the past decade. IPO’s Patent Agent Committee will host a two-part webinar series on effective use of patent agents. Part 1 will address the benefits of having a patent agent program including how patent agents can support legal/business work outside of preparation and prosecution. Speakers will discuss unique benefits to staffing with patent agents, including contributing to your organization’s diversity. Part 2 is scheduled for August 9 and will focus on Patent Agent privilege and best practices for using patent agents in-house. *Please note that IPO will not be applying for CLE credit for this course.
The role of patent agents has evolved over the past decade. IPO’s Patent Agent Committee will host a two-part webinar series on effective use of patent agents. Part 1 will address the benefits of having a patent agent program including how patent agents can support legal/business work outside of preparation and prosecution. Speakers will discuss unique benefits to staffing with patent agents, including contributing to your organization’s diversity. Part 2 is scheduled for August 9 and will focus on Patent Agent privilege and best practices for using patent agents in-house.
*Please note that IPO will not be applying for CLE credit for this course.
Karen Cochran
Chief IP Counsel
Shell USA, Inc.
Karen Cochran is the chief IP counsel at Shell, leading the company’s global IP department in support of IP strategies and related licensing activities. Karen began her career as a chemist at Rhône-Poulenc Rorer, and Merck Pharmaceuticals. Following law school, she reentered the pharmaceutical industry as a patent attorney and later joined AstraZeneca Pharmaceuticals. Karen assumed roles of increasing responsibility while with AstraZeneca, including head of Neuroscience IP, leading a global team from the company’s Swedish offices. Karen subsequently joined DuPont in 2012 where she led both IP and commercial legal teams prior to becoming DuPont’s chief IP counsel and head of IP Litigation. She is a member of IPO’s Board of Directors, serving as president. Karen has also served on the board of Association for Women in Science (AWIS), an organization committed to the advancement of women in STEM.
Carey Jordan
Partner
Vorys, Sater, Seymour and Pease LLP
Carey Jordan is a partner in the Vorys Houston office and chair of the intellectual property group. She advises large-scale clients on patent prosecution and global intellectual property (IP) portfolio management, agreements (technology transfer, joint development and other research agreements), licenses, transactions involving IP and risk consulting. Carey also has significant experience in crafting and conducting effective and efficient IP due diligence for investments, acquisitions and divestitures. Although experienced in multiple technology areas, her personal sweet spots are in the chemicals and materials science arenas. Carey received her J.D. magna cum laude from the University of Houston Law Center. She received her M.S. and B.S. magna cum laude from Clemson University. Carey's personal passion is to encourage women to study science and engineering. For example, at Clemson University, her alma mater, Carey has established a scholarship campaign to aid women studying science, technology, engineering and math (STEM) obtain their degrees and pursue careers in STEM or IP.
Kelly McGlashen
Director of Patents
Robert Bosch LLC
Kelly McGlashen is Director of Patents at Robert Bosch LLC.
Valerie Moore, Ph.D.
Patent Agent
Kilpatrick Townsend & Stockton LLP
Valerie Moore, Ph.D. is a registered patent agent who focuses her practice on domestic and foreign patent preparation and prosecution, as well as portfolio management, relating to chemistry, materials, and life sciences. Valerie’s technical and patent experience spans areas including nanotechnology, materials engineering, polymers and surfactants, surface science, corrosion chemistry, catalysis, upstream and downstream oil and gas chemistry, mining, sensors, bioimaging, biomedical implants, mathematical modeling of data, and integrating systems with mathematical modeling.
Angela Parsons, Ph.D.
Patent Agent
Fish & Richardson, PC
Angela Parsons, Ph.D., has been a Patent Agent for 25 years, starting her practice at a very small IP boutique before moving to Fish & Richardson. Angela focuses her practice on all aspects of life science patent prosecution, both U.S. and abroad, as well as due diligence, patentability opinions, and invalidity opinions. Her clients include universities and research institutes, start-up companies, and large companies that operate in the pharma and life sciences space.
Connie Pielech
Patent Agent
Shell USA, Inc.
Connie Pielech is a Patent Agent at Shell USA, Inc.
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