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  • Protecting Software Related to a Medical Device: A Case Law Review & Strategy

    Contains 6 Component(s), Includes Credits Includes a Live Web Event on 04/14/2021 at 2:00 PM (EDT)

    Software has become increasingly intertwined with medical devices, serving to monitor, control, evaluate, extrapolate, etc. In some instances, software now forms a medical device itself to not only guide a clinician in diagnosis and/or treatment but to form its own diagnosis and/or issue its own treatment. This webinar will review recent case law relating to software-related medical patents and provide strategy tips for preparing and prosecuting patent applications involving such technologies.

    Software has become increasingly intertwined with medical devices, serving to monitor, control, evaluate, extrapolate, etc. In some instances, software now forms a medical device itself to not only guide a clinician in diagnosis and/or treatment but to form its own diagnosis and/or issue its own treatment. This webinar will review recent case law relating to software-related medical patents and provide strategy tips for preparing and prosecuting patent applications involving such technologies.

    Christopher George

    Shareholder

    Hanley, Flight & Zimmerman, LLC

    Christopher George is aShareholder Member of the law firm of Hanley, Flight & Zimmerman inChicago, where he focuses on non-litigation IP services including patentdrafting and prosecution, patent portfolio development and management,brainstorming and IP capture, patent landscaping, and counseling. Prior topracticing law, Chris worked in the field of computer architecture and is aninventor on a patent related to runtime software optimization.

    John Kind

    Associate

    Fenwick & West LLP

    John Kind supports clients in the high technology and life science industries. In particular, John focuses on patent prosecution and advising clients on IP strategies that support their business goals. John also provides support as a patent specialist on large litigation matters and M&A deals. John has a background in physics and computer simulation. 

    Jonathan Kwok

    Senior Counsel, Patents, Intellectual Property

    Hewlett Packard Enterprise

    Jonathan Kwok is Senior Counsel in the Patents Department at Hewlett Packard Enterprise where he oversees large software-related patent portfolios. Before joining Hewlett Packard Enterprise, Jonathan was an associate at Fitzpatrick, Cella, Harper & Scinto. Prior to law school, Jonathan received his M.S. in biomedical engineering and worked as a senior engineer and scientist in the medical device industry.

    Ishir Mehta

    Associate

    Cantor Colburn LLP

    Ishir Mehta concentrates his practice on drafting and prosecuting patents for mechanical and electrical innovations. In particular, he has experience with patent issues relating to e-commerce, wireless energy transfer devices, software, semiconductor devices, fabrication methods, and telecommunications. During graduate school, Ishir worked as a research assistant with a focus on fabrication and characterization of nanofiber sensors.

    Ryan Phelan

    Partner

    Marshall, Gerstein & Borun LLP

    Ryan Phelan is a patent attorney, and has over a decade of experience in IP, and specifically with artificial intelligence (AI) technology and medical devices, among others. As a former technology consultant with Accenture and with a background in computer science and engineering, Ryan has extensive experience in computer system, hardware, and software design, AI, engineering, development and related technologies. 

  • Opportunities for Patent Applicants in Latin America: Benefiting from Work Sharing Programs and Other Fast-Track Options (RECORDING)

    Contains 5 Component(s), Includes Credits

    Patent Offices, applicants and other stakeholders around the world are all interested in increasing the efficiency of patent examination, and improving the quality of granted patents. Work sharing programs, such as the Patent Prosecution Highway (PPH) and the Parallel Patent Grant (PPG) programs, and other fast-track options allowing applicants to obtain expedited examination for certain applications, are critical to achieve such goals. In this sense, the exchange of search results between Patent Offices, for example, or allowing an applicant who receives a positive ruling from a certain Patent Office, to request accelerated prosecution of corresponding claims in another Patent Office, avoids unnecessary workload and duplication of effort, reduces patent backlogs, and also avoids inconsistencies in patentability decisions amongst different Patent Offices.

    Patent Offices, applicants and other stakeholders around the world are all interested in increasing the efficiency of patent examination, and improving the quality of granted patents. Work sharing programs, such as the Patent Prosecution Highway (PPH) and the Parallel Patent Grant (PPG) programs, and other fast-track options allowing applicants to obtain expedited examination for certain applications, are critical to achieve such goals. In this sense, the exchange of search results between Patent Offices, for example, or allowing an applicant who receives a positive ruling from a certain Patent Office, to request accelerated prosecution of corresponding claims in another Patent Office, avoids unnecessary workload and duplication of effort, reduces patent backlogs, and also avoids inconsistencies in patentability decisions amongst different Patent Offices.

    PPH, PPG and other fast-track programs are being implemented to increase efficiency and patent quality is Latin America, and companies doing business in the region can take advantage of them to overcome backlog issues, increase their chances of obtaining patent protection, and ultimately implement strategies that deliver a higher return on investment.

    In this webinar, a speaker from the U.S. Patent and Trademark Office (USPTO) will provide an overview of the PPH programs in Latin America, and explain the PPG agreement between the USPTO and the Mexican PTO (IMPI). A speaker from the Brazilian PTO (INPI) will discuss the success of the PPH pilot program, explain other fast-track options currently available, and show the results of the Program for Tackling the Backlog. An experienced attorney based in Brazil will share insights from a practitioner’s perspective managing patent portfolios in Latin America.

    Jesus Hernandez

    Patent Attorney, Office of Policy & International Affairs

    USPTO

    Jesus Hernandez is a Patent Attorney at the Office of Policy and International Affairs (OPIA) within the USPTO. OPIA assists the USPTO Director and Under Secretary of Commerce for Intellectual Property in advising the Secretary of Commerce and Federal agencies on IP policy. Jesus leads the U.S. delegation to the Standing Committee on the Law of Patents at the World Intellectual Property Organization (WIPO). Jesus assists with the formulation of U.S. patent policy in the Western Hemisphere -- specializing in Latin America. He advises the Office of the United States Trade Representative in trade discussions involving patents and related rights.

    Diego Musskopf

    Deputy Head of the Special Patent Affairs Service

    INPI-BR

    Diego Musskopf is an Architect and Urbanist (UFRGS / FAU / 2004), Master in Civil Engineering in the area of More Sustainable Constructions (UFRGS / NORIE / 2007), Doctor in Public Policies in the area of Innovation, Industrial Property and Development (UFRJ / IE / 2017), Specialist in Contemporary Public Management in the area of Business Process Management (UFRGS / CEAPC / 2019). He has been a civil servant of INPI-BR (BRPTO) since 2009, where he holds the positions of Industrial Property Researcher (patent examiner), Manager of the Priority Task Force and Deputy Head of the Special Patent Affairs Service (SAESP).

    Ricardo Nunes

    Partner

    Daniel Law

    Ricardo Nunes is licensed to practice in Brazil and in the State of New York. He is Partner and Head of Patents at Daniel Law, a top Brazilian IP-focused law firm who works primarily with complex patent issues. He is also listed by Who’s Who Legal as a Global Leader in the field, by IAM300 Strategy as one of the World’s Leading IP Strategists, and by The Legal 500 as a top practitioner. Ricardo has an LL.M. degree in IP Law, summa cum laude, from The George Washington University, and a Master’s degree in Law & Regulation from a top Brazilian university. 

  • 52 Years After Killing Licensee Estoppel, Will the Supreme Court Spare Assignor Estoppel? (RECORDING)

    Contains 6 Component(s), Includes Credits

    Since the Supreme Court abrogated the doctrine of “licensee estoppel,” in Lear v. Adkins in 1969, commentators have suggested that “assignor estoppel” should be abrogated for the same reasons. In other words, the public policy that encourages invalidity challenges to eliminate “bad” patents and allow competition free from bad patent monopolies should also kill assignor estoppel. Indeed, after Lear some courts refused to apply assignor estoppel, but the Federal Circuit first found assignor estoppel viable in 1982 and has since continued to apply the doctrine to bar assignors and those in privity with assignors from raising invalidity challenges in district court actions.

    Since the Supreme Court abrogated the doctrine of “licensee estoppel,” in Lear v. Adkins in 1969, commentators have suggested that “assignor estoppel” should be abrogated for the same reasons. In other words, the public policy that encourages invalidity challenges to eliminate “bad” patents and allow competition free from bad patent monopolies should also kill assignor estoppel.  Indeed, after Lear some courts refused to apply assignor estoppel, but the Federal Circuit first found assignor estoppel viable in 1982 and has since continued to apply the doctrine to bar assignors and those in privity with assignors from raising invalidity challenges in district court actions. 

    In Hologic v. Minerva Surgical, the Federal Circuit affirmed the district court’s grant of summary judgment that the doctrine of assignor estoppel barred Minerva from challenging the validity of the asserted patent.  The Supreme Court granted certiorari to address “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”  Our panelists, chief IP counsels at technology and life science companies and two experienced litigators, will explain the origins and policies underlying assignor estoppel, address the disparate views of the parties and various amici including IPO, and the implications of assignor estoppel, whether it lives or dies, on the modern IP economy, including employee invention assignment agreements, the sale of patents and employee mobility.

    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.

    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.

    Robert Isackson

    Partner

    Leason Ellis

    Robert Isackson is an IP litigation partner at Leason Ellis.  He has led teams in over 60 patent, trade secret and other IP cases filed in more than 20 states, involving a wide spectrum of technologies. Rob’s practice includes appellate work and providing strategic counseling, freedom-to-operate opinions, and IP due diligence.  He has obtained more than two hundred U.S. patents, and advised on dozens of IP transactions.  Rob led the team that wrote IPO’s amicus brief in Minerva v Hologic and a is a member of IPO’s Amicus Brief, Trade Secret, and US Patent Law CommitteesRob also is President-Elect of the New York Intellectual Property Law Association.

    Gillian Thackray

    Vice President, Chief Counsel for IP

    Thermo Fisher Scientific

    Gillian Thackray is an award-winning lawyer and expert legal and business strategist. Her multi-faceted approach integrates law, business, and practicality to help business partners reach their goals. Her specialties include: Business Strategy, Litigation and Dispute Resolution, Commercial Advice, Complex Transactions, Business Negotiations, Licensing, Risk Mitigation, New Product Development, Intellectual Property Strategy, Technology, Regulatory Compliance, and Legal operations. 

  • How Allyship Advances Diversity & Inclusion in the Legal Profession: Part 3 - Practical Tips for Pulling it All Together (RECORDING)

    Contains 6 Component(s), Includes Credits

    Allyship is the practice of promoting and advancing social justice, diversity, and inclusion through supporting members of an oppressed or marginalized group. The third and final part in our three-part allyship series will discuss the learnings from the first two sessions, bringing together different perspectives to provide practical tips for improving allyship personally, organizationally, and systemically.

    Allyship is the practice of promoting and advancing social justice, diversity, and inclusion through supporting members of an oppressed or marginalized group. The third and final part in our three-part allyship series will discuss the learnings from the first two sessions, bringing together different perspectives to provide practical tips for improving allyship personally, organizationally, and systemically.

    Rachael Rodman (Moderator)

    Partner

    Ulmer & Berne, LLP

    Rachael Rodman is an accomplished litigator who concentrates her practice in the area of IP litigation, and has experience representing clients in variety of cases involving patent, trademark, copyright, and trade secret claims. She also has experience in complex business litigation, and has litigated cases involving contract, shareholder, and non-compete disputes. In addition to her substantial trial experience in state and federal court, Rachael has extensive appellate experience, in both Ohio and federal appellate courts. Prior to beginning her litigation practice, Rachael clerked for the Ohio Court of Appeals for the Second Appellate District.  She has participated in arbitrations through the American Arbitration Association and the dispute resolution forums of the Financial Industry Regulatory Authority and the American Health Lawyers Association.

    Brian Brookey

    Partner

    Tucker & Ellis LLP

    Brian Brookey has litigated intellectual property matters in district courts in numerous states, in U.S. Courts of Appeal, and before the International Trade Commission and the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Brian represents a broad range of companies across numerous industries and technologies, including telecommunications, computer software, lasers, construction, apparel, lighting, medical devices, automotives, consumer products, and electronic components.

    Serena Farquharson-Torres

    Senior Counsel

    Bristol-Meyers Squibb Company

    Serena Farquharson-Torres is senior counsel at Bristol-Myers Squibb Company where she is responsible for all aspects of patent procurement, counseling, due diligence, litigation and policy. She is located in Lawrenceville, NJ. Serena is focused on the global protection of the company’s innovation and brands. Serena works closely with R&D, manufacturing, and business colleagues to ensure meaningful exclusivity and freedom of operation for BMS products. Serena is also passionate about diversity and inclusion issues and is part of IPO’s Women in IP Committee and Diversity task force as well as the Diversity & Inclusion team of BMS legal department. Prior to joining BMS in 2016, Serena was Senior Counsel at Sanofi, Schering-Plough Corporation and in private practice. Serena has a B.S. in Chemistry from Howard University, Ph.D. in Biological Chemistry from the University of Minnesota and a J.D., from the University of North Carolina School of Law. Serena has frequently presented on IP topics on behalf of law associations and industry groups.

    Gloria Fuentes

    Executive Director, Corporate Transactions

    Merck & Co.

    Gloria Fuentes is an Associate Vice President at Merck & Co. Inc.  Gloria’s team manages the procurement of patents in support of Merck’s human health R&D efforts.  Gloria participates in Merck’s pro bono program, and partners with Legal Services of New Jersey to file U Visa and VAWA applications for victims of domestic violence.  Prior to joining Merck, Gloria worked at Schering-Plough, Inc. (2006-2009), Ropes & Gray LLP (1999-2002) and Fish & Neave LLP (2002-2006). Gloria has a J.D. from Columbia University, a Ph.D. from the University of Rochester and a B.S. from Cornell University. 

    John Harrity

    Partner

    Harrity & Harrity, LLP

    John Harrity has been involved in the patent field for 20 years. His current practice consists primarily of client counseling, and preparing and prosecuting patent applications. John has drafted and prosecuted hundreds of patent applications in a wide variety of electrical, mechanical, and electromechanical technologies. He excels at coming up to speed quickly on inventions and converting even the most difficult inventions into an understandable patent application. John’s practice further includes filing PCT applications and prosecuting patent applications before the Patent Offices in Europe, Japan, Korea, China, Canada, and many other countries. In addition to drafting and prosecuting patent applications in the United States and foreign countries, he also analyzes inventions for infringement and validity.

  • An Overview of Global Issues Based on IPOs Special 301 Comments (RECORDING)

    Contains 6 Component(s), Includes Credits

    This webinar will provide an overview of significant IP policy concerns across different countries and regions based on IPO’s comments made during the U.S. Trade Representative’s Special 301 review. The panelists will go around the world in one hour, noting issues that IP practitioners need to be aware of, and pointing out global trends in IP law and policy.

    This webinar will provide an overview of significant IP policy concerns across different countries and regions based on IPO’s comments made during the U.S. Trade Representative’s Special 301 review. The panelists will go around the world in one hour, noting issues that IP practitioners need to be aware of, and pointing out global trends in IP law and policy. 

    The Special 301 Report is the U.S. Trade Representative’s Congressionally mandated annual review of the global state of intellectual property rights protection and enforcement. Each year, USTR invites public participation in the review process and solicits comments to help in its assessment. IPO’s International Patent Law and Trade Committee (IPLTC) has lead IPO’s engagement in this public process and consolidated input from IPO committees and IPO member companies and firms to assist in the preparation of IPO’s comment letter. IPO’s comments, among other things, highlight many of the issues and concerns raised within IPO committee discussions throughout the year. Our panelists, who have been involved in the preparation of IPO’s comments, will cover issues such as trade secret protection, compulsory licenses, weak (or delayed) patent enforcement regimes, and issues in IP enforcement. 

    Stephen Bauer

    Retired

    Medtronic, Inc.

    Starting in 2018, Steve has been a Co-Chair (and now Immediate Past Co-Chair) of the IPO International Patent Law and Trade Committee. In this role, Steve worked as a member of the IPO Special 301 Comment team. This team consolidated input from IPO committees and members to prepare drafts of IPO’s Special 301 comment letters to the U.S. Trade RepresentativeBefore 2018, Steve was an active member and Vice Chair of the IPO Asian Practice Committee. 

     During Steve’s twenty years at Medtronic, Steve was Senior Legal Director - International IP and IP Policy, Chief IP Counsel – Cardiac Rhythm and Heart Failure, and Lead IP Counsel Neuromodulation. Prior to that he was IP Counsel at 3M representing various medical device businesses and handling IP transactions, particularly medical device acquisitions and divestitures. Following his recent “retirement” from Medtronic, Steve continues to volunteer for IPO.

    Dean Harts

    Chief Intellectual Property Counsel

    3M Innovative Properties Co.

    Dean Harts is the Chief Intellectual Property Counsel for 3M Enterprise Operations, which handles global engineering, manufacturing, and supply chain, among other operations. He also leads 3M’s Global Trade Secret Protection Program team.  

    Prior to his current role, for the past seven years, he was the Assistant Chief Intellectual Property Counsel for 3M’s international operations, with over 50 employees in more than 10 countries.  Prior to the international operations role, Dean served as the Assistant Chief Intellectual Property Counsel for 3M’s healthcare business, and 3M’s electro & communications business.  Before these IP management roles, Dean was IP counsel to several different 3M businesses in St. Paul, Minnesota and Austin, Texas.  Dean earned his Juris Doctor at Mitchell Hamline School of Law in St. Paul, Minnesota, and has been admitted to practice with the Minnesota bar, US District Court of Minnesota, and the US Patent and Trademark office.  Dean earned his Bachelor of Science degree in chemical engineering from the South Dakota School of Mines and Technology in Rapid City, South Dakota. 

    Sharon Reiche

    Senior Corporate Counsel

    Pfizer Inc.

    Sharon Reiche is the co-Chair of IPO’s International Patent Law & Trade Committee, and in this role she participated in IPO’s Special 301 comment process. She is also Chair of IPO’s Subcommittee on Compulsory Licenses and a member of IPO’s Pharmaceutical & Biotechnology Issues Committee and the Women in IP Law Committee. 

    Sharon is Senior Corporate Counsel, Global Intellectual Property Policy & Advocacy, Pfizer Inc. In her role she leads a team that works on intellectual property policies that advance the protection of Pfizer’s substantial investment in research and development. She holds a B.S. from the University of Massachusetts, Amherst, and a J.D. from Brooklyn Law School. She is admitted to practice law in New York.   

  • How Allyship Advances Diversity & Inclusion in the IP Legal Profession: Part 2 - The Necessity of White Male Allyship in the Legal Profession (RECORDING)

    Contains 6 Component(s), Includes Credits

    Allyship is the practice of promoting and advancing social justice, diversity, and inclusion through supporting members of an oppressed or marginalized group. In this webinar, the second in a series of three, speakers will focus on why it is imperative that the majority of the lawyer population – cisgender white males – need to be allies to their diverse colleagues and employees.

    Allyship is the practice of promoting and advancing social justice, diversity, and inclusion through supporting members of an oppressed or marginalized group. In this webinar, the second in a series of three, speakers will focus on why it is imperative that the majority of the lawyer population – cisgender white males – need to be allies to their diverse colleagues and employees. Speakers will share their perspectives on why allyship is important to them, what they have learned allyship requires of white men, and what actions they recommend other white men should take to better promote allyship. They will also share lessons learned about how to become a better ally and what can be done to improve allyship throughout your organization (and the legal field).

    Scott Barker (Moderator)

    Director of Global Patent Development

    Micron Technology, Inc.

    Scott Barker is director of Global Patent Development for Micron Technology, Inc., where he leads a team of attorneys, agents and engineers responsible for developing Micron’s intellectual property and fostering a culture of innovation. Scott is a member of the Board of Directors of Intellectual Property Owners Association and Intellectual Property Owners Association Education Foundation. Prior to joining Micron in 2007, Scott was senior patent counsel for Lexmark International, Inc. and was in private practice with the law firm of Dinsmore & Shohl, LLP. He earned his BS in Electrical Engineering from Wright State University, and his JD from the University of Dayton School of Law. 

    Darryl Frickey

    Assistant General Counsel, IP Law and Chief IP Counsel

    The Dow Chemical Co.

    Darryl Frickey is Assistant General Counsel, IP Law and Chief Counsel for The Dow Chemical Company where he leads the IP operations of Dow which include patents, trademarks, trade secrets, copyrights, IP strategies, IP enforcement / litigation, confidentiality, licensing, technology agreements, due diligence, and technology management and protection. Darryl attended Clarkson University where he obtained a Bachelors of Science degree. Afterwards, he obtained his law degree from the Capital University School of Law. Previously, Darryl was with Rohm & Haas, serving as Chief IP Counsel and Assistant General Counsel. Darryl is active in several IPO committees, including the Diversity & Inclusion Committee. 

    John Harrity

    Partner

    Harrity & Harrity, LLP

    John Harrity has been involved in the patent field for 20 years. His current practice consists primarily of client counseling, and preparing and prosecuting patent applications. John has drafted and prosecuted hundreds of patent applications in a wide variety of electrical, mechanical, and electromechanical technologies. He excels at coming up to speed quickly on inventions and converting even the most difficult inventions into an understandable patent application. John’s practice further includes filing PCT applications and prosecuting patent applications before the Patent Offices in Europe, Japan, Korea, China, Canada, and many other countries. In addition to drafting and prosecuting patent applications in the United States and foreign countries, he also analyzes inventions for infringement and validity.

    David Kappos

    Partner

    Cravath, Swaine & Moore LLP

    David J. Kappos is widely recognized as one of the world’s foremost leaders in the field of intellectual property, including intellectual property management and strategy, the development of global intellectual property norms, laws and practices as well as commercialization and enforcement of innovation‑based assets. Mr. Kappos supports the Firm’s clients with a wide range of their most complex intellectual property issues, including those pertaining to blockchain and financial technology (FinTech) as well as data security and privacy.

  • The USPTO IP Attaché Program: Structure, Goals, and the Current Situation in China

    Contains 2 Component(s)

    The U.S. Patent and Trademark Office’s (USPTO) Intellectual Property (IP) Attaché Program works to improve IP systems and to help U.S. stakeholders internationally. IP attachés directly assist U.S. businesses and advocate to improve IP policies, laws, and regulations abroad.

    The U.S. Patent and Trademark Office’s (USPTO) Intellectual Property (IP) Attaché Program works to improve IP systems and to help U.S. stakeholders internationally. IP attachés directly assist U.S. businesses and advocate to improve IP policies, laws, and regulations abroad. In this webinar, guests from the USPTO will provide an overview of the IP Attaché Program, and will participate in a “real life” review of the types of issues currently being addressed in China. Dominic Keating, Director of the IP Attaché Program at the USPTO, will discuss the U.S. Attaché Program’s structure, goals, and global reach. Duncan Willson and Conrad Wong, two IP Attachés based in China, will then discuss examples of actual challenges they typically see arise in their regions. A question-and-answer session will also take place, moderated by Piers Blewett from Schwegman Lundberg & Woessner, P.A. 

    This session will NOT be recorded, so please join us live for this informative presentation.  IPO is not applying for CLE credit for this webinar.

    Piers Blewett (Moderator)

    Principal

    Schwegman Lundberg & Woessner P.A.

    Piers Blewett is a patent attorney and principal at Schwegman Lundberg & Woessner. He is a Global Patent Fellow at the Federal Circuit Bar Association, and a former Chief Patent Counsel, General Counsel, and Vice President at Kimberly Clark Corporation. Piers’ practice includes strategic IP counseling, patent prosecution (US and foreign), patent validity, infringement analysis and opinions, risk assessment, global patent litigation, and IP due diligence work. Piers decided to pursue patent law after working as a mechanical engineer at a platinum mine in South Africa. He explains, “I’m an engineer at heart and have always had an interest in new technology.” He continues, “As a patent attorney, I see lots of new tech. By definition, an invention has to be ‘new’ in order to be patentable so this puts us at the leading edge of technology – and I like that.” Piers enjoys working with inventors and engineers. “They are positive, creative people who think about their world and want to make it a better place.”   

    Dominic Keating

    Director, Intellectual Property Attaché Program

    United States Patent & Trademark Office (USPTO)

    Dominic Keating is the Director of the Intellectual Property (IP) Attaché Program at the U.S. Patent and Trademark Office. He provides legal and policy direction to IP Attaches and IP Specialists based in Beijing, Guangzhou, Shanghai, Rio de Janeiro, Lima, New Delhi, Geneva, Bangkok, Kyiv, Abu Dhabi, Mexico City and Brussels. From 2006 to 2010, he served as the first IP Attaché in the U.S. Embassy in New Delhi, where he promoted high standards of IP protection and enforcement in India and other South Asian countries. He was awarded a Silver Medal by the U.S. Secretary of Commerce for his work.

    Duncan Willson

    IP Counselor for Beijing, China

    The Consulate General of the USA

    Duncan Willson serves as the intellectual property (IP) counselor at the U.S. embassy in Beijing, China, where he  promotes U.S. stakeholder interests by advocating for improvements in China’s protection and enforcement of intellectual property rights (IPR), including patents, trademarks, copyrights, and trade secrets. In addition, Mr. Willson serves as a resource for U.S. individuals and businesses in regard to IPR concerns in China.

    Conrad W. Wong

    Consul and Intellectual Property Rights Officer

    The Consulate General of the USA

    Representing the United States Patent and Trademark Office (PTO), Conrad Wong is serving his second appointment as Consul and Intellectual Property Rights Officer with the United States Consulate General in Guangzhou, China. He is responsible for American intellectual-property issues in southern and southwestern China as well as the Special Administrative Regions of Hong Kong and Macau.  He also handles intellectual property matters for the United States Consulates General in Shanghai and Wuhan. 

  • Overview of the Madrid System for International Registration of Trade Marks (RECORDING)

    Contains 8 Component(s), Includes Credits

    This webinar is intended to provide an overview of the Madrid System of International Registration of Trade Marks. Trade Mark owners face budget and time limitations when registering and maintaining a Trade Mark portfolio. Speakers will provide an introduction to the international route for registration of Trade Marks, together with various tips and best practices in the making use of the Madrid System.

    This webinar is intended to provide an overview of the Madrid System of International Registration of Trade Marks. Trade Mark owners face budget and time limitations when registering and maintaining a Trade Mark portfolio. Speakers will provide an introduction to the international route for registration of Trade Marks, together with various tips and best practices in the making use of the Madrid System.

    Topics include:

    • overview of the legal framework and the main features of the Madrid System,

    • overview of the role of the Office of origin, WIPO, and the Office of the designated contracting party,

    • tips for preparing to file an International Trade Application,

    • priority claims,

    • the 5-year dependency period,

    • substantive examination,

    • drafting of Trade Mark specifications for International Applications,

    • recording changes in the International Trade Mark Application,

    • transformation, and

    • subsequent designations

    Denis Croze

    Director

    World Intellectual Property Organization

    Denis Croze is Director of the Madrid Information and Promotion Division, Madrid Registry, Brands and Designs Sector of the World Intellectual Property Organization (WIPO) since September 2020. Prior to this, Mr. Croze held various positions at WIPO, such as Director of the WIPO Regional Office in ASEAN, located in Singapore (2012 -2020), Director of the Assemblies and Documentation Affairs Division (AADD) in the Office of the Director General (2010 -2012), Acting Director Advisor in the Executive Office of the Deputy Director General in charge of  the Copyright and Enforcement Sector (2006 – 2009),  Acting Director Advisor in the Executive Office of the Deputy Director General, Economic Development Sector (2004 - 2006), Head of the International Law Development Section (2002 – 2004) and Head of the Trademark Law Section in the Industrial Property Law Division of WIPO (1999 – 2002). Mr. Croze headed the Multilateral Affairs Department of the French Patent and Trademark Office (INPI) in Paris, France from 1996 to 1999, and was Consultant at WIPO to set up the WIPO Mediation and Arbitration Center from 1994 to 1996. His previous experiences were with the International Chamber of Commerce (ICC) in Paris as Head of the Legal Division (1990-1994) and as an Attorney with the Office of Legal Affairs of the United Nations in New York (1987-1990).

    Frances M. Jagla

    Member, Chair of the Trademark Practice Group

    Christensen O'Connor Johnson Kindness PLLC

    Frances Jagla advises clients across a wide range of industries, from Fortune 100 companies to startups, in all areas of trademark law. She focuses her practice in assisting clients with both U.S. and foreign trademark matters, including name development, search, clearance, filing, registration, and maintenance, as well as with regulatory issues, and with the enforcement of trademarks and copyrights. Fran provides vital counsel to clients navigating the complexities of brand approval and protection for companies in the pharmaceutical and other highly regulated industries, including medical devices, wine and spirits, cannabis and beyond. She also advises clients in trademark-related acquisitions, divestitures, licensing, and Internet domain name matters.

    Victoria Longshaw

    Partner

    Houlihan² Patent and Trademark Attorneys

    Dr. Victoria Longshaw, a partner of Houlihan2, is located in their Melbourne Head Office in Australia. She has over 15 years experience in intellectual property law. Victoria works in both patent and trademark areas and is a registered patent and trademark attorney in both Australia and New Zealand. She is also admitted to the Australian Federal Court as a solicitor.  She assists clients in prosecuting and enforcing trademark rights in Australia, New Zealand, Malaysia and Singapore. She has experience in proceedings relating to removal of trademarks for non-use, opposition to trademark registration before IP Australia, and infringement proceedings in trademark and copyright cases before the Australian Federal Court. Victoria also holds a PhD in Biochemistry.

  • PTAB: Year in Review - 2020 (RECORDING)

    Contains 8 Component(s), Includes Credits

    2020 was a year for the record books at the Patent Trial and Appeal Board (PTAB), which saw landmark decisions at the Federal Circuit and U.S. Supreme Court, revisions to practice and procedures, as well as continued discussion on the constitutionality of PTAB judges. Seasoned practitioners and corporate counsel will discuss 2020’s major developments and how they may impact patent litigation practice going forward before the PTAB and beyond.

    2020 was a year for the record books at the Patent Trial and Appeal Board (PTAB), which saw landmark decisions at the Federal Circuit and U.S. Supreme Court, revisions to practice and procedures, as well as continued discussion on the constitutionality of PTAB judges. Seasoned practitioners and corporate counsel will discuss 2020’s major developments and how they may impact patent litigation practice going forward before the PTAB and beyond.

    Specific topics will include:
     Summary of key developments
     Constitutionality of PTAB judges – ensuing developments on Arthrex
     Non-reviewability of PTAB decisions related to institution
     Discretionary denial – NHK Spring/Fintiv factors and proposed new PTAB rules

    Chris Comiskey

    IP Counsel

    Collins Aerospace, an operating unit of Raytheon Technologies Corporation

    Chris is IP Counsel for Collins Aerospace, an operating unit of Raytheon Technologies Corporation, where he is counsel for the Digital business while also coordinating consistent IP engagement with IP Counsel across the enterprise.  Chris serves as Co-Chair for IPO’s U.S. Post-Grant Review Committee. For the businesses he supports Chris has led IP strategy development and execution in invention harvesting, patent procurement, and post-grant monetization/enforcement/challenge phases. 

    Michael Houston

    Partner

    Foley & Lardner LLP

    Michael is a partner and intellectual property attorney with Foley & Lardner LLP, where his practice focuses on patent challenges before the USPTO, and patent litigation at the trial and appeal levels across a wide array of technology areas. Dr. Houston has litigated patents involving pharmaceuticals, medical devices, biorenewable fuels, microelectronics fabrication and packaging, electronics, and general chemical and polymer processing, among others. More recently, Dr. Houston has been heavily involved in inter partes review (IPR) proceedings at the U.S. Patent Office, and is vice chair of the firm’s Patent Office Trials Practice.

    Shaun Snader

    Vice President, Associate General Counsel, Intellectual Property

    United Therapeutics

    Shaun is the Vice President, Associate General Counsel, IP at United Therapeutics Corporation. In that role, Shaun is responsible for UT’s intellectual property matters, including patent litigation and post-grant proceedings. Prior to joining UT, Shaun worked at two law firms initially splitting his time between patent prosecution and litigation before focusing exclusively on litigation. Shaun has experience in a variety of technology areas, including pharmaceuticals, biotechnology, medical devices, semiconductor packaging, and software. 

  • How Allyship Advances Diversity & Inclusion in the IP Legal Profession: Part 1-Personal Experiences (RECORDING)

    Contains 7 Component(s), Includes Credits

    The focus of this first allyship webinar will be focused on speakers sharing personal experiences where they experienced good or poor allyship.  The speakers, in the first webinar, will also share practical tips on how to be better allies – especially in the IP field.

    The focus of this first allyship webinar will be focused on speakers sharing personal experiences where they experienced good or poor allyship.  The speakers, in the first webinar, will also share practical tips on how to be better allies – especially in the IP field. 

    Natalie Gonzales (Moderator)

    Partner

    Baker Botts

    Natalie practices in all areas of intellectual property law, including patent and trade secret litigation, patent prosecution, and IP and technology transactions. Ms. Gonzales works on patent litigation matters involving a variety of technologies, including mechanical and electrical devices and computer systems. Her litigation experience also includes copyright infringement and Lanham Act actions. Ms. Gonzales practices before the U.S. Patent and Trademark Office, preparing and prosecuting patent applications involving an equally wide array of technologies. Ms. Gonzales advises clients on the IP-related aspects of corporate and technology transactions, including mergers, acquisitions, joint ventures, joint development arrangements, licensing, contracting and employment arrangements. Ms. Gonzales assists clients in crafting and negotiating agreements relating to IP ownership, IP transfers, confidentiality, software development and other commercial arrangements, including MSAs and SaaS agreements.

    Joshua Simmons

    Partner

    Kirkland & Ellis, LLP

    Joshua focuses his practice on appellate and trial court litigation, intellectual property counseling and strategic portfolio management, as well as regulatory and legislative policy.  This “exceptional” and “creative” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR) litigates copyright, patent, right of publicity, trademark, trade secret, and unfair competition cases—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes.  In addition to maintaining a full-time litigation practice, Josh is a member of Kirkland’s Diversity & Inclusion Committee, and the Coordinator of its New York Kirkland Pride affinity group.  He also is a frequent speaker and author on emerging trends in intellectual property, as well as an active member of the intellectual property bar, including serving as Vice Chair of IPO’s Copyright Law & Anti-Piracy Committee, and a former Vice Chair of its Software-Related Inventions Committee.

    Ritu Singh

    Partner

    Dinsmore & Shohl LLP

    Ritu is a partner at Dinsmore & Shohl LLP focusing her practice on patent preparation and prosecution. She has a B.S. in Industrial Engineering from Northwestern University and an M.S. in Electrical & Computer Engineering and J.D. from The Ohio State University. She has significant experience working with intellectual property in the biomedical, mechanical, software, and electronic realms. She is actively involved as a community volunteer, ranging from roles as Treasurer of the South Asian Bar Association of North America Foundation to being Co-Chair of the Asian IP Professionals Resource Group of the IPO’s D&I Committee.  

    Richard Watkins

    Sr. Principal Legal Counsel

    Medtronic

    Richard is a senior principal legal counsel at Medtronic and has practiced IP Law for 20 years. He holds a BS in Chemistry from Morehouse College and a law degree from Georgetown University. Prior to Medtronic, Richard spent time in private practice and corporate in house positions in Philadelphia, Chicago, and Memphis. He has been active in the IPO Diversity and Inclusion committee and is currently serving as the Co-Chair of the Black IP Professionals in IPO.