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  • How to Avoid Common IP Pitfalls in Energy Industry Joint Ventures and Collaborations

    Contains 3 Component(s) Includes a Live Web Event on 08/11/2021 at 2:00 PM (EDT)

    Joint ventures (JVs) and other collaborations are becoming increasingly important across the energy sector. They can help lower costs, spread risk, meet technical challenges, open new markets, and navigate ongoing price volatility. But JVs and other collaborations also create many potential pitfalls for your IP portfolio.

    Joint ventures (JVs) and other collaborations are becoming increasingly important across the energy sector. They can help lower costs, spread risk, meet technical challenges, open new markets, and navigate ongoing price volatility. But JVs and other collaborations also create many potential pitfalls for your IP portfolio.

    Panelists will discuss practical tips for avoiding common IP pitfalls, including:

    • What due diligence should you perform before teaming up with another company (or even an industry competitor)?
    • What is the best way to define the scope of your rights and document your company’s IP contributions to the JV or collaboration?
    • Special considerations for protecting trade secrets, know-how, and data;
    • Ownership considerations for any jointly owned IP created during the course of the collaboration; and
    • Thinking ahead to the conclusion of the collaboration.

    Charles Collins-Chase

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    Charles Collins-Chase, a partner in Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP’s Washington, D.C. office, focuses on district court patent litigation and appeals before the U.S. Court of Appeals for the Federal Circuit, where he served as a clerk. He uses his chemical engineering background to help clients protect innovations in pharmaceuticals and biotechnology, energy and renewables, and chemical products. He has assisted numerous clients in Hatch-Waxman (ANDA) litigation.

    Pamela McCollough

    Associate Counsel

    Shell Oil Company

    Pamela McCollough earned bachelor’s degrees in both chemistry and English from The University of Alabama in 1979 and a law degree from the University of Houston. She is an associate counsel for Shell Oil Company and has been with Shell for over 30 years.

    KaRan Reed

    Assistant General Counsel

    BP America, Inc.

    KaRan Reed is based in Houston, TX and has been licensed to practice law for over 20 years. She is BP's Assistant General Counsel and attended the University of Houston Law Center.

  • Announcing the Re-Launch of the Diversity in Innovation Law Firm Toolkit (RECORDING)

    Contains 4 Component(s), Includes Credits

    The Diverse Inventors subcommittee of the Women in IP Committee is proud to launch a new and updated Law Firm Toolkit that assists legal professionals in law firms to team with their corporate and university clients to increase the diversity in in the innovation ecosphere of the their clients.  The panel will walk through the updated toolkit, how to use it, and discuss practical ways for in-house and outside counsel to partner to use the toolkit.

    The Diverse Inventors subcommittee of the Women in IP Committee is proud to launch a new and updated Law Firm Toolkit that assists legal professionals in law firms to team with their corporate and university clients to increase the diversity in in the innovation ecosphere of the their clients.  The panel will walk through the updated toolkit, how to use it, and discuss practical ways for in-house and outside counsel to partner to use the toolkit. 

    Tina Dorr

    Partner

    Cantor Colburn LLP

    Tina Dorr represents clients in a large range of technology areas, including chemical, material, life science, mechanical, and semiconductor technologies, as well as fiber and fiber composite technologies for consumer product applications, geotextile applications, and aerospace applications. Tina drafts and prosecutes U.S. utility, design, and plant patent applications, as well as manages and directs prosecution of foreign patent portfolios. She provides opinions, performs searches, counsels clients to develop effective worldwide patent protection, and provides technical support and opinions to Cantor Colburn’s Litigation Department in Abbreviated New Drug Application litigation. Prior to joining Cantor Colburn, Tina completed her doctoral thesis on enzyme catalysis, membrane protein structure, and redox chemistry.  She is also an active leader in the local and national IP community, currently serving as IPO's Co-Vice-Chair of the Next Generation Leaders Committee.

    Liam Evans

    Patent Agent

    Cantor Colburn LLP

    Liam Evans is a patent agent focusing on the fields of materials science and polymers, specifically on matters related to chemical engineering, nanomaterials, bioimaging, and soil polymers. Before joining Cantor Colburn, Liam’s undergraduate research in the Institute of Materials Science at the University of Connecticut focused on developing a nanodisc platform for drug delivery and bioimaging applications.

    Krista Kostiew

    Senior Patent Counsel

    Unilever

    Krista Kostiew is an Experienced Senior Patent Counsel with a demonstrated history of working in the consumer goods industry. Skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and Intellectual Property. She is a strong patent professional with a Juris Doctor (J.D.) from UNH School of Law.

    Carolyn Powell

    Associate

    Dinsmore & Shohl LLP

    Carolyn Powell is admitted to practice before the U.S. Patent and Trademark Office and has experience preparing and prosecuting U.S. and foreign patent applications in many technical areas, with a specialty in petroleum engineering. Prior to joining Dinsmore, she graduated from The Ohio State University Moritz College of Law. She now assists clients in all areas of intellectual property law, including patentability searches and opinions, patent application preparation and prosecution, patent infringement studies and opinions, and patent maintenance and enforcement.

    Claudia Stangle

    Partner

    Leydig, Voit & Mayer, LTD.

    Claudia Stangle is a partner in Chicago with over 20 years of experience and specializes in trademarks, trade dress, copyrights, false and comparative advertising, Internet law (including cybersquatting and domain name disputes), trade secrets, trademark and copyright licensing, right of publicity/privacy, and trademark acquisitions and divestitures.  Ms. Stangle has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), has represented clients in federal courts around the U.S., and has won over fifty ICANN proceedings relating to domain name dispute matters for her clients.  She also has experience in patent infringement and trade secret litigation.  In addition to her litigation and dispute practice, Ms. Stangle has extensive experience in trademark counseling.  She has counseled clients by providing search advice and protectability opinions regarding domestic and global trademark availability.

    Meredith Struby

    Managing Partner and Principal

    Meunier Carlin & Curfman LLC

    Meredith Struby helps her clients channel the potential of their IP assets. Her clients trust her to understand their technology and business needs and to use her deep understanding of patent law and practice to protect and manage their IP assets. She has a sharp sense for seeing opportunities and a unique ability to clarify complex issues, providing insightful counseling. She digs in to do what is needed while her forthright and humorous approach make it enjoyable for clients to work with her side-by-side to meet their business goals. She leads client-focused teams of attorneys, patent agents, paralegals, and staff by channeling and maximizing the strengths of each team member and encouraging the culture of service and support at MCC. She and her teams embrace the firm’s motto – value without compromise – delivering top notch legal services with a fee structure that allows for her and other experienced attorneys to have substantive involvement with clients’ portfolios and intellectual property strategies.

  • Introduction to Diversity & Inclusion Practical Guide 3.0: Part 1 (RECORDING)

    Contains 5 Component(s), Includes Credits

    IPO’s Diversity & Inclusion committee is excited to announce the launch of the newest version 3.0 of its Practical Guide to Diversity & Inclusion in the Legal Profession. This new version is being released in easily digestible sections with accompanying webinars. The first webinar introducing Section 101 of the Guide is scheduled for July 20. This webinar will cover the basics of Diversity & Inclusion within the legal profession - especially the IP profession. Additional webinars discussing additional sections of the Guide will be announced in the coming weeks. 

    IPO’s Diversity & Inclusion committee is excited to announce the launch of the newest version 3.0 of its Practical Guide to Diversity & Inclusion in the Legal Profession. This new version is being released in easily digestible sections with accompanying webinars. The first webinar introducing Section 101 of the Guide is scheduled for July 20. This webinar will cover the basics of Diversity & Inclusion within the legal profession - especially the IP profession. Additional webinars discussing additional sections of the Guide will be announced in the coming weeks.

    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.

    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

    Vice President & Assistant General Counsel

    Bristol-Meyers Squibb Company

    Gloria Fuentes is Vice President & Assistant General Counsel for Bristol-Meyers Squibb. Previously, Gloria worked at Schering-Plough, Inc. (2006-2009), Ropes & Gray LLP (1999-2002) and Fish & Neave LLP (2002-2006). Most recently, Gloria was with Merck. Gloria has a J.D. from Columbia University, a Ph.D. from the University of Rochester and a B.S. from Cornell University. 

    Elaine Spector

    Partner

    Harrity & Harrity, LLP

    Elaine Spector is a patent attorney with over 20 years of experience in intellectual property law.  Her current practice consists primarily of prosecuting patent applications with a focus on electromechanical technologies. Prior to joining Harrity & Harrity, Elaine worked in private practice for over 15 years handling various intellectual property matters, including patent application drafting and prosecution, trademark prosecution and enforcement, as well as litigating complex patent cases in federal courts. Elaine’s extensive litigation experience provides her with a unique perspective in prosecuting patent applications.

    Claudia Stangle

    Partner

    Leydig, Voit & Mayer, LTD.

    Claudia Stangle is a partner in Chicago with over 20 years of experience and specializes in trademarks, trade dress, copyrights, false and comparative advertising, Internet law (including cybersquatting and domain name disputes), trade secrets, trademark and copyright licensing, right of publicity/privacy, and trademark acquisitions and divestitures.  Ms. Stangle has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), has represented clients in federal courts around the U.S., and has won over fifty ICANN proceedings relating to domain name dispute matters for her clients.  She also has experience in patent infringement and trade secret litigation.  In addition to her litigation and dispute practice, Ms. Stangle has extensive experience in trademark counseling.  She has counseled clients by providing search advice and protectability opinions regarding domestic and global trademark availability.

  • IP Case Law Mid Year Review (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will provide a roundup of this year’s most significant intellectual property cases. Our panelists are three litigators in private practice, all members of IPO’s Amicus Brief Committee. They will review the most significant decisions as of June 30 and give a sneak peek at coming attractions.

    2021 has been an active year for IP cases so far. The U.S. Supreme Court Supreme Court tackled THREE blockbuster cases: United States v. ArthrexGoogle v. Oracle, and Minerva v. Hologic. And while perhaps not issuing any blockbuster opinions, the Federal Circuit provided the IP law mill with some additional grist.   

    In Yu v. Apple, the Federal Circuit continued down the path of its prior decisions in Chamberlain and American Axle holding a patent on a tangible object to be ineligible subject matter. In Mylan v. Janssen, the Federal Circuit held that the USPTO Director’s exercise of discretion to deny institution of inter partes review is unreviewable. On the trademark side, Authentic Apparel v. United States involved a trademark license dispute, and QuikTrip West v. Weigel clarified likelihood of confusion analysis. 

    This webinar will provide a roundup of this year’s most significant intellectual property cases. Our panelists are three litigators in private practice, all members of IPO’s Amicus Brief Committee. They will review the most significant decisions as of June 30 and give a sneak peek at coming attractions.

    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

    Trademark Attorney

    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.

  • Waiving IP Protections to Address COVID-19: The WTO Proposals and Ensuring Equitable Access to the Vaccines (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will share information about the status of the various TRIPS waiver proposals, the logistics of negotiations at the WTO, and the roles of various U.S. governmental and international agencies. Our esteemed panel will discuss questions such as whether a waiver would actually increase access to vaccines and other technologies, the impact of a waiver on innovation, impediments to ensuring broader vaccine access, and the effectiveness of ongoing voluntary efforts to distribute the vaccine and other important technologies more widely.

    Last year India and South Africa proposed to the World Trade Organization’s Council for Trade-Related Aspects of Intellectual Property Rights to “a waiver from the implementation, application and enforcement” of “intellectual property rights such as patents, industrial designs, copyright and protection of undisclosed information” under the TRIPS agreement related “to prevention, containment or treatment” of COVID-19. The proposal sparked a global debate about whether the waiver is an effective means to address the vaccine shortage or instead inaccurately portrays IP as a barrier to rapid innovation, R&D collaboration, and ample manufacturing of COVID-19 technologies.

    The U.S. initially opposed the proposal, but in 2021 U.S. Trade Representative KATHERINE TAI announced U.S. support for “waiving intellectual property protections for COVID-19 vaccines.” In May, several countries and delegations including India and South Africa circulated a revised proposal that would apply to “health products and technologies including diagnostics, therapeutics, vaccines, medical devices, personal protective equipment, their materials or components, and their methods and means of manufacture for the prevention, treatment or containment of COVID-19.” The revision also proposes that the waiver remain in effect for three years after adoption unless the General Council determines that “exceptional circumstances” justify extending the waiver.

    Then, in June, the European Union sent communications to the WTO General Council and to the WTO TRIPS Council regarding increasing the global supply of COVID-19 vaccines , which were intended to provide an alternative to the waiver proposal.  The EU says waiving IP protections would not increase the supply of or equitable access to vaccines. It instead recommends that the WTO agree on a global initiative to minimize export restrictions, encourage voluntary license agreements between vaccine developers and manufacturers in developing countries, and clarify existing provisions in the TRIPS agreement that already permit limited compulsory licenses.

    The TRIPS Council will engage in text-based negotiations about the proposed waiver over the coming months. This webinar will share information about the status of the various proposals, the logistics of negotiations at the WTO, and the roles of various U.S. governmental and international agencies. Our esteemed panel will discuss questions such as whether a waiver would actually increase access to vaccines and other technologies, the impact of a waiver on innovation, impediments to ensuring broader vaccine access, and the effectiveness of ongoing voluntary efforts to distribute the vaccine and other important technologies more widely.

    Tanuja Garde

    Corporate Vice President, Intellectual Property & Licensing

    Raytheon Technologies

    TanujaGarde is Raytheon Technologies’ CorporateVice President, Intellectual Property & Licensing and has held thisposition since April 2020. Prior to this position, she held IP leadership rolesin other large companies. She also served in the US Government as the DeputyAssistant USTR for IP and Innovation, where she was the lead negotiator inseveral bilateral and multilateral IP and trade negotiations. Prior to her workin the government, Tanuja worked at large international law firms and alsotaught and conducted research in international and comparative patent law atthe University of London's Queen Mary IP Research Institute, where she held aHerschel Smith Research Fellowship, as well as at the Max Planck Institute forInnovation and Competition, where she was the head of the US Department. Tanujais a graduate of Duke University (with Distinction in Chemistry) and WashingtonUniversity School of Law.

    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.

    James Pooley

    Trade Secret Expert & Attorney

    James Pooley, PLC

    James Pooley founded his own firm in Silicon Valley in 2015, after serving for five years as the Deputy Director General of the World Intellectual Property Organization. His legal treatise, “Trade Secrets,” is updated semi-annually. He acts as co-counsel in trade secret and patent litigation, and acts as consultant regarding trade secret and cybersecurity risks. Earlier he was an IP litigator and partner at Morrison & Foerster and Milbank, among other firms. He is also the author of Secrets: Managing Information Assets in the Age of Cyberespionage. 

    Tony Rollins

    European Patent Attorney

    Rollins IP Strategies Ltd.

    Tony Rollins of Rollins IP Strategies Ltd. is an experienced IP practitioner who is based in the United Kingdom. At the Wellcome Foundation, he handled a diverse range of work in the pharmaceutical, diagnostic, animal health, environmental health and hygiene areas. He later served as Vice President of Intellectual Property of Amersham plc, headed up the European Patents group of MSD, and also led MSD’s Japanese patent department. Tony is the current chair of the International Liaison Committee and the former President of the Chartered Institute of Patent Attorneys. He is President of the Global Network of National IP Practitioner Associations.

  • The Impact of the Brazilian Supreme Court Decision on the Patent Term (RECORDING)

    Contains 7 Component(s), Includes Credits

    In May, the Brazilian Supreme Court issued a landmark decision declaring unconstitutional the 10-year minimum patent term guarantee. The decision impacts more than 30,000 pending patent applications and patents. In addition, the Supreme Court ruled that the decision applies retroactively to pharmaceuticals and medical device patents. Brazilian Patent and Trademark Office (BRPTO) is already notifying patent holders of the reduction of the patent term in each affected patent. The Supreme Court decision represents a major change in the Brazilian Patent System.

    In May, the Brazilian Supreme Court issued a landmark decision declaring unconstitutional the 10-year minimum patent term guarantee. The decision impacts more than 30,000 pending patent applications and patents. In addition, the Supreme Court ruled that the decision applies retroactively to pharmaceuticals and medical device patents. Brazilian Patent and Trademark Office (BRPTO) is already notifying patent holders of the reduction of the patent term in each affected patent. The Supreme Court decision represents a major change in the Brazilian Patent System.

    Please join us as we cover a variety of topics relating to the Supreme Court decision, including:

    • • The decision in a nutshell, highlighting the main conclusions;
    • • Practical aspects for applicants and patent holders considering the new patent term regime in Brazil.  

    Isabelle Clauss

    Senior Corporate Counsel - Patents

    Bristol-Meyers Squibb Company

    Isabelle Clauss is a Senior Corporate Counsel at Bristol-Myers Squibb where she focusses on patent and regulatory exclusivities of biological assets and cell therapy.  As part of her role, Isabelle serves as regional IP counsel for Latin America including Brazil.

    Roberto Rodrigues

    Partner

    Licks Attorneys

    Roberto Rodrigues is an experienced lawyer representing industry leading companies in patent litigation matters and patent oppositions.  Roberto has worked on the most high profile trials in patent matters in Brazil. Additionally, he advises companies on issues related to cybersecurity and antitrust. Roberto earned an LLM from Stanford Law School, where he was Lead Editor of the Stanford Technology Law Review. Roberto joined Licks again in 2019 after working at Quinn Emanuel Urquhart & Sullivan, LLP in New York City. He has also published articles in technology law journals around the world.

    R. Craig Tucker

    Patent Counsel

    Eli Lilly and Co.

    R. Craig Tucker has been a patent attorney with Eli Lilly and Company for 21 years where he has been involved in global patent procurement, portfolio management, international IP enforcement and IP Law advocacy.  An active member of various national and international IP Law associations, Craig has been an advocate for the equitable development of IP law globally.  Craig has a Masters of Biology/Biophysics from Purdue University (’90), and a J.D. from Indiana University School of Law, Indianapolis (’98), and 6 years of experience in bioanalytical assay development prior to entering the practice of IP law.

  • Learn More About the Counterfeit Goods Seizure Act: Enforcing Design Patents at the U.S. Border (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will cover the status of the legislation, details on how CBP uses its existing authority is used for trademark and trade dress enforcement, and provide examples of how design can be used by right holders to combat counterfeiting.  Speakers will also discuss how other countries enforce design patents at their borders and answer questions during a Q&A session at the end.

    In 2019, the Counterfeit Goods Seizure Act of 2019 (CGSA) was introduced in the U.S. Senate to provide additional enforcement tools to U.S. Customs and Border Protection (CBP).  Members of Congress are preparing to reintroduce this bill this Congress.  The bill would amend Title 19 of the U.S. Code to provide CBP with discretionary power to enforce U.S. design patents at the U.S. border similar to its current authority to enforce registered trademarks and copyrights. As counterfeiters and trademark infringers have become more sophisticated in bypassing CBP with new counterfeiting techniques, brand owners and the government have considered increased design patent enforcement as a potentially effective response.

    This webinar will cover the status of the legislation, details on how CBP uses its existing authority is used for trademark and trade dress enforcement, and provide examples of how design can be used by right holders to combat counterfeiting.  Speakers will also discuss how other countries enforce design patents at their borders and answer questions during a Q&A session at the end.

    Dana Colarulli

    Executive Director

    Licensing Executive Society International (LESI)

    Dana Colarulli is a DC-based attorney and senior government affairs professional with more than two decades of experience working on legal-related technology policy and intellectual property issues in and with the private sector, the Executive Branch, and the U.S. Congress.  He is currently serving as the executive director of the Licensing Executive Society International (LESI), an umbrella organization of 33 national and regional associations for executives licensing intellectual property and related technology.  He also consults on IP policy and legislative issues domestically with the American Continental Group (ACG). Previously, he served as the director of the Office of Governmental Affairs as a member of the Executive Management team at the USPTO from 2009-2019.  Prior to the USPTO, he served as director of government relations and legislative counsel for Intellectual Property Owners Association.

    Elizabeth Ferrill

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner LLP

    Beth Ferrill is a partner in Finnegan’s Washington, DC office, where she counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical devices, transportation and construction vehicles, and graphical user interfaces and icons. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign in countries, and argued appeals before the PTAB. Beth currently serves as the co-vice chair of IPO’s Industrial Designs Committee.

    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.

    Newton Vieira Jr.

    Nike Brand Protection Director – Americas

    Nike, Inc.

    Newton Vieira Jr. is the NIKE Americas Brand Protection Director with a Law Degree from the Universidade do Vale do Itajai and certifications in Civil Litigation and Tax Law from Universidade Católica of São Paulo(PUC). Newton graduated from law school in 1998 and while attending school he was a bailiff of the Court of Camboriu in Santa Catarina, Brazil. After graduating, he joined the intellectual property law firm Garé & Ortiz do Amaral of São Paulo, where he later became partner. While working with this law firm, he was in charge of brand protection for several major companies. In 2012, he began his career with NIKE as Brand Protection Manager for Brazil and quickly took over as the Latin America Brand Protection Director. For the past three years Newton has been the director of brand protection for both North America and Latin America. 

  • Inventor Diversity: How to Obtain and Leverage Inventor Gender Diversity Metrics (RECORDING)

    Contains 5 Component(s), Includes Credits

    The process of getting your corporation’s diversity in innovation metrics sounds simple until you actually try to do it. This panel will walk the audience through the practical steps of how to generate data indicating the extent of gender diversity amongst an entity's inventor community.

    The process of getting your corporation’s diversity in innovation metrics sounds simple until you actually try to do it. This panel will walk the audience through the practical steps of how to generate data indicating the extent of gender diversity amongst an entity's inventor community. Justin Cook will talk about his experience getting this data from an in-house attorney perspective at the Nielsen Company. Suzanne Harrison will discuss best practices she’s seen from her work with various organizations and David Andrews, at AON, will talk about how his company can be hired to generate this data based on publicly available data. The panelists will also talk about the opportunities to leverage this data to drive organizational change by reporting metrics on a regular cadence while iterating on an entity's internal efforts to improve inventor gender diversity. 

    David Andrews

    Chief Data and Analytics Officer - Intellectual Property

    Aon IP Solutions

    David Andrews is Chief Data and Analytics Officer - IP at Aon IP Solutions. Previously, he founded Legal Analytics, a patent analysis company that focused on deep patent practitioner knowledge which was extended through cutting-edge machine learning and natural language processing techniques. Mr. Andrews started as a Software Developer at Microsoft, writing code for Windows and other products. He stayed at Microsoft as a Patent Agent while attending law school and clerked at the Western District of Washington. He subsequently spent another 10 years at Microsoft as an In-House Patent Attorney, where he led the Cloud and Big Data patent portfolio teams. Mr. Andrews is passionate about creating results that are scientifically validated and backed by real legal experience.

    Justin Cook

    Associate General Counsel, Intellectual Property

    Nielsen

    Justin Cook counsels the Nielsen Company's corps of researchers and product developers to build and maintain a robust intellectual property portfolio that safeguards the technology investments and years of field experience that has gone into making Nielsen the trusted independent worldwide source of audience measurement underpinning the media industry.  Justin continues to lead efforts at Nielsen to measure and report inventor gender diversity metrics internally on a regular basis.  Justin is a member of the Intellectual Property Owners Association's (IPO's) Diverse Inventors Subcommittee, where he works with a global group of IP professionals toward improving diversity and inclusion in innovation. 

    Suzanne Harrison

    Founder & Principal

    Percipience LLC

    Suzanne S. Harrison is an author, patent futurist, and economist. She works with companies to help them realize the true value of their intellectual property. Suzanne has devoted her career to IP realization and exploitation. She works with  technology-driven companies at both transactional and strategic levels. Her specialties are quantifying legal risk, forecasting patent trends and helping companies place IP bets now to ensure access to innovation and markets in the future. She is a Founder and Principal of Percipience LLC, a board-level advisory group focused on IP strategy, management, and quantifying and mitigating IP risk. Her work with clients gives her a unique view of the inner workings of the public market for patents, as well as the ability to see patterns and predict ways in which markets will fluctuate and develop. Since 1995, she has led a group called the ICM Gathering, an invitation-only group of 20 companies that meet regularly to define, create, benchmark and test best practices in IP management. Her books draw on her work with the Gathering, and feature success stories of companies leading the way in innovative IP management. She holds an undergraduate degree in economics from UC Davis, and an MBA from the University of Chicago. 

  • Inequitable Conduct and the Duty of Disclosure (RECORDING)

    Contains 9 Component(s), Includes Credits

    The duty of disclosure before the U.S. Patent Office and the associated defense of inequitable conduct in the courts are ones for which patent practitioners must constantly stay knowledgeable. While some things remain constant with the duty and defense, nuances continuously evolve. This panel brings a perspective from both the litigators’ and prosecutors’ points of view, with particular focus on the state of the law after GS Cleantech, the nuanced differences between the scope of the duty of disclosure between different Patent Office forums, and best practices and tips from the patent prosecutor’s perspective.

    The duty of disclosure before the U.S. Patent Office and the associated defense of inequitable conduct in the courts are ones for which patent practitioners must constantly stay knowledgeable.  While some things remain constant with the duty and defense, nuances continuously evolve.  This panel brings a perspective from both the litigators’ and prosecutors’ points of view, with particular focus on the state of the law after GS Cleantech, the nuanced differences between the scope of the duty of disclosure between different Patent Office forums, and best practices and tips from the patent prosecutor’s perspective.  

  • Patenting Computer Simulations in Europe Following Enlarged Board Case G1/19 (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar, which is part of our European Practice Webinar Series, will address whether, following the Decision G 1/19 on Computer-implemented simulations, something has changed with respect to the assessment of patentability and inventiveness in Europe. In this long-awaited decision, the Enlarged Board of Appeal (EBOA) of the European Patent Office concluded that computer-implemented simulations should be treated under the long-standing COMVIK approach for Computer-Implemented Inventions (CII) and can be technical.

    This webinar, which is part of our European Practice Webinar Series, will address whether, following the Decision G 1/19 on Computer-implemented simulations, something has changed with respect to the assessment of patentability and inventiveness in Europe. In this long-awaited decision, the Enlarged Board of Appeal (EBOA) of the European Patent Office concluded that computer-implemented simulations should be treated under the long-standing COMVIK approach for Computer-Implemented Inventions (CII) and can be technical.   

    Our panel, which includes a well-known European Patent Office (EPO) official and experienced attorneys based in Europe, will address the main teachings of the decision with respect to the patenting practice at the EPO. Issues to be discussed will include the implications of the following: 

    • For the purposes of assessing inventive step under this approach, a simulation can solve a technical problem producing a technical effect further to its implementation on the computer 
    • The EBOA recognized in accordance with existing case law that features which could contribute to the technical character of a claim could be the use of technical inputs (e.g., measurements) or outputs (e.g., a control signal for controlling a machine), or specific adaptations to the computer or its operation 
    • On the other hand, the EBOA stated that the simulation being based on underlying technical principles is by itself not sufficient to solve a technical problem 
    • According to the decision, it is not necessary for there to be a direct link to physical reality, and the same standard applies even if the simulation is claimed as part of a design process 

    Mike Jennings

    Partner

    AA Thornton

    Mike Jennings is lead partner for computer-related inventions and electrical technologies at AA Thornton, a Vice Chairperson of CIPA’s Computer Technology Committee and a member of the quality working group of the Standing Advisory Committee before the EPO (SACEPO). Mike spent half his career as an in-house patent attorney for IBM and half in private practice. At AA Thornton, he handles a substantial computer-implemented inventions workload at the EPO and UKIPO including computer simulation and modelling, quantum computing and artificial intelligence, as well as invention protection and oppositions for various applications of physics and electrical engineering.

    Tobias Kaufmann

    Partner

    Bardehle Pagenberg

    Tobias Kaufmann is a German and European patent attorney and a partner of the European IP firm Bardehle Pagenberg. He has more than 10 years of experience in prosecuting and litigating patents the fields of computer science and electrical engineering. In addition to his practical work on AI patent matters, he has also recently worked on amicus curiae letters to the EPO in the pending computer simulation referral case to the Enlarged Board of Appeal G1/19.   

    Heli Pihlajamaa

    Director, Patent Law

    European Patent Office (EPO)

    Heli Pihlajamaa, Director Patent Law for the European Patent Office (Munich, Germany), is responsible for supporting EPO policy by developing, strengthening and promoting the EPC, including proposals for legal changes, compliance of operations with patent law-related norms and case law. She advises EPO higher management on policy issues and legal amendments. She represented the EPO President in G1/19 in the oral proceedings before he Enlarged Board of Appeal. Before joining the EPO, she worked in both the private and public sectors and taught at the Technical University in Helsinki, Finland. She studied Law at Helsinki University and at Max Planck Institute in Munich.

    James Signor

    Partner

    Leydig, Voit & Mayer, LTD.

    James Signor, a partner of Leydig, Voit & Mayer, LTD., is a U.S. Patent Attorney located in Leydig’s Frankfurt, Germany office and primarily focuses his practice on serving European clients in all aspects of U.S. intellectual property law. His practice includes drafting and prosecuting patents in diverse technologies in the mechanical, electrical and computer fields with an emphasis on emerging technologies such as AI and Blockchain. In addition to his patent prosecution practice, he works closely supporting clients in making informed business decisions and in enforcing and commercializing their IP.