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

    Contains 5 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 7 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 7 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 6 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.

     

  • Videoconferencing at the EPO (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will provide an overview of how videoconferencing is being relied on increasingly for formal hearings at the European Patent Office – for examination, oppositions and appeals – and how this provides an option for applicants/proprietors and opponents to participate or observe from their home countries.

    This webinar will provide an overview of how videoconferencing is being relied on increasingly for formal hearings at the European Patent Office – for examination, oppositions and appeals – and how this provides an option for applicants/proprietors and opponents to participate or observe from their home countries.  The speakers, from both private practice and industry, will summarize the changes to EPO rules and procedures (including December 2020 updates), and then share their tips and experiences. They will also mention EPO management’s plans to promote videoconference examiner consultations, which have been an effective tool for US attorneys working with the USPTO.

    Mike Jennings

    Partner

    AA Thornton

    is a UK & European patent attorney and a partner at AA Thornton. Mike spent half his career in industry, within IBM’s IP law department, moving to AA Thornton in 2007. He leads AA Thornton’s electrical & ICT patent team and handles a large computer-implemented invention case load at both the EPO and UKIPO, and has vast experience with EPO oppositions and appeals for a wide range of technologies. Mike has been a member of CIPA’s Computer Technology Committee since 2006, and provides training for UK patent attorneys on patenting computer-implemented inventions including AI and computer simulation. He contributed to CIPA’s recent Amicus Curiae brief on computer simulation for the EPO Enlarged Board of Appeal, and CIPA’s review of the EPO’s patentability guidelines and its recent review of IP issues for AI.

    James Pickford

    Director and Assistant General Counsel

    Procter & Gamble

    is a European and UK qualified Patent Attorney. James provides Patent and Design support and advice primarily to the P&G fabric and home care business which includes well known brands such as Tide, Downy, Ariel, Fairy, Gain, Bold and Lenor. James has worked for P&G for 11 years, starting first in Brussels, Belgium and now working in Newcastle, UK.  Prior to starting at P&G, James completed a Diploma in Intellectual Property Law at the University of Manchester (UK), a PhD at the University of Sheffield (UK) in Molecular Microbiology and Biochemistry, and an undergraduate degree in Microbiology and Biotechnology at the University of Manchester (UK).

    Gwilym Roberts

    Honorary Secretary, CIPA and Partner

    Kilburn & Strode

    advises clients on all aspects of the patent process including IP audit and capture, IP filing strategies and patent portfolio management techniques. He acts for a range of clients including individuals, SMEs, Universities, and spin outs through to multi-nationals and handles a broad and diverse range of cases before the UK Patent Office, EPO and WIPO.

  • Sanofi, Vanda, and GSK, a New Year Voyage through the Land of Induced Infringement (RECORDING)

    Contains 6 Component(s), Includes Credits

    The Federal Circuit decisions in Sanofi v. Watson and Vanda v. Westward provide blue prints for possibly obtaining, based on Phase III clinical trial results, many more years of U.S patent exclusivity. Please join our expert panel of Meg Tomaska of Eli Lilly & Co., Sarah Hooson of Merck & Co. Inc., and Daniela Gill-Carey of UCB Biopharma SRL, moderated by Tom Irving of Finnegan, to learn all about it.

    The Federal Circuit decisions in Sanofi v. Watson and Vanda v. Westward provide blue prints for possibly obtaining, based on Phase III clinical trial results, many more years of U.S patent exclusivity. Please join our expert panel of Meg Tomaska of Eli Lilly & Co., Sarah Hooson of Merck & Co. Inc., and Daniela Gill-Carey of UCB Biopharma SRL, moderated by Tom Irving of Finnegan, to learn all about it. 

    Tom Irving (Moderator)

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    Tom Irving is a partner with Finnegan. He has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.

     

    Daniela Gill-Carey

    Associate General Patent Counsel

    UCB Biopharma SRL

    Daniela Gill-Carey holds a dual qualification as a European and as a UK Chartered patent attorney and is currently an associate general patent counsel within the UK IP department of UCB Biopharma. She supports all patent-related activities of various pre-clinical and clinical programs and biopharmaceutical technologies. Daniela started her career in the patent department of Procter and Gamble, before joining the pharmaceutical sector in 2008, first at TEVA and then at Novartis. Prior joining UCB, she led the IP department of Proteome Sciences, a British/German bioscience company. Before entering the patent profession, she received a PhD in Biochemistry from the University of Zurich and a MSc in Intellectual Property Law from the ETH in Zurich (Switzerland).

    Sarah Hooson

    Director of the Intellectual Property Group

    Merck & Co.

    Sarah Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ, having gained her initial legal patent experience while working at GlaxoSmithKline (GSK). Sarah’s present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. Sarah received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Widener University. Sarah gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK and MedImmune 

    Margaret Tomaska

    Patent Attorney

    Eli Lilly and Co.

    Margaret Tomaska is a patent counsel for Eli Lilly and Co. She earned her law degree from Georgetown University and has been with Eli Lilly since May 2018. Previously, she worked for GlaxoSmithKline. 

  • Standing to Sue: Lessons from Recent Cases on Licensing, Assignment, and Ownership (RECORDING)

    Contains 8 Component(s), Includes Credits

    Several recent cases illustrate the complexity of patent rights transfer and licensing. Our panel -- two in-house counsel in different technology sectors and a licensing expert in private practice -- will explain basic principles to help patent owners avoid pitfalls, recognizing that the devil is in the details of any transaction.

    The decision to sue for patent infringement is not one to be taken lightly. Plaintiffs can be frustrated if they find out they don’t have the right to do so after incurring the effort and expense of bringing suit. Likewise, a company that thinks it has rid itself of an unneeded patent does not want to be forced to be a plaintiff in league with the “buyer” of the patent. 

    Several recent cases illustrate the complexity of patent rights transfer and licensing. Our panel -- two in-house counsel in different technology sectors and a licensing expert in private practice -- will explain basic principles to help patent owners avoid pitfalls, recognizing that the devil is in the details of any transaction. Among the topics they will discuss: 

    • How questions might arise about an exclusive licensee’s right to sue. 
    • Lone Star Silicon v. Nanya (Fed. Circ. 2019), where what had been a common practice for monetizing patents resulted in the transferrer company being haled as a plaintiff into litigation.  
    • Immunex v. Sandoz (Fed. Cir. 2020) where an exclusive license did not transfer “ownership” and thus could not be used to establish double patenting. 
    • Gensetix v. Univ. of Texas (Fed. Cir. 2020) where sovereign immunity prevented a state university patent owner from being forced to join litigation by the exclusive licensee. 
    • The possible risks for patent holding companies that do not manufacture products or supply services based upon the patents they hold. If those patents are licensed to operating subsidiaries, the subsidiaries may find they lack sufficient rights in litigation to collect lost profits. 

    Kenneth Corsello

    IP Law Counsel

    IBM

    is an IP law counsel at IBM, where he focuses on drafting and negotiating patent licenses and assignment agreements. In his 15 years at IBM, he has worked on a variety of IP matters, including patent procurement, litigation, IP transactional agreements, and trade-secret related issues. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the U.S. Court of Appeals for Federal Circuit and an Associate Solicitor in the USPTO. Ken is the chair of the IPO’s Trade Secrets committee. 

    Brian Kacedon

    Partner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan. He is an authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional (CLP). He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.

    Kirby Lee

    Assistant Chief IP Counsel

    Ecolab

    Kirby Lee is assistant chief IP counsel at Ecolab, a global leader in water, hygiene, and energy technologies and services.  Kirby previously worked at the Department of Justice and the White House, representing the U.S. government in intellectual property litigation and serving as a senior policy advisor to the IP Enforcement Coordinator. He also served as a clerk to the Hon. Alan Lourie of the Federal Circuit. Kirby is co-chair of the IPO litigation committee.

  • Applying Arthrex to the TTAB: Are Administrative Trademark Judges Constitutionally Appointed? (RECORDING)

    Contains 6 Component(s), Includes Credits

    While the patent community awaits the resolution of Arthrex with regard to APJs, its applicability to Trademark Trial and Appeal Board judges is a question occupying trademark practitioners. Since Arthrex, at least two unsuccessful litigants before the TTAB have appealed to the Federal Circuit and asked that court to apply Arthrex to hold the appointments process for TTAB judges unconstitutional. Although the Federal Circuit has so far declined to rule on the applicability of Arthrex to TTAB judges’ appointments in those cases, the court will inevitably face that issue, whether in either of the two pending appeals squarely presenting it or in a future one. And, of course, the Supreme Court’s disposition of the questions before it will very likely inform the Federal Circuit’s holdings on the trademark side.

    On October 13, 2020, the Supreme Court agreed to review two questions bearing on the constitutionality of the process by which administrative law judges are appointed to the Patent Trial and Appeal Board. Each has its origins in the Federal Circuit’s decision a year earlier in Arthrex v. Smith & Nephew, which vacated a USPTO inter partes review after finding that USPTO Administrative Patent Judges’ (APJs) appointments by the Secretary of Commerce was unconstitutional. APJs “exercise[d] significant authority” in carrying out their responsibility to “oversee discovery,” “apply the rules of Federal Evidence,” “hear oral arguments,” “issue final written decisions containing fact findings and legal conclusions,” and “decide the patentability of the claims at issue.” The “discretion and supervision” provided by the Secretary of Commerce and the USPTO Director was insufficient to render them inferior officers because APJs could “independently render a final decision on behalf of the United States” and “the Director d[id] not have the sole authority to review or vacate any decision by a panel of APJs.” The Patent Act currently provides only a limited power to remove APJs. Consequently, the court found that APJs are “principal officers” who “must be appointed by the President and confirmed by the Senate; because they were not, the current structure of the Board violated the Appointments Clause.” The court remedied the violation by “partial invalidation of the statutory limitations on the removal of APJs” before remanding the action. In its May decision in Virnetx Inc. v. Cisco Systems, the Federal Circuit expanded Arthrex beyond inter partes review and other AIA trials.  

    While the patent community awaits the resolution of Arthrex with regard to APJs, its applicability to Trademark Trial and Appeal Board judges is a question occupying trademark practitioners. Since Arthrex, at least two unsuccessful litigants before the TTAB have appealed to the Federal Circuit and asked that court to apply Arthrex to hold the appointments process for TTAB judges unconstitutional. Although the Federal Circuit has so far declined to rule on the applicability of Arthrex to TTAB judges’ appointments in those cases, the court will inevitably face that issue, whether in either of the two pending appeals squarely presenting it or in a future one. And, of course, the Supreme Court’s disposition of the questions before it will very likely inform the Federal Circuit’s holdings on the trademark side.  

    TTAB judges are appointed and protected by the same statutory provisions as pre-Arthrex APJs. They oversee appeals of trademark examiner decisions, as well as adversarial proceedings between parties: oppositions (party opposes an application after publication in the Official Gazette) and cancellations (party seeks to cancel an existing registration), final decisions in which are subject to appeal to an Art. III court.  

    The USPTO’s briefs in Soler-Somahano v. Coca-Cola Co. and Schiedmayer Celesta GmbH v. Piano Factory Grp. argue that a different statutory regime gives the Director of the United States Patent and Trademark Office clear control over the actions of TTAB judges, and substantially greater control than the Arthrex panel said the Director had over administrative patent judges. Consequently, those briefs assert that Arthrex is not applicable in the TTAB context. Our panel of experts will review the Federal Circuit’s reasoning in Arthrex and consider the authority exercised by TTAB judges in fulfilling their statutory responsibilities to review examiner decisions and oversee oppositions and cancellations. They will discuss: 

    • Whether the USPTO Director exercises different levels of supervision and control over TTAB judges and their decision-making than over PTAB judges. 
    • The Director’s ability to decide matters before the TTAB on his or her own authority. 
    • Whether differences in the statutes and USPTO rules of practice governing TTAB and PTAB proceedings, including the non-appealability of PTAB institution decisions, preclude an expansion of Arthrex to TTAB judges. 
    • Whether the nature of the different rights adjudicated by PTAB and TTAB judges affects the analysis of the degree of authority the judges exercise. 

    Ted Davis (Moderator)

    Partner

    Kilpatrick Townsend & Stockton LLP

    is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he has practiced trademark, copyright, false advertising, and unfair competition law since 1990. Outside the office, he has taught as an adjunct professor at the Emory University and University of Georgia law schools and has testified before Congress on trade dress and Internet issues. He is currently a member of IPO’s U.S. Trademark Law Committee, as well as a past chair of the American Bar Association Section of Intellectual Property Law and a past member of the Board of Directors of the International Trademark Association.  Ted received his undergraduate degree from Davidson College and his law degree from the University of Virginia. He is a member of the Georgia, New York, and District of Columbia bars. 

    Adam Charnes

    Partner

    Kilpatrick Townsend & Stockton LLP

    is a partner at Kilpatrick Townsend & Stockton LLP and focuses his practice on appellate and constitutional litigation. A former law clerk to Supreme Court Justice Anthony M. Kennedy, Mr. Charnes has extensive experience in cases pending in federal and state courts of appeals across the nation, including the United States Supreme Court. Mr. Charnes recently successfully argued Thryv, Inc. v. Click to Call Technologies, L.P., 140 S. Ct. 1367 (2020). In addition to intellectual property matters, he has argued appeals involving such diverse areas of the law as ERISA, tax, product liability, contracts, business torts, trade secrets, environmental law, and Indian law. Mr. Charnes is a fellow of the prestigious American Academy of Appellate Lawyers. 

    Arti Rai

    Elvin R. Latty Professor of Law and co-Director, The Center for Innovation Policy

    Duke University Law School

    , Elvin R. Latty Professor of Law and co-Director, >span class="TextRun SCXW206512466 BCX0" xml:lang="EN-US" lang="EN-US"> at Duke Law, is an internationally recognized expert in intellectual property (IP) law, innovation policy, administrative law, and health law. Rai's research on innovation law and policy in biotechnology, pharmaceuticals, and software has been funded by NIH, the Kauffman Foundation, and the Woodrow Wilson Center.  She has served as the chief policy advisor to the Director of the U.S. Patent and Trademark Office; a member of the National Advisory Council for Human Genome Research; and as a public member of the Administrative Conference of the United States.  Rai has also served on, or as a reviewer for, numerous National Academies of Science committees. 

    Jeffrey Samuels

    Professor Emeritus

    The University of Akron School of Law

    is a Professor Emeritus at The University of Akron School of Law.  From August 1998 to June 2014, he served as the David L. Brennan Professor of Law and Director of the Center for Intellectual Property Law and Technology at The University of Akron School of Law.  From November 1987 until January 1993, Mr. Samuels served as the Assistant Commissioner (now Commissioner) for Trademarks at the United States Patent and Trademark Office. After leaving the PTO, Mr. Samuels engaged in the private practice of law. From 2003-2008, chaired the PTO’s Trademark Public Advisory Committee. Mr. Samuels currently serves as an expert witness and consultant in trademark matters and as a panelist under various domain name dispute procedures.

  • Chinese Patent Law Reform: Beyond the Headlines (RECORDING)

    Contains 7 Component(s), Includes Credits

    After a new patent law was formally adopted by China's National People's Congress on Oct. 17, many reports described the changes as almost all upside for those who own patents in the country, creating new mechanisms for patent protection and additional scope for damages. But our expert panel -- a global pharmaceutical attorney with long experience of the country, a veteran patent litigator in China, and a USPTO specialist, say to beware of overly upbeat forecasts.

    After a new patent law was formally adopted by China's National People's Congress on Oct. 17, many reports described the changes as almost all upside for those who own patents in the country, creating new mechanisms for patent protection and additional scope for damages.  

    But our expert panel -- a global pharmaceutical attorney with long experience of the country, a veteran patent litigator in China, and a USPTO specialist, say to beware of overly upbeat forecasts. They will discuss: 

    • The new pharmaceutical patent linkage system, modeled on the U.S. Chinese Hatch-Waxman process. This is a potential step forward, but details are lacking. Responsibility for developing and managing the regime are delegated to two regulatory agencies: the National Medical Products Administration (NMPA) and the National Intellectual Property Administration (CNIPA). They will not create binding regulations, but implement rules without the full force of law, leaving unclear how coordination with the courts will work.  The patent statute provides CNIPA a new authority to decide whether a pharmaceutical patent would cover a generic product, which could be cause for concern.  
    • The new law provides for punitive damages for patent infringement for the first time and allows the damages award to be increased by up to five times when the infringement is willful. But what constitutes intentional infringement is left undefined and will be developed over time. Some experts fear this discretion will be used as a weapon against foreign companies that are being sued by Chinese companies in China.  
    • The potential of a new Open Licensing scheme to encourage use of patents. A patentee can voluntarily declare in writing to the CNIPA that it is willing to license any entity or individual to implement the patent for specified royalties. CNIPA will publish information about available open licenses.