Protecting, Licensing and Enforcing AI Intellectual Property (RECORDING)
AI technology has emerged as the backbone of many products and services. The panel will walk through an invention disclosure to discuss strategies and best practices for protecting, licensing, and enforcing IP rights covering AI. The panel will also consider the trade-offs of available forms of IP protection for AI including patents, trade secrets, and copyrights. Among the topics that will be discussed: claiming strategies, disclosure obligations, maintaining secrecy, reverse engineering, infringement detection, and eligible subject matter.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Frank DeCosta III, Ph.D., leads Finnegan’s litigation section and co-leads the firm’s Artificial Intelligence and Machine Learning industry group. Frank has significant experience in patent litigation, client counseling, and providing opinions related to artificial intelligence and machine learning, computers, consumer electronics, software, medical devices, and information systems. As a first chair litigator, he directed litigation teams that obtained jury and bench judgments of more than $100 million. He frequently defends clients against patent infringement charges directed to complex technologies and has managed patent enforcement activities for clients in the United States, Europe, and Asia. Frank was recognized in Intellectual Asset Management’s Strategy 300 as a top IP strategist, and by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work. Legal Media Group has ranked him among top U.S. patent lawyers since 2011. Prior to joining Finnegan, Frank had ten years of experience as a scientist with leading technology companies, including six years with AT&T Bell Labs. His research included AI technology for medical systems.
Andrea Lynn Evensen
Lead IP Counsel, DI SW
Andrea Evensen is Lead IP Counsel for Siemens Digital Industries Software (DI SW). She is passionate about technology and being a trusted business partner and leader who helps companies develop, identify, and protect their intellectual property. Her focus is global strategic intellectual property management for digitalization-focused software and hardware companies located throughout the U.S., Europe, Asia, and the Middle East. As a registered U.S. patent attorney, Ms. Evensen provides strategic IP counseling in a wide range of emerging and digital technologies, including artificial intelligence, product lifecycle management, computer aided design and manufacturing, electronic design automation, simulation, and cloud topics. She counsels clients on every aspect of IP, including, inter alia, strategy, patent prosecution, freedom-to-operate/invalidity/risk/clearance analyses, licensing, IP-related commercial transactions, R&D agreements, mergers & acquisitions, due diligence, acquired company integration, IP-focused training, invention brainstorming/harvesting, pending/threatened litigations, copyright, and trademark protection. Her litigation experience includes district and appellate court practice, mediation, and arbitrations involving allegations of patent infringement, misappropriation of trade secrets, unfair competition, false advertising, fraud, and breach of contract. Ms. Evensen was named an Illinois Super Lawyers Rising Star in 2009, 2011, and 2012.
Lead Intellectual Property Attorney, IBM Patent Center
Brian Welle graduated from undergrad with a mechanical engineering major and a minor in computer science with a focus on artificial intelligence. After a few years in engineering Brian went to law school and upon graduation started working at a mid-sized software company called Open Access Technology International, where his work had him straddling the line between business law and IP. Brian then left to go to IBM for the first time, working out of IBM's Patent Center to focus on patent preparation and prosecution. After a few years Brian left to take an associate position with the IP boutique firm Shumaker & Sieffert, working on a assortment of hardware and software technologies. Most recently, Brian came back to IBM and is currently acting as a lead Intellectual Property Attorney, where Brian has focused on protecting IBM's AI IP, where this includes being personally assigned to develop IP protection for multiple IBM technology codes (all in AI) for various IBM products, providing numerous presentations for the IP law department regarding AI legal developments, acting as a member of IBM's AI Policy team, providing consultation on IBM's public comments regarding patent eligibility as it pertains to AI, and the like.