Hear from leaders at the USPTO regarding the recent changes announced at the USPTO. Listen to the extent of the changes and how they impact applications currently in the pipeline.
- Discuss the procedural changes facing the USPTO and Copyright Office in their efforts to foster and protect intellectual property assets
- Evaluate the direction of IP regulation in the face of technological advancements that evolve more quickly than (related/accompanying) legislation
Deputy Commissioner for International Patent Cooperation
Gain insight into a variety of recent and proposed changes at the PTAB, tips for success, and best practices for appearing before the Board.
- Examine the updates to the Standard Operating Procedures, trial practice guidelines, and other potential changes on the horizon
- Explore the final claim construction standard to be applied in AIA trials
- Discuss potential changes to amendment practice
- Share best practices and preparations for PTAB proceedings
Acting Chief Judge
As a result of the Supreme Court's decision in Oil States and SAS Institute, the Federal Circuit's en banc decisions in WiFi One, Aqua Products, and other decisions, and proposed and implemented Rule Changes at the PTO, the PTAB is changing. Evaluate what these changes are and how these changes affect overall strategy.
- Adjust your strategy at the PTAB in view of the all or nothing institution imposition by SAS and the PTAB's implementation thereof
- Evaluate the impact on litigation of the PTAB's adoption of the Phillips standard for claim construction instead of the BRI
- Examine who can and/or must participate as a Petitioner as a real party in interest or as a Patent Owner in view of Sovereign Immunity concerns in view of recent developments at the Federal Circuit including WiFi One, RPX v. AIT, St Regis Mohawk Tribe, and more
- Learn about the new motion to amend procedures and how to navigate them as a patent owner and petitioner
- Review recent and upcoming case law to help you better prepare for future PTAB proceedings
Amster, Rothstein, Ebenstein, LLP
The pendulum has shifted in the nation’s highest court and the resulting decisions for intellectual property law could cause a tidal wave of uncertainty for IP practitioners. In 2019 the Supreme Court will hear argument in Return Mail Inc. v. United States Postal Service, in which they will determine whether or not the government is an entity with standing to challenge the validity of patents. This panel examines recent trends in Supreme Court decisions in intellectual property cases in advance of the court’s 2019 docket.
- Review recent SCOTUS decisions in cases involving intellectual property law including Carpenter v. United States, WesternGeco LLC v. ION Geophysical Corp., and Rimini Street v. Oracle
- Examine the possible ramifications of the Supreme Court ruling in Return Mail Inc. v. United States Postal Service and the resulting effects on patent litigation
- Discuss the current trend of patent decisions, including SAS v. Iancu, that defer to administrative law and the effects on future litigation strategy for IP practitioners
Finnegan, Henderson, FarabowGarrett & Dunner, LLP
Director of Patents
SAS Institute Inc.
After the Supreme Court’s decision in TC Heartland, many are considering the best choice when it comes to venue for potential litigation. Uncover the often overlooked path through the ITC, the similarities and differences in the litigation process, and when these differences can be used for a strategic advantage.
- Discuss the increasing industry impact of the TC Heartland decision and recent cases that provide additional guidance into the new rules of venue
- Examine trends in the number of district court filings to further refine filing strategies
- Review the basic steps of an ITC Section 337 investigation and the substantive and procedural ways it differs from typical district court infringement litigation
Fish & Richardson
Research reveals that a majority of in-house attorneys handling IP issues struggle with consistent communication from their Outside Counsel teams. Those working in a start-up capacity have an especially difficult time finding Outside Counsel teams that keep them apprised of the value of their assets throughout every step of the filing lifecycle. Learn which steps each side should take to ensure that Outside Counsel strategy aligns with In-House goals for portfolio monetization, and explore the pitfalls of deviating from an agreed upon approach.
- Maintain transparency throughout the life cycle of the filing process in order to allow in-house counsel to adjust resource allocation accordingly
- Recognize the client’s goals and ensure that filing strategies – both foreign and domestic – align with the client’s long-term objectives for their IP portfolio
- Explore communication protocols and SOPs to avoid any potential misperceptions that could affect the professional relationship with the client
- Discuss the benefits of arbitration for patent disputes in order to avoid squandering resources in litigation
General Counsel and Associate-Founder
Senior Managing Counsel, IP
U.S. District Judge
Law Vice President, Chief IP and CTO Counsel
As technology races forward, the law is often left lagging behind, leading to the challenges of applying decade’s old law to technological advancements that the law never contemplated. Explore how Artificial Intelligence will force the law to evolve at a more rapid pace than ever before, and how these changes will survive in the face of unrelenting innovation.
- Consider how to manage the ownership and licensing of AI generated innovation where multiple entities or elements contribute algorithms, training data, or results sets
- Review AI patent protection in light of the current issues facing subject matter eligibility for computer-related inventions
- Discuss the implications of AI as an inventor, author, or an infringer and the resulting consequences for the global IP landscape
- Investigate how AI may enhance the strength and efficiency of IP asset management
Vice President and Chief IP Counsel, General Counsel’s Organization – IP Law and Strategy Group
IEX Group, Inc.
SVP and Senior Counsel
Ropes & Gray LLP
This session will be an interactive session in which the executive of a company consults with external counsel relating to various blockchain/DLT initiatives. Work through this hypothetical scenario to gain insights into considerations to take into account surrounding:
- Impact on the patent portfolio associated with a company’s participation in popular open source initiatives
- International privacy considerations regarding the storage of data on the blockchain
- Potential anti-trust issues involving permissioned blockchains/DLT among industry members
- Potential use of blockchain/DLT to increase supply channel efficiency and minimize potential liabilit
Promote Diversity in IP Practices
- Examine how GCs and other leaders are implementing policies and procedures within their organizations to promote diversity among inventors, legal staff, and others
- Explore the amount of importance given to the diversity aspect of an RFP as compared other components
- Highlight ways individuals have contributed to diversity efforts within their organizations
- Discuss the impact of recent developments such as the SUCCESS Act
- Share ways successful women have been able to advance within a traditionally male-dominated field
Dive Deeper into Complex Concepts of Blockchain
- Explore the intricacies of blockchain/Distributed Ledger Technology (DLT) along with its endless potential
- Share potential strategies for integrating pilots
- Discuss the most cost effective steps to policing marks abroad
- Leverage foreign associates in the event of international litigation
Explore Alternative Enforcement Mechanisms: Design Patents, Trademarks, and Trade Dress
- Discuss the various protections provided by these often overlooked alternatives to traditional utility patents
- Uncover the versatility of alternate protections for GUIs, 2D and 3D models, and other items