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Patent Bar Sees the First Impact of Patent Reform 2012 (NO CLE)

On-Demand Web Programs  On-Demand Web Programs    

Released on: Jan. 5, 2012

Please note that CLE credit is not available for this program. The Patent Bar Exam is an Exam with a historically low pass rate (though our students do very well!). We recommend 150-200 hours of preparation for the Exam, over about 2 months, ideally. So it's probably best to start thinking about it soon if you want to get it over before Patent Reform makes is potentially MUCH more difficult next fall. Our course has been updated to cover all of ...

Causes of License Disputes

Transcripts  Transcripts    

Recorded on: Jan. 9, 2012

RICHARD RAYSMAN: --she has a problem, as well. So we have three segments of the program today. And the first segment is going to be the causes of license disputes. So Chris is speaking. We actually have another speaker on her way, and I'll introduce her when she gets here. But the first segment is going to be from Chris Palestro, and I will let him take the podium. CHRISTOPHER PALESTRO: So good morning, and thank you for joining the discussion today. ...

Fault Lines in Licensing Agreements

Transcripts  Transcripts    

Recorded on: Jan. 9, 2012

RICHARD RAYSMAN: My panel, the first panel, was the causes of license disputes. So the next panel is the next step, the fault lines in licensing agreements. Really, if it starts to fall apart what kinds of actions, what are the issues involved with that? The two speakers today on our next panel are Aaron Rubin. Aaron is counsel in the San Francisco office of Morrison and Foerster and a member of the firm's Technology Transactions Group. His practice ...

Formal Dispute Resolution

Transcripts  Transcripts    

Recorded on: Jan. 9, 2012

GRANT KIM: That [? GN ?] is kind of tricky. RICHARD RAYSMAN: OK. Well, welcome back after our short break. And this is our final session in this program. And the session is on formal dispute resolution. What happens if any of these negotiations don't work trying to get a resolution and a licensing dispute goes to either suit or arbitration. We have two speakers. One of the speakers is Grant Kim, who's counsel to Morrison & Foerster. Grant has ...

USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012 (Audio-only)

Transcripts  Transcripts    

Recorded on: Jan. 24, 2012

SEEMA LAL MEEHAN: Good afternoon. My name is Seema Lal Meehan, and I'm a program attorney with Practising Law Institute. I'd like to welcome you to today's briefing, "USPTO New Rules of Practice for Ex Parte Appeals, Change and Simplification for 2012." Before we begin, I have a few administrative announcements. This briefing will be one hour in length. Please feel free to send questions at any time during the briefing. Please remember ...

Ethical Considerations in Reissue, Ex Parte and Inter Partes Reexamination Proceedings

Transcripts  Transcripts    

Recorded on: Feb. 9, 2012

GERALD M. MURPHY, JR.: OK, you hesitated, you lost. The next speaker is Barbara Mullin, and she's a partner in the Philadelphia office of Akin Gump. In terms of her background, she tries cases regularly in federal courts and arbitration panels and has argued before the Court of Appeals for the Federal Circuit. Her cases have involved diverse technological fields such as recombinant antibodies, medical devices and methods, pharmaceuticals, and semiconductor ...

Reexamination, Reissue, Certificate of Correction and new AIA Proceedings - Substantive and Strategic Overview

Transcripts  Transcripts    

Recorded on: Feb. 9, 2012

EUGENE T. PEREZ: Good morning, everyone. Just apologies ahead of time. I'm just getting over a cold, so my voice is not 100%, but no big deal, I think. Some of you actually look familiar, I think from last year. Before, we used to have, maybe, 30 some slides. And I know this first hour, there's a lot more slides this year. Well, really it's because we have this new law. And there's a lot more post-grant procedures available. The idea of this first ...

Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation

Transcripts  Transcripts    

Recorded on: Feb. 9, 2012

SCOTT MCKEOWN: All right. Welcome back to the afternoon session. We've got a couple interesting topics to discuss. In contrast to what we went over this morning, I'm going to start off talking about some strategic uses of not only the new AIA proceedings, but patent reexamination as it exists today, and as it's used today, especially as it relates to litigation. After my presentation we'll have discussion of ethics, the interplay with ethics considerations ...

Patent and Technology Licensing

Transcripts  Transcripts    

Recorded on: Feb. 27, 2012

JOSEPH YANG: So with that as a brief introduction, let me dive right into the first talk on patent and technology licensing. For those of you that are interested in following along, my slides are in the handbook on page 485, page 485. It's interesting that patent and technology licensing are almost always grouped together in CLE conferences because they are close cousins. After all, patents were designed to protect technology, but they're also very ...

Strategic & Transactional: The Continuing Importance of Opinions of Counsel in Light of Recent Court Decisions

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT ALTER: Just going to go right into our next session here, which is the continuing importance of opinions of counsel in light of recent court decisions. And for that, we have Jeff Zachmann to talk to us about that. And he is counsel on IBM's corporate litigation department. He's been with IBM since 1988. Since joining the litigation department in '92, has managed over 100 IP litigations for IBM, the majority being patent cases. So he has a lot ...

Ethics: Case Study Hypothetical from the USPTO to Trial

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SPEAKER 1: And I suspect that the person that normally introduces our next panelist is not here, so perhaps I need to do that. This is the ethics panel, and I am quite pleased to be introducing Ken Brothers, who was a classmate of mine from GW Law School. Currently, Ken is a partner in the IP practice of Dickstein Shapiro in the Washington, D.C. office, and focuses his practice on IP trial and appellate litigation. KENNETH BROTHERS: This is the last ...

Breakout Day Two, Part II: Litigation, Strategic and Transactional

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT: With our next panel, Patent Quality and Cost Effectiveness, we used from in-house, and we're very fortunate to have three excellent speakers from in-house to talk to us about their thoughts on the topic. To my immediate right is Serena Farquharson-Torres, who is the global head currently, and patent support for consumer health care, for Sanofi. She's responsible for developing and coordinating implementation of Sanofi's patent strategy for ...

Strategic & Transactional: Inter Partes Review and Post-Grant Review - New Regime and New Strategies

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT M. ALTER: OK, we're going to go ahead and get started. Good morning everyone. Welcome back. I'm going to talk about inter partes review and post grant review. We have new laws, new rules, and new strategies. It's a brave new world, so a lot to cover. We have two terrific speakers to talk about the subject this morning. To my immediate right is Bill Weimer, my colleague at Faegre Baker Daniels where he is a partner in the intellectual property ...

What's Keeping Corporate Counsel Awake At Night?

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT M. ALTER: Welcome back everyone. Our next panel is going to be our corporate counsel panel. We're going to talk about some of the issues that are keeping them up at night. And we're very fortunate to have a great group of panelists here to talk to us about these issues. On my immediate right, your left, is Mark Costello, who is vice president and general patent counsel and chief strategy counsel for Xerox. He's responsible for the development ...

Strategic & Transactional: What's Hot in Patent Licensing Law

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SPEAKER: OK, thank you, gentlemen. I think if there any questions, you guys will be around for a little bit? Because we're right up against the next session here, which is What's Hot in Patent Licensing Law? And for that we have Peter Brown, coming up on this side here to talk to us about that. Peter is the national leader of Baker-Hostetler's technology law practice, and resides in the New York City office. He maintains an active practice in technology ...

Strategic & Transactional: Product Clearances, Design-Arounds and Avoiding Injunctions

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT M. ALTER: Next panel is going to be relating to product clearances, design-arounds, avoiding injunctions, and related type of topics. And we are very fortunate enough to have two great speakers talking about these issues today. One of them is Greg Kirsch, two down from me there. Greg is a partner and registered patent attorney with Ballard Spahr in Atlanta. Greg leads the firm's software, electronics, and communications technology patent team, ...

Recent Cases

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

DOUGLAS R. NEMEC: Morning, everybody. And thank you again for coming out for the Patent Law Institute. It's great to see so many full seats out there. And those of you in the webcast audience, we can't see you, so rest assured. But we know you're there, and we appreciate your joining as well. And thanks also to Bob for the great keynote address. It looks like we've got an exciting couple of years ahead, certainly in the prosecution world, but in ...

PTO Keynote Address

Transcripts  Transcripts    

Recorded on: Mar. 5, 2012

SCOTT M. ALTER: OK. Thank you, John. It is now my pleasure to introduce our keynote speaker today, Robert Stoll. Bob was sworn in as Commissioner for Patents on October 5, 2009 and prior to that he was Dean of Training and Education at the patent office. In that capacity he directed efforts to train foreign officials and the public on all aspects of intellectual property. Before his appointment as dean in 2007, he served as director of the Office ...

Information Technology Law Institute 2012: Innovations in Apps, E-books, Cybersecurity, Mobile Technology, Privacy and Social Media

Handbook  Course Handbook

Course Handbook from the program Information Technology Law Institute 2012: Innovations in Apps, E-books, Cybersecurity, Mobile Technology, Privacy and Social Media, held April, 2012.

Non-Practicing Entity (NPE) Patent Owners and the Developing Law

Transcripts  Transcripts    

Recorded on: Apr. 4, 2012

PETER BROWN: Ready? OK, we had a quick change. And we're ready to go. You never have to know anything about patent law, until it hits your client. And then you've all of a sudden got to be an expert on patent law. And the typical way that these issues arise is you're happily working at your corporate office. And the general counsel or the CEO of the company gets a nasty letter from an entity that they've never heard of who says if they own a patent ...

Developments in Pharmaceutical and Biotech Patent Law 2012

Handbook  Course Handbook

Course Handbook from the program Developments in Pharmaceutical and Biotech Patent Law 2012, held April, 2012.

Decisions Impacting Patentability of Biotech and Pharmaceutical Inventions Under Section 101

Transcripts  Transcripts    

Recorded on: Apr. 9, 2012

DAVID K. BARR: Good afternoon, everyone. We're going to beginning the afternoon session right now. Hello, once again I'm David Barr. I'm the co-chair with Dan Reisner for today's program and just want to give you a brief overview of what we're going to be doing this afternoon before I get into my talk. I'm going to be talking about some recent developments that I'm sure you're all aware of in Section 101, patentable subject matter, including decisions ...

The Impact of the America Invents Act of 2011 and Therasense on Pharmaceutical Patent Prosecution

Transcripts  Transcripts    

Recorded on: Apr. 9, 2012

DANIEL L. REISNER: Our next two speakers on the AIA are from Pfizer. Dean Olson has over 25 years experience as a patent lawyer. He joined Pfizer in 1989 and is currently assistant general counsel with responsibility for numerous therapeutic areas. Mr. Olson has also been a product patent attorney with Pfizer covering many products, including Caduet, Norvasc, and Viagra. Prior to joining Pfizer, Mr. Olson was employed at United Technologies Corporation ...

The Cutting Edge: Reviewing Major Decisions in the Past Year and Pending Supreme Court and Federal Circuit en banc Petitions

Transcripts  Transcripts    

Recorded on: Apr. 9, 2012

DANIEL L. REISNER: Our second session is going to cover major decisions in the past year, including pending Supreme Court and Federal Circuit en banc petitions. Our speaker is Mr. Ben Hsing, a partner of mine at Kaye Scholer. He's been practicing in the area of patent litigation for the past 20 years. His practice includes patent litigation before US District Courts, the US international Trade Commission, and the Federal Circuit. His clients include ...

The Effect of the America Invents Act of 2011 on Pharma and Biotech Patent Practice

Transcripts  Transcripts    

Recorded on: Apr. 9, 2012

DANIEL L. REISNER: So I'd like to thank Ian and Dean for their excellent presentation on the AIA and their in-house counsel and patent prosecution perspective. We're going to start the next hour session on the AIA. First, I'm going to answer a couple of questions that we got from the web at the end of the last hour. Then we're going to try some new technology here, and going to poll all of you on your views on the AIA, and then we'll go into my presentation. DAVID ...

Featured Faculty/Authors
Lisa J. Sotto

Lisa J. Sotto ~ Hunton & Williams LLP

David W. Pollak

David W. Pollak ~ Morgan, Lewis & Bockius LLP

Katie M. Lachter

Katie M. Lachter ~ Hinshaw & Culbertson LLP