Seminar  Program

Intellectual Property Law Institute 2017


Select a Location:

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute

New York City Seminar Location

PLI New York Center
, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. (800) 260-4754.

New York City Hotel Accommodations

Crowne Plaza Times Square Manhattan, 1605 Broadway (at 48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.

The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute and rate code PLII. You can also Book Online- Kimpton.

Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. You can also book online.

Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 8:00 a.m. - 4:00 p.m.

8:00 Opening Remarks and Introduction

Speakers: David Bender

8:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

9:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

10:15 Networking Break

10:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

11:30 Lunch

12:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

12:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

2:15 Networking Break

2:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

2:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

4:00 Adjourn

Day Two: 8:00 a.m. - 3:15 p.m.

8:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

9:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

10:00 Networking Break

10:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

11:15 Lunch

12:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

2:00 Networking Break

2:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

3:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
Nashville Groupcast Location

The Nashville Bar Association, 150 4th Avenue, North, Suite #1050, Nashville, TN 37219. (615) 242-9272.

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
Ice Miller LLP, One American Square, Suite 2900, Indianapolis, IN 46282

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
Cleveland Groupcast Location

The Cleveland Metropolitan Bar Association, 1375 E. 9th Street – Floor 2, Cleveland, Ohio 44114. 216-696-2404.

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 8:00 a.m. - 4:00 p.m.

8:00 Opening Remarks and Introduction

Speakers: David Bender

8:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

9:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

10:15 Networking Break

10:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

11:30 Lunch

12:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

12:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

2:15 Networking Break

2:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

2:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

4:00 Adjourn

Day Two: 8:00 a.m. - 3:15 p.m.

8:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

9:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

10:00 Networking Break

10:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

11:15 Lunch

12:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

2:00 Networking Break

2:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

3:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
Galloway Johnson, 701 Poydras Street, 40th Floor, New Orleans, LA 70139

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
New Jersey Groupcast Location

New Jersey Institute for Continuing Legal Education, One Constitution Square, New Brunswick, NJ 08901-1520. 732-249-5100.

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: David Bender

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                        
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Siegrun D. Kane

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu

Licensing in the U.S.
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights
Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases
Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues
Speaker: William Sloan Coats

3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet
Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction
Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?
Speaker: Joseph P. Lavelle

3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Douglas “Chip” Rettew

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Brian W. Brokate

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • The impact of Supreme Court and CAFC § 101 decisions on eligibility of method of treatment and diagnostic inventions at the USPTO and in district courts.
  • The far-reaching impact of the Gilead v. Natco CAFC decision on obvious type double patenting in the United States.
  • How in-house IP counsel can foster innovation.
  • How to partner with early stage companies
  • The impact of various evolving federal and state cybersecurity standards and mandates
Speakers: Carolyn H. Blankenship, Leslie Fischer, Ph.D., Joel Wolfson, Gail H. Zarick

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Steven C. Bennett

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Steven C. Bennett ~ Park Jensen Bennett LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Brian W. Brokate ~ Gibney, Anthony & Flaherty, LLP
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Victoria A. Cundiff ~ Paul Hastings LLP
Leslie Fischer, Ph.D. ~ Principal Patent Attorney, I&D, NS, Ophtha Patent Group, Novartis Pharmaceuticals Corporation
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
Douglas A. (Chip) Rettew ~ Finnegan Henderson Farabow Garrett LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute
Atlanta Groupcast Location

Atlanta Bar Association, 400 International Tower, 229 Peachtree Street, NE, Atlanta, GA 30303-1601. (404) 521-0781.

Why You Should Attend

PLI’s Intellectual Property Law Institute is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, providing updates on cases, legislation and government agency developments that all IP lawyers need to know.

Listen to a panel of in-house IP counsel from prominent companies discuss best practices and strategies for confronting IP issues. Plenary sessions will address recent developments in privacy issues; trademark hot topics; exhaustion of IP assets; patent exhaustion and licensing issues; trade secrets; the right of publicity with respect to copyright law; and ethical issues for IP practitioners. Choose from four different breakout sessions, each addressing three topics that will focus respectively on recent developments regarding copyrights, licensing, patents, and trademarks.

What You Will Learn

  •  The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  • Recent developments in privacy law
  • An update of trademark law
  • Significant trade secret developments
  • Copyright issues in the fashion industry

Special Features

  • In-house panel will provide guidance on topics of current interest
  • Four separate breakout sessions
  • Complete overview of IP law
  • Earn one hour of Ethics credit

Who Should Attend

This program is designed for general practitioners, intellectual property attorneys, in-house counsel and anyone who needs a comprehensive update on the major areas of intellectual property law.


PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 9:00 a.m. - 5:00 p.m.

9:00 Opening Remarks and Introduction

Speakers: Robert P. Taylor

9:15 Privacy and Data Protection Law Developments 2017
  • The framework of US and EU privacy law
  • Transactional aspects of privacy
  • The EU’s forthcoming General Data Protection Regulation
  • Cybersecurity
  • Who regulates internet service provider privacy?
  • Warrants and extra-territoriality
  • The cross-border transfer crisis                                         
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 DMCA Section 512: Are The Online Safe Harbors Becoming Less Safe?
  • What is the balance between content owners and ISP’s?
  • How is the concept of “willful blindness” reconciled with Section 512’s statement that an ISP has no obligation to monitor its system to discover infringements?
  • What are the obligations of transmitting entities with regard to repeat infringers?
  • Can an entity that induces online infringement qualify for safe harbor protection?
  • Can an entity that substantially contributes to online infringement on its site qualify for safe harbor protection?    
Speakers: Raymond T. Nimmer

11:15 Networking Break

11:30 Trademark Hot Topics
  • The impact of shrinking borders on the extra-territorial application of the Lanham Act
  • What is permissible parody?
  • Attorney fee awards: application of the Octane Fitness "totality of circumstances test” to pre-litigation conduct
  • What constitutes a persuasive survey?
Speakers: Kathleen E. McCarthy

12:30 Lunch

1:45 Breakout Session No. 1a—Licensing

Licensing in Asia

  • Comparative review of (and recent developments in) IP laws of Asia and how differences affect specific license provisions
  • Common "gotchas" in cross-border licensing arrangements
  • Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
  • Specific issues that arise in licensing to joint ventures in Asia
  • Practical measures to protect your IP in Asia
Speaker: Charan J. Sandhu      

Licensing in the U.S.
 
  • Beware the career-killing mines
  • Collaborations in licensing: Who owns the results?
  • How to limit indemnification
  • Big data…big risks
Speaker: Mark S. Holmes

 Licensing in the EU

  • Key issues affecting licensing within the EU
  • Common pitfalls in licensing with EU partners
  • Recent EU law developments and their impact on licensing practice
  • What about Brexit – how will it impact my EU licenses?
Speaker: Lindsey J. Canning

1:45 Breakout Session No. 1b—Copyright

Internet-Related IP Issues

  • Licensing aspects arising for patent troll suits against cloud providers
  • Cloud agreement warning points:unilateral amendments by vendors andhidden terms incorporated by reference; cyber security risks
  • Avoiding termination for unknowing breaches
  • Avoiding having vendor monetize your data
  • Subscriptions vs. licenses
  • Data extraction rights

Speaker: William A. Tanenbaum

 Copyright in the Fashion Industry

  • How the Supreme Court’s Varsity Brands decision affects the copyrightability of fashion designs
  • Recent cases illustrating the difference between protected expression and unprotectable ideas
  • The fair use defense as applied in the fashion context
  • The risk of copyright misuse in asserting copyright claims in fashion
  • The new standard for an award of attorneys’ fees in copyright cases

Speaker: Howard S. Hogan

 Copyright in Embedded Software

  • The ubiquity of embedded software and the Internet of Things
  • The U.S. Copyright office report
  • Licensing v. Ownership issues 
  • ‎Resale of consumer products with embedded software
  • Repair and reverse engineering issues

Speaker: William Sloan Coats



3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Developments in European Patent Enforcement

  • Will the new Unified Patent Court (UPC) be open for business in 2018?
  • The UPC courts and procedure – where can an enforcement action be brought and what to expect
  • Strategy and practical considerations for patent enforcers and accused infringers under the new UPC regime
  • Why enforcement in the EU can be a good option with or without the UPC
  • Enforcement of standard-essential patents in Europe after Huawei and Unwired Planet

Speaker: Edwin Wheeler

 PTAB Developments

  • Key IPR decisions
  • CBM developments
  • Where are PGRs?
  • District court and US ITC interaction

Speaker: Robert Greene Sterne

 Patent Venue Developments

  • The TC Heartland decision in the Supreme Court
  • CAFC and District Court developments
  • Transfer Motions
  • What to expect in the coming months
  • How much does venue really matter?

Speaker: Matthew Powers



3:30 Breakout Session No. 2b—Trademark

Landmines to Look For in Trademark Enforcement

  • Fraud
  • Violation of the anti-assignment rule
  • Lack of "use" in commerce
  • Prior history at the TTAB
  • Plus an examination of the aftermath of recent Supreme Court decisions - Hana, B&B
Speaker: Bobby Ghajar

 Latest Developments in the Protection of Trade Dress

  • Trade dress protection overview: requirements for protection and forms of trade dress
  • Understanding trade dress enforcement: elements of a trade dress infringement claim
  • Recognizing how design patents differ from trade dress:
    • What are the requirements for each?
    • How long will each one last?
    • What remedies does each one offer?
  • Review case law updates and developments, including:
    • In re Certain Footwear Products – Converse Inc. v. ITC
    • Samsung v. Apple
    • LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
  • Receive practice tips on how to obtain and maintain trade dress protection
Speaker: Karen Frank

 Disparagement

  • The statutory limitations on registration of immoral and scandalous subject matter
  • The precedents on disparaging subject matter
  • Is there a difference between immoral or scandalous matter and matter that may disparage?
  • The scope of the First Amendment
  • A matter of perspective – is your disparagement of me the same as my appropriation of such terms?
  • Effects of these rulings on protecting and defending in fair use cases
Speaker: Jonathan E. Moskin

5:00 Adjourn

Day Two: 9:00 a.m. - 4:15 p.m.

9:00 Current Developments in Publicity Rights: Balancing First Amendment Interests
  • Elements of the Right of Publicity Action for Infringement
  • The Comedy III Test for Assessing Publicity Rights in Expressive Works
  • The Rogers Test and Publicity Rights in Titles of Works
  • Publicity Rights, Video Games, and Digital Avatars
  • The Hurt Locker and other First Amendment Developments
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • New lessons from new legislation:  managing litigation options right from the start
  • Reducing risk when sharing trade secrets:  are yesterday’s “best practices” still reasonable today?
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:  evolving approaches to damages and equitable relief
  • Preventing the inevitable: alternatives to litigation?
Speakers: James Pooley

11:00 Networking Break

11:15 Contractual Limits on IP Licensees and Customers
  • Patent Exhaustion Doctrine
  • Copyright First Sale Doctrine
  • Does antitrust law play a role in patent exhaustion?
  • Drafting licenses to avoid exhaustion
  • Impression Products v. Lexmark case
  • What is left of Mallinckrodt and Fuji Film?
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
  • Unique aspects of licensing technology from universities
  • The Bayh-Dole Act and march-in rights
  • Managing property rights in media content and delivery
  • Critical role of IP in pharmaceutical and biopharma companies
  • Critical role of IP in medical device industry
  • Managing trade secrets in a corporate environment
Speakers: Stephen N. Adams, Earl A Bright, James M. Kennedy, Kathy Ku, Jean I. Liu

3:00 Networking Break

3:15 Critical Ethics Issues for the IP Lawyer
  • Conflicts and disqualification:latest updates on conflicts, disqualification and advance waivers
  • Ethical issues before the USPTO:latest actions by the Office of Discipline and Enrollment
  • Malpractice issues:recent case law concerning standard of care, causation and damages, and the relation of conflicts in proving causation and damages
Speakers: Merri A. Baldwin

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Stephen N. Adams ~ VP, Litigation, Protection and Compliance, Applied Materials Inc
Merri A. Baldwin ~ Rogers Joseph O'Donnell
Earl A Bright ~ COO & General Counsel Nuelle, Inc. President & General Counsel ExploraMed Development, LLC, Exploramed
Lindsey J. Canning ~ White & Case LLP
William Sloan Coats ~ Novak Druce Connolly Bove + Quigg LLP
Karen Frank ~ Partner, Coblentz, Patch, Duffy & Bass LLP
Bobby Ghajar ~ Litigation Partner, Cooley LLP
Anne Hiaring Hocking ~ Donahue Fitzgerald LLP
Howard S. Hogan ~ Gibson, Dunn & Crutcher LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
James M. Kennedy ~ SVP, Legal Affairs & Business Strategy, Pixar Animation Studios
Kathy Ku ~ Director, Office of Technology Licensing, Stanford University
Jean I. Liu ~ Executive Vice President, Legal Affairs & General Counsel , Seattle Genetics, Inc.
Kathleen E. McCarthy ~ King & Spalding LLP
Lateef Mtima ~ Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice
Raymond T. Nimmer ~ Leonard H. Childs Professor of Law, University of Houston Law Center
James Pooley ~ Orrick, Herrington & Sutcliffe LLP
Matthew D Powers ~ Partner, Tensegrity Law Group LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Arent Fox LLP
Edwin Wheeler ~ Wheeler IP Law
Program Attorney(s)
Krista M. Gundersen ~ Practising Law Institute

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (800) 260-4754.

San Francisco Hotel Accommodations

Park Central Hotel, 50 Third Street, San Francisco, CA 94103. 415-974-6400. When calling, please mention PLI and SET#287179. In addition, you may book online at Park Central Hotel PLI.

Omni Hotel San Francisco, 500 California Street, San Francisco, CA 94104. 415-677-9494.  When calling, please mention Practising Law Institute.  You may also book online at PLI Omni Hotel 2017.

Due to high demand we recommend reserving hotel rooms as early as possible.

Related Items

On-Demand  On-Demand Programs

Intellectual Property Law Institute 2016 Oct. 18, 2016

Handbook  Course Handbook Archive

Intellectual Property Law Institute 2017 Robert P Taylor, RPT Legal Strategies PC
David Bender, The Law Office of David Bender
 
Intellectual Property Law Institute 2016 Robert P Taylor, RPT Legal Strategies PC
David Bender, The Law Office of David Bender
 
Share
Email

  • FOLLOW PLI:
  • twitter
  • LinkedIn
  • GooglePlus
  • RSS

All Contents Copyright © 1996-2017 Practising Law Institute. Continuing Legal Education since 1933.

© 2017 PLI PRACTISING LAW INSTITUTE. All rights reserved. The PLI logo is a service mark of PLI.