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 IP lawyers need to know.
A highlight of the program will be a panel of in-house IP counsel from prominent companies discussing the many facets of current interest for dealing with IP and suggesting some best practices and strategies. Plenary sessions will treat the antitrust-IP interface; whether copyright has become untethered from its constitutional moorings; the interplay among trade dress, design patents, and copyright (and what happened in Apple v. Samsung
); trade secrets developments; recent developments in privacy law; a trademark law update; and ethics (one full hour credit).
This year’s program will feature four breakout sessions, each with three current topics that will focus respectively on copyrights, licensing, patents, and trademarks. Among the breakout topics will be discussions of IP licensing in the US, India, and Europe (including developments in the European unitary patent); effects of the AIA on both prosecution and litigation; a copyright update and discussion of grey market law; aesthetic functionality; and trademark licenses in bankruptcy.
What you will learn
- The latest changes in the law of patents, copyrights, trademarks, and trade secrets
- The interplay among trade dress, design patents, and copyright (against the background of Apple v. Samsung)
- Developments at the IP-antitrust interface
- Perceptible effects of the AIA
- Whether copyright is drifting away from its constitutional basis
- Updates in privacy law, and why they affect your clients
- Significant trade secret developments
- Trademark updates
- In-house panel providing guidance on managing IP
- Four separate breakouts
- Complete overview of IP law
- Earn one hour of Ethics credit
Who should attend
General practitioners, intellectual property attorneys, in-house counsel and others who need a comprehensive update on the major areas of intellectual property law. Join Institute co-chairs, David Bender and Robert P. Taylor and a faculty of distinguished intellectual property practitioners from major corporations and law firms at this year’s Institute. Don’t miss this once a year opportunity to learn from the best and to network with in-house and outside intellectual property lawyers from around the world. In just two days, you will become up to date on many of the important intellectual property developments, learn best practices in a variety of practice settings, hear best practices to maximize the value of intellectual property assets, and earn ethics credit too!
Day One: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
9:00 Program Overview
9:15 Protecting Designs: How do Design Patent, Copyright, and Trade Dress Intersect?
- What are the core differences between design patents, trade dress, and copyright for designs, etc?
- How will Apple v. Samsung affect developments in Smartphone and Tablet markets and design?
- Is copyright the strongest or weakest protection in this space?
- How does one select the “primary reference” needed for a design patent obviousness analysis?
- Can trade dress protection apply where a design patent could not issue?
- Can a design patent issue where no copyright would exist because of a lack of originality of expression?
Raymond T. Nimmer
10:15 Developments in Privacy and Data Protection
- The debate over online behavioral advertising
- Breach Notification statutes – and why they work
- The EU data protection regime and proposed changes to it – and why they matter to you and your clients
- Privacy initiatives of the Federal Trade Commission
- Recent privacy activities of the California Attorney General
- U.S. and EU privacy trends
11:30 Has Copyright Become Untethered from its Constitutional Moorings?
- The Copyright Clause as the basis for copyright law and its controversies
- “Limited Times” and the Public Domain: virtually perpetual rights?
- “Progress of Science and Useful Arts”: does it really matter?
- Other Constitutional Provisions affecting Copyright Law
- Commerce Clause: Trade and Technology Regulation: why you can’t copy your DVD to your tablet
- Treaty Powers, “policy laundering,” and harmonization of cultural values
- First Amendment and Free Expression versus Copyright: how do they compete?
- Fifth Amendment and Takings: does it apply to the public domain or to copyright terms?
Andrew P. Bridges
Afternoon Session: 1:45 p.m. - 5:00 p.m.
[Concurrent Breakout Sessions]
1:45 Breakout Session No. 1a - LICENSING Licensing in the EU
- Key issues affecting licensing within the EU
- Common pitfalls in licensing with EU partners
- European Unitary Patent Protection
- Rationale and status
- Unified Patent Court: potential impact on issues of venue and forum shopping, damages awarded and appeals
- Relationship with existing prosecution, enforcement and revocation regimes
Licensing in India
- Comparative review of (and recent developments in) IP laws of India 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 protecting your IP in India
Charan J. Sandhu
Licensing in the U.S.
- Assignability of licenses
- License conditions versus contractual commitments
- Rights of exclusive licensees
- Collaborative developments and joint IP ownership and licensing
- Licensing new technologies (e.g. “Big Data” and “CleanTech”)
William A. Tanenbaum
1:45 Breakout session No. 1b – COPYRIGHT
- Recent cases
- TPP/Legislative update
- Orphan works and small copyright claims
- Copyright terminations
- Sampling and mashups
William Sloan Coats
The U.S. Supreme Court and Kirtsaeng: The Future of Copyright Price Discrimination in Global and Domestic Markets
- The First Sale Doctrine and its role in international trade
- Users' rights and access to information considerations in copyright law and policy
- Greymarket theories and intellectual goods
- Lawfully produced products in the global marketplace
- Copyright protection for compilations and automated databases
- Revised Copyright Office registration practices for automated databases
- Strategies for expanding the scope of copyright protection
- Issues raised by Muench Photography, Inc., Alaska Stock, LLC and other recent cases
- Contractual protection and access licenses
- European database directive
J. (Jay) T. Westermeier
3:30 Breakout Session No. 2a – PATENT
- CAFC (and some district court) decisions on patent prosecution and litigation
- Supreme Court decisions in patent cases and how they have been applied by the CAFC
- Trends in CAFC jurisprudence
Joseph P. Lavelle
The New AIA Contested Proceedings and Legacy Reexaminations at the USPTO
- The Inter Partes Review proceeding
- The Covered Business Method proceeding
- The Patent Trial before the Patent Trial & Appeal Board
- The Federal Circuit Review of PTAB Proceedings
- Legacy Reexamination Proceedings
- The impact of these new validity proceedings on the U.S. Patent Landscape
Robert Greene Sterne, Jon E. Wright
Effect of the AIA on District Court Litigation
- Litigation consolidation and joinder under AIA
- Commencing a PTO proceeding during litigation
- Collateral estoppel effects of PTO proceedings
- Stays of litigation and PTO proceedings post AIA
Theresa M. Gillis
3:30 Breakout Session No. 2b - TRADEMARK
Aesthetic Functionality: How Important Is It?
- Betty Boop – the case, its facts and the two 9th Circuit opinions
- What the 9th Circuit got right and wrong
- Laboutin/Red Soled Shoes – the case, its facts
- What the 2d Circuit got right and wrong
- Practical tips in prosecuting trademark applications for arguably “aesthetically functional” marks
- Recent TTAB decisions
- Practical tips in litigating to protect arguably “aesthetically functional” marks
Kathleen E. McCarthy
Recent Developments in TTAB Practice and Procedure
- Noteworthy decisions (dilution, trade dress, and other hot topics)
- Recent decisions on procedural and evidentiary issues
- Tips on practice/procedure
Helen Hill Minsker
Trademarks and US Bankruptcy: It’s a Whole New World
- What do debtors typically try to do with trademarks and trademark licenses?
- What can you do as a trademark licensee to protect your rights when the trademark owner becomes a debtor in bankruptcy?
- What if you are the trademark owner and your licensee is the one who files?
- What are the most recent developments in bankruptcy law regarding trademark issues?
Richard L. Epling
Day Two: 9:00 a.m. - 4:15 p.m.
Morning Session: 9:00 a.m. – 12:15 p.m.
9:00 Continuing Turmoil at the Interface of Intellectual Property and Antitrust Law
- Conceptual tensions and overview
- Competition as a backdrop for copyright and patent law
- Governmental oversight of patent enforcement where standards are implicated
- Antitrust considerations in patent acquisitions
- IP licensing and the limits of contract law -- the “first sale doctrine”
- Patent settlements -- what is at issue in FTC v. Actavis?
- Fraudulent procurement and bad faith enforcement
Robert T. Taylor
10:00 Trade Secrets Update
- What does the White House Strategy on Mitigating the Theft of U.S. Trade Secrets mean for you?
- New state and federal legislation to protect trade secrets
- Keeping ahead of the threats: establishing, implementing and updating best practices for protecting trade secrets in a networked world
- Safely sharing trade secrets with others
- Proving and defending against trade secrets claims
- Remedies for trade secret misappropriation: designing equitable orders and calculating money awards
- Litigating trade secrets cases before the ITC
- How can alternative dispute resolution help resolve trade secrets disputes?
Victoria A. Cundiff
11:15 Trademark Hot Topics
- Proving dilution: Just what is impairment?
- Proving nominative fair use: Whose burden is it anyway?
- Proving irreparable harm in trademark preliminary injunction proceedings: Does the Supreme Court eBay decision control?
- Social media: Scouting the social network: What uses should trademark owners challenge? Will unchallenged uses come back to bite a trademark owner?
- Proving fraud before the TTAB and the Courts: Do juries make a difference?
- Covenants not to sue: Will the Supreme Court Already v. Nike opinion encourage trademark owners to charge their competitors with infringement and then abandon suit without risking an adverse decision?
Siegrun D. Kane
Afternoon Session: 1:30 p.m. - 4:15 p.m.
1:30 Corporate Counsel Panel: Hot Topics and Best Practices
- Managing the increasing amount of non-practicing entity (aka “patent troll”) litigation
- Buying and selling patent rights
- Assignment or license?
- Legal due diligence considerations
- The ins and outs (and contractual implications) of dealing with the UCC statutory IP warranty and indemnification procedures
- New Patent Office inter partes proceedings under the AIA, including Post Grant Review and Inter Partes review: the new rules, and how best to utilize the new proceedings from an in-house viewpoint
Carolyn H. Blankenship, Andrea L. Colby, Joel Wolfson, Gail H. Zarick
3:15 IP Lawyer Ethical Issues
- The changing ethical landscape: Revisions to the Model Rules of Professional Conduct and proposed revisions to the USPTO Rules
- Emerging issues in conflicts of interest: Subject matter conflicts and disqualification update
- Potential perils of technology in an IP practice
- Malpractice Issues: Recent case law, developments in the standard of care, and jurisdiction (American Well v. Layne & Bowler)
Steven C. Bennett
~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Carolyn H. Blankenship
~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
~ Professor of Law and Director, Institute for Intellectual Property and Social Justice, Howard University School of Law
Raymond T. Nimmer
~ Leonard H. Childs Professor of Law, University of Houston Law Center
~ Director and Assistant General Counsel, Bank of America Merrill Lynch
New York City Seminar Location
PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.New York City Hotel Accommodations
The New York Hilton & Towers
, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is 0495741. You can also make reservations
online to access Practising Law Institute rates.The Warwick New York Hotel
, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com
Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: firstname.lastname@example.orgSheraton New York Times Square Hotel
, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online
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