Seminar  Program

Intellectual Property Law Institute 2018


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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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 are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: William A. Tanenbaum

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
• Termination policies under Section 512(i) to ensure protection under safe harbors
• Investigations of infringing activities under Section 512(h)
• Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030
 
Speaker: Jonathan E. Moskin


3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Speaker: Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil States, SAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Speaker: Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Speaker: Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

Speaker: Brian W. Brokate

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Douglas (Chip) Rettew

TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Helen Hill Minsker



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
• Implementing physical and cyber protection for IP
• Managing IP risk through indemnification clauses - statutory/common law vs. contractual indemnification
• How in-house IP counsel can add value in M&A


 
Speakers: Carolyn H. Blankenship, Orrie Dinstein, 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, Pace University Law School, 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 ~ Attorney-at-Law,
Victoria A. Cundiff ~ Paul Hastings LLP
Orrie Dinstein ~ Global Chief Privacy Officer , Marsh & McLennan Companies, Inc.
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors, LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Helen Hill Minsker ~ Banner & Witcoff, Ltd.
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
Douglas A. (Chip) Rettew ~ Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Jennifer Sklenar ~ Arnold & Porter LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Polsinelli
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, 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 (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 Corporate Rate ID 786839408. In addition, you can book online at PLI Muse Hotel

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. In addition, you can book online at PLI Millennium Hotel .

 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.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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 are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: William A. Tanenbaum

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
• Termination policies under Section 512(i) to ensure protection under safe harbors
• Investigations of infringing activities under Section 512(h)
• Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030
 
Speaker: Jonathan E. Moskin


3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Speaker: Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil States, SAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Speaker: Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Speaker: Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

Speaker: Brian W. Brokate

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Douglas (Chip) Rettew

TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Helen Hill Minsker



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
• Implementing physical and cyber protection for IP
• Managing IP risk through indemnification clauses - statutory/common law vs. contractual indemnification
• How in-house IP counsel can add value in M&A


 
Speakers: Carolyn H. Blankenship, Orrie Dinstein, 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, Pace University Law School, 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 ~ Attorney-at-Law,
Victoria A. Cundiff ~ Paul Hastings LLP
Orrie Dinstein ~ Global Chief Privacy Officer , Marsh & McLennan Companies, Inc.
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors, LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Helen Hill Minsker ~ Banner & Witcoff, Ltd.
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
Douglas A. (Chip) Rettew ~ Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Jennifer Sklenar ~ Arnold & Porter LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Polsinelli
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, Practising Law Institute
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live webcasts may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as the “Group-Internet-Based” (GIB) delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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 are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: William A. Tanenbaum

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
• Termination policies under Section 512(i) to ensure protection under safe harbors
• Investigations of infringing activities under Section 512(h)
• Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030
 
Speaker: Jonathan E. Moskin


3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Speaker: Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil States, SAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Speaker: Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Speaker: Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

Speaker: Brian W. Brokate

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Douglas (Chip) Rettew

TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Helen Hill Minsker



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
• Implementing physical and cyber protection for IP
• Managing IP risk through indemnification clauses - statutory/common law vs. contractual indemnification
• How in-house IP counsel can add value in M&A


 
Speakers: Carolyn H. Blankenship, Orrie Dinstein, 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, Pace University Law School, 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 ~ Attorney-at-Law,
Victoria A. Cundiff ~ Paul Hastings LLP
Orrie Dinstein ~ Global Chief Privacy Officer , Marsh & McLennan Companies, Inc.
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors, LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Helen Hill Minsker ~ Banner & Witcoff, Ltd.
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
Douglas A. (Chip) Rettew ~ Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Jennifer Sklenar ~ Arnold & Porter LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Polsinelli
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, Practising Law Institute
Atlanta Groupcast Location

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

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CLPD credit requirements.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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 are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: William A. Tanenbaum

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
• Termination policies under Section 512(i) to ensure protection under safe harbors
• Investigations of infringing activities under Section 512(h)
• Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030
 
Speaker: Jonathan E. Moskin


3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Speaker: Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil States, SAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Speaker: Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Speaker: Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

Speaker: Brian W. Brokate

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Douglas (Chip) Rettew

TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Helen Hill Minsker



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: Victoria A. Cundiff

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
Speakers: Robert P. Taylor

12:15 Lunch

1:30 The Implications of Intellectual Property Issues for Corporate Counsel
• Implementing physical and cyber protection for IP
• Managing IP risk through indemnification clauses - statutory/common law vs. contractual indemnification
• How in-house IP counsel can add value in M&A


 
Speakers: Carolyn H. Blankenship, Orrie Dinstein, 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, Pace University Law School, 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 ~ Attorney-at-Law,
Victoria A. Cundiff ~ Paul Hastings LLP
Orrie Dinstein ~ Global Chief Privacy Officer , Marsh & McLennan Companies, Inc.
Mark S. Holmes ~ CEO, PatentBridge LLC
Siegrun D. Kane ~ Kane Advisors, LLP
Joseph P. Lavelle ~ DLA Piper LLP (US)
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Helen Hill Minsker ~ Banner & Witcoff, Ltd.
Jonathan E. Moskin ~ Foley & Lardner LLP
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
Douglas A. (Chip) Rettew ~ Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Charan J. Sandhu ~ Weil, Gotshal & Manges LLP
Jennifer Sklenar ~ Arnold & Porter LLP
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
William A. Tanenbaum ~ Polsinelli
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, 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.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CLPD credit requirements.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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: Wayne Sobon

    Licensing in the U.S.

  • Beware the career-killing mines
  • Collaborations in licensing are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: Fabio Marino

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
  • Termination policies under Section 512(i) to ensure protection under safe harbors
  • Investigations of infringing activities under Section 512(h)
  • Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030

Speaker: Neel Chatterjee



3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil StatesSAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

  • Direct liability: 2018 case law updates and trends
  • Seizures and ex parte remedies: practical guidance on drafting an effective order
  • Contributory liability:  effective strategies against online and brick and mortar retailers
  • Legislative updates in the United States: how they apply in practice
  • Customs and Border Patrol: recent regulations and developing concerns

Speaker: Bobby Ghajar

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Mark A. Jansen


TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Karen Frank



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: James Pooley

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
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
  • Dealing with uncertainty in legal rules
Speakers: Mary Albertson, Earl (Eb) Bright, James M. Kennedy, Jean I. Liu, Ali Torabi

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, Alison P. Buchanan

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, Pace University Law School, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Mary Albertson ~ Associate Director of Operations, Office of Technology Licensing, Stanford University
Merri A. Baldwin ~ Rogers Joseph O'Donnell
Earl (Eb) Bright ~ President & General Counsel, ExploraMed Development, LLC
Alison P. Buchanan ~ Hoge Fenton Jones & Appel
Lindsey J. Canning ~ White & Case LLP
Neel Chatterjee ~ Goodwin Procter LLP
William Sloan Coats ~ Attorney-at-Law,
Karen Frank ~ Coblentz, Patch, Duffy & Bass LLP
Bobby Ghajar ~ Cooley LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Mark A. Jansen ~ Fenwick & West LLP
James M. Kennedy ~ SVP, Legal Affairs & Business Strategy, Pixar Animation Studios
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jean I. Liu ~ Executive Vice President, Legal Affairs & General Counsel , Seattle Genetics, Inc.
Fabio E. Marino ~ Polsinelli LLP
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Kathleen E. McCarthy ~ King & Spalding
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
James Pooley ~ James Pooley, A Professional Law Corporation
Jennifer Sklenar ~ Arnold & Porter LLP
Wayne Sobon ~ VP, Intellectual Property, Juul Labs
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Ali Torabi ~ Director of Corporate Development, Solar Junction Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, 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 2018.

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

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

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, including 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; standards-essentials patents; trade secrets; recent court decisions regarding copyright; 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

  1. The latest changes in the law of patents, copyrights, trademarks, and trade secrets
  2. Recent developments in privacy law
  3. An update of trademark law
  4. Significant trade secret developments
  5. Counterfeiting challenges and strategic solutions

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
Speakers: David Bender, Robert P. Taylor
9:15 Privacy: What’s All the Noise About?
  • Some privacy basics
  • The case for, and the case against, privacy
  • A sampling of recent privacy-impacted events
  • U.S. privacy developments
  • A big change in the EU - GDPR
  • Why EU Privacy law is critically important to many, many U.S. corporations
(IAPP Privacy credit for Privacy Professionals)
Speakers: David Bender

10:15 Patent Eligibility: Current Trends and Critical Issues for Section 101
  • Strategies for navigating the changing currents of Patent Eligibility
  • The development of a potential “Safe Harbor”?
  • The impact of the “underlying issues of fact” in Section 101
  • Implications of intertwining “Printed Matter,” “Mental Steps,” and Section 101
  • Calls for reform by the bar and by the bench
  • Forecasting the evolution of Section 101
Speakers: Richard M. Marsh, Jr.

11:15 Networking Break

11:30 Trademark Hot Topics
  • Defenses, Defenses, Defenses:
    • Functionality:  When is color functional & when is color protected?  What happens when patent and trademark claims intersect?
    • Laches: Just how long can you wait before filing suit? When is laches not a bar to relief?
    • First Amendment: How are courts currently interpreting the 1989 Rogers v. Grimaldi test?
  • Surveying the world of surveys: Do’s and Don’t’s from surveys that worked and surveys that didn’t
  • Trademark licenses terminated in bankruptcy: Are we headed for the Supreme Court?
  • Monetary Awards & Fees: What can we learn from the Grumpy Cat?
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: Wayne Sobon

    Licensing in the U.S.

  • Beware the career-killing mines
  • Collaborations in licensing are great: But who owns the patents?
  • Indemnification does not have to be a blank check
  • 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

Recent Copyright Developments

  • Transactional aspects of recent cases
  • Data ownership and licensing
  • Copyright licensing of collaborative improvements
  • New issues from AI, IoT and Machine Learning

Speaker: Fabio Marino

 

Protection of APIs: Cisco v. Arista (Lotus v. Borland redux) and Oracle v. Google

  • Scenes à faire and APIs
  • Protectability of APIs
  • Oracle v. Google and fair use
  • Interoperability as viewed by the Federal Circuit
  • Future of reverse engineering

Speaker: William Sloan Coats

 

DMCA Developments

  • Legal update for safe harbors of Section 512.
  • Termination policies under Section 512(i) to ensure protection under safe harbors
  • Investigations of infringing activities under Section 512(h)
  • Section 1201 (anticircumvention) and uses of the Computer Fraud and Abuse Act, 28 U.S.C. 1030

Speaker: Neel Chatterjee



3:15 Networking Break

3:30 Breakout Session No. 2a—Patent

Patent Venue Developments

  • The TC Heartland Supreme Court decision
  • Recent CAFC and District Court decisions
  • Impacts of TC Heartland and progeny
  • How much does venue really matter?

Jennifer Sklenar

The PTAB After Oil States and SAS

  • While constitutional according to Oil StatesSAS creates a whole new ballgame for the PTAB
  • How is the PTAB dealing with ongoing cases in light of SAS?
  • Should petitioners file challenges at the PTAB in light of SAS?
  • How will the Federal Circuit deal with decisions after SAS?
  • What are the implications on parallel district court litigation?

Robert Greene Sterne

Developments in CAFC Jurisprudence

  • CAFC treatment of appeals from Inter Parties Review proceedings.
  • CAFC law on 35 USC Section 101 continues to evolve
  • Ex parte examination developments, including corroboration requirements, effect of statements in related applications, and obviousness
  • Patent litigation developments, including venue, Hatch-Waxman, estoppel, and preserving issues for appeal

Joseph P. Lavelle



3:30 Breakout Session No. 2b—Trademark

Anticounterfeiting Update

  • Direct liability: 2018 case law updates and trends
  • Seizures and ex parte remedies: practical guidance on drafting an effective order
  • Contributory liability:  effective strategies against online and brick and mortar retailers
  • Legislative updates in the United States: how they apply in practice
  • Customs and Border Patrol: recent regulations and developing concerns

Speaker: Bobby Ghajar

 

ICANN Developments: WHOIS in a Post-GDPR World

  • Impact and challenges
  • ICANN’s Temporary Specification model
  • UDRP and URS proceedings
  • Complaint procedures
  • Anticipated mechanisms
  • Tips for brand owners

Speaker: Mark A. Jansen


TTAB Treatment of Related Goods in Assessing Likelihood of Confusion:  Is Anything NOT Related Anymore?

  • The general standard for applying “related goods”
  • Does “No per se rule…” apply anymore?
  • Should industry consolidation change the likelihood of confusion analysis?
  • Challenges in proving differences in channels of trade in today’s interconnected world
  • Tips for presenting arguments and evidence for related goods issues

Speaker: Karen Frank



5:00 Adjourn

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

9:00 Fair Use and Other Copyright Doctrines for Delineating User Rights from Owner Interests
  • Key developments in Fair Use jurisprudence
  • Random House, Oracle, and other recent decisions
  • Clarifying the respective roles of the judge and the jury in Fair Use determinations
  • Identifying boundaries for Fair Use “transformation”
  • Misapplication of Fair Use as a “default” for unauthorized use
  • Juxtaposition with copyright public domain litigation, from Happy Birthday to We Shall Overcome
Speakers: Lateef Mtima

10:00 How the Latest Developments in Trade Secrets Law Will Affect Your Business
  • The year in review: new tools from courts and legislatures
  • Managing litigation options right from the start at home and across borders
  • Reducing risk when sharing trade secrets: are yesterday’s “best practices” still reasonable today?
  • Dealing with interstate and international trade secret disputes
  • Proving and defending against claims of misappropriation
  • Crafting remedies for misappropriation:evolving approaches to damages and equitable relief
Speakers: James Pooley

11:00 Networking Break

11:15 Reconciling IP Protection with Antitrust and Competition Laws
  • Overview of Antitrust/IP Interface Issues
  • When should patent enforcement activities raise antitrust concerns?
  • Lexmark and the limits of contract law: beware of 17th century rules
  • Governmental interest in patent enforcement
    • What a new team at DOJ portends for government policies
    • Are Standards Essential Patents (SEPs) somehow “different”?
    • Enforcement agency actions and private litigation involving SEPs and FRAND commitments
    • FTC Report on NMEs, NPEs, PAEs, and other patent owners
    • State AG challenges to patent enforcement
  • Collaborative negotiations for patent licenses and licensee collusion
  • Actavis lives on: patent litigation settlements in its aftermath
  • Fraudulent procurement and bad faith enforcement
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
  • Dealing with uncertainty in legal rules
Speakers: Mary Albertson, Earl (Eb) Bright, James M. Kennedy, Jean I. Liu, Ali Torabi

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, Alison P. Buchanan

4:15 Adjourn

Co-Chair(s)
David Bender ~ Adjunct Professor, University of Houston Law Center, Pace University Law School, The Law Office of David Bender
Robert P. Taylor ~ RPT Legal Strategies PC
Speaker(s)
Mary Albertson ~ Associate Director of Operations, Office of Technology Licensing, Stanford University
Merri A. Baldwin ~ Rogers Joseph O'Donnell
Earl (Eb) Bright ~ President & General Counsel, ExploraMed Development, LLC
Alison P. Buchanan ~ Hoge Fenton Jones & Appel
Lindsey J. Canning ~ White & Case LLP
Neel Chatterjee ~ Goodwin Procter LLP
William Sloan Coats ~ Attorney-at-Law,
Karen Frank ~ Coblentz, Patch, Duffy & Bass LLP
Bobby Ghajar ~ Cooley LLP
Mark S. Holmes ~ CEO, PatentBridge LLC
Mark A. Jansen ~ Fenwick & West LLP
James M. Kennedy ~ SVP, Legal Affairs & Business Strategy, Pixar Animation Studios
Joseph P. Lavelle ~ DLA Piper LLP (US)
Jean I. Liu ~ Executive Vice President, Legal Affairs & General Counsel , Seattle Genetics, Inc.
Fabio E. Marino ~ Polsinelli LLP
Richard M. Marsh, Jr. ~ Faegre Baker Daniels LLP
Kathleen E. McCarthy ~ King & Spalding
Lateef Mtima ~ Director, Institute for Intellectual Property and Social Justice, Professor of Law, Howard University School of Law
James Pooley ~ James Pooley, A Professional Law Corporation
Jennifer Sklenar ~ Arnold & Porter LLP
Wayne Sobon ~ VP, Intellectual Property, Juul Labs
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Ali Torabi ~ Director of Corporate Development, Solar Junction Corporation
Program Attorney(s)
Krista M. Gundersen ~ Director, Programs, Practising Law Institute
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

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Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live webcasts may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as the “Group-Internet-Based” (GIB) delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

Related Items

On-Demand  On-Demand Programs

Intellectual Property Law Institute 2017 Oct. 8, 2017

Handbook  Course Handbook Archive

Intellectual Property Law Institute 2018  
Intellectual Property Law Institute 2017 Robert P Taylor, RPT Legal Strategies PC
David Bender, The Law Office of David Bender
 
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