Intellectual Property Owners Association

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IP Chat Channel – Legal Department and Law Firm Management

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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Outsourcing Patent Work: Avoiding Pitfalls (Ethics)

Webinar Date: 11/16/2017

The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and presents its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services, and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

• Offshoring technical data in disregard of USPTO guidance;
• Improper fee-splitting;
• Monitoring suppliers for conflicts of interest;
• Getting the informed consent of the ultimate client; and
• Aiding and abetting the unauthorized practice of law.

Our panel includes the head of patent operations at a major multinational who has supervised patent service providers for many years, an India-based executive of a patent services provider, and an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters.

Speakers:

  • Mukundan Chakrapani, Clairvolex
  • Michael Gnibus, General Electric
  • Michael McCabe, IP Ethics Law



Willfulness, Enhanced Damages, and Opinion of Counsel Since Halo

Webinar Date: 02/23/2017

It has been more than six months since the U.S. Supreme Court’s Halo decision lowered the bar for proving willful infringement, and this boon for plaintiffs is quickly changing trial strategy. Our panel of experienced litigators will begin by examining how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage. Then, the panel will consider the factors that have most strongly influenced recent district court decision to enhance — or not enhance — damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University). A favorably timed opinion of counsel can prove successful in warding off a finding of willfulness, but defendants need to consider the effect of an opinion of counsel on attorney-client privilege.

Speakers:

  • Natalie Hanlon Leh, Wilmer Cutler Pickering Hale and Dorr LLP
  • Christopher Marchese, Fish & Richardson PC
  • Michael Zeliger, K&L Gates LLP



Launching a Post-Grant Proceeding: In-house Perspective and Strategy

Webinar Date: 12/01/2016

This webinar will consider best practices for the in-house counsel regarding the decision to launch an inter partes review (IPR) proceeding against a patent and managing the process of AIA petition and trial. Our panel includes two in-house counsel from different industries as well as an experienced USPTO litigator. They will discuss:

  • How to assess the strongest defensive case against the assertion of a patent and when not to launch an IPR;
  • Finding guidance in PTAB statistics;
  • The impact of the Halo and Commil decisions on the decision to launch;
  • Hiring outside counsel and predicting costs;
  • Overseeing the petition, the choice of expert, and the preparation for oral hearing;
  • Whether to file an appeal if you lose.

Speakers:

  • Matthew Cutler, Harness, Dickey & Pierce PLC
  • David Kelley, Ford Global Technologies LLC
  • Kimberly Schmitt, Intel Corp.



Conflicts of Interest in Patent Prosecution after Maling v. Finnegan

Webinar Date: 02/10/2016

The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”

Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.

Speakers:
Martin Kaminsky, Greenberg Traurig, LLP
Scott Markow, Stanley Black & Decker, Inc.
Michael McCabe, Funk & Bolton



Insider Threat: Employee Mobility and Trade Secrets

Webinar Date: 01/20/2016

Litigation against former insiders accounts for a significant amount of all trade secret cases. However, these disputes are difficult to win. Our panel will discuss best practices for safeguarding trade secret and other confidential corporate information from appropriation by employees, as well as contractors, and consultants.

A litigator will highlight how not meeting this high bar will cause a plaintiff’s case to fail. An employment law specialist will discuss emerging issues in non-compete agreements, such as the need to give current employees a bonus or profit-sharing consideration in exchange for signing a tougher non-compete. And an in-house counsel of a global technology company that will discuss survival in a world without non-competes. Our panel will also consider the flip side of the issue: best practices for avoiding a lawsuit when hiring an employee from a competitor.

Speakers:

Clifford Atlas, Jackson Lewis
Buckmaster De Wolf, General Electric Co.
Randall Kay, Jones Day