44th Intellectual Property Law Section Institute

Speaker: TJ Singh, Klein, O’Neill & Singh, LLP

Practice tips regarding current topics in patent prosecution. CLE: .75 Hour

Speaker: Pete Bromaghim, Womble Bond Dickinson, LLP

The USPTO’s TESS database is familiar to all trademark practitioners, but understanding its finer points provides advantages not just in clearance searching, but also in prosecution, enforcement, and disputes. CLE: .75 Hour

Speaker: Kevin DeBre, Stubbs Alderton & Markiles, LLP

The difference of a few words matters. Kevin DeBré, a 20+ year licensing attorney, will discuss familiar licensing provisions and how courts have interpreted them. You will never look at an indemnification clause the same way. CLE: .75 Hour

Speaker: Carmen Aviles, Hopkins & Carley, ALC

Understanding the legal nuances in work made for hire agreements and their practical effect. CLE: .75 Hour

Join us at our networking breakfast

Welcome and Opening Remarks

Speakers: Hon. Andrew P. Gordon, USDC Nevada; Hon. Phillip M. Pro (Ret.), JAMS;
Andrew Stroud, Hanson Bridgett, LLP U.S., District Court, District of Nevada

Ever wanted to know how things work behind the scenes, in the back of the house? Join United States District Judge, District of Nevada, Andrew P. Gordon and the Hon. Philip M. Pro (Ret.) as they discuss tips of the trade, and offer advise on how to hold a winning hand in your intellectual property matters filed in federal court.

CLE: 1.0 Hour

Track 1: Patent

Speakers:
Albert Keyack, Kilburn & Strode, LLP
Thomas Leonard, Kilburn & Strode, LLP

Ever wonder about the advantages and disadvantages of challenging a patent in an inter partes review or post grant proceeding before the PTAB instead of pursuing an opposition or nullity action before the EPO? Albert Keyack, former USPTO Intellectual Property attache to Latin America, and EPO attache to the United States, will discuss the applicable rules and procedures as well as the comparative outcomes for patent challenges before the PTAB & EPO, including costs of bringing action, findings on invalidity, estoppel, and standards of review.

CLE: 1.0 Hour

Track 2: Other

Speakers:
Christine Lyon, Morrison & Moerster, LLP
Zerina Curevac, Eaze Technologies, Inc.
Lorrie Ma, Uber Technologies, Inc.
Catherine Gellis, CGA Counsel

This panel will discuss the new California Consumer Privacy Act of 2018 and make comparisons to GDPR as well as provide some tips on leveraging the work companies have done for GDPR compliance.

CLE: 1.0 Hour

Track 1: Patent

Speakers:
Jayashree Mitra, Zuber Lawler & Del Duca, LLP
Thomas Wallerstein, Venabl, LLP

This panel will cover how life sciences companies are increasingly using the Defend Trade Secrets Act to protect and enforce their intellectual property rights, especially as trade secrets and know how become more relevant with fluid employee mobility and digital information sharing. The speakers will discuss recent developments in trade secret litigation matters, and practical strategies for in-house counsel and practitioners litigating such claims.

CLE: 1.0 Hour

Track 2: Other

Speakers:
Dawn Newton, Donahue Fitzgerald
Tal Grinblat, Lewitt Hackman

Not every trademark license is created equally. This program will discuss what constitutes a franchise, how a trademark license can inadvertently become a franchise arrangement, franchise regulations and disclosure obligations, risks of violating the franchise laws, and creative ways to avoid crossing the line and becoming a franchise.

CLE: 1.0 Hour

During the lunch break a variety of table topics will be hosted by various conference speakers and practitioners to make lunch a lively and interactive opportunity for attendees. Registrants will have an opportunity to sign up for one table topic on-site at the registration table. Seats are limited per table and will be available on a first-come, first-served basis. (No CLE provided.)

Track 1: Patent

Speakers:
Yoon Chae, Baker McKenzie, LLP
Jeff Risher, Tandem Diabetes Care, Inc.
Andrea Weiss Jeffries, Jones Day

The panel will discuss the recent surge in global patent filings in this area, which the UN has described as a “quantum leap,” and look into the various industries and markets that are impacted as well as the uncertainties & unique challenges with subject matter eligibility, inventorship, proving infringement, dual actor infringement issues, etc.

CLE: 1.0 Hour

Track 2: Other

Speakers:
Jason Yao, Wanhuida Peksung, Beijing, China
Devon Beck, Stussy

This panel of experts will explain enforcement strategies in China, including administrative, civil and criminal proceedings. Learn about recent changes to the trademark laws in China and how these changes will help brand owners tackle trademark squatting. This panel will explain how to play the game in China to ensure you have a winning hand.

CLE: 1.0 Hour

Track 1: Patent

Speakers:
David Randall, Brooks Kushman
Pem Guerry, SIGNiX
Bridget Smith, Lowenstein & Weatherwax LLP

Blockchain technology, while not necessarily new in terms of distributed computing, has some novel features, and is being and will be used in FinTech, Supply Chain Management, Smart Contracts and Licenses, Identity and Reputation Authentication, Cryptocurrency, and more. Some of the largest patent holders in the US and the world, such as IBM and Walmart have pursued and been granted patents, and are pursuing more. This panel will discuss blockchain related patents, “open source” patents, and might touch upon smart contracts and licenses for other intellectual property, such as copyrights and consumer use of content. CLE: 1.0 Hour

Track 2: Other

Speakers:
Mark Tratos, Greenberg Traurig, LLP
Jennifer Ko Craft, Dickinson Wright, PLLC

Entertainment law may seem glamorous and exciting and at times it is, but the moment your technology lease or IP licensing agreement is transformed into a more nuanced entertainment agreement, it may not seem all that fun anymore. If this sounds familiar, this is the presentation for you. Two of Las Vegas’ most experienced entertainment attorneys will focus on key issues that commonly arise in live performance and personal services agreements – from two- and four-wall deals to meet and greets and endorsement agreements. This program will help you issue spot and recognize potential pitfalls in live entertainment agreements.

CLE: 1.0 Hour

Track 1: Patent

Speaker: William Covey, United States Patent and Trademark Office

William Covey, the Deputy General Counsel for Enrollment and Discipline of the USPTO, will provide an overview of common ethical issues faced by practitioners who practice either patent law or trademark law before the USPTO, and appear before the Patent Trial and Appeals Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Mr. Covey will share OED guidelines as well as best practices for developing an ethical and competent patent practice that steers clear of OED scrutiny.

CLE: 1.0 Hours Legal Ethics

Host: Tsan Abrahamson, Cobalt Law, LLP

Separate tickets required. See registration form.

Networking breakfast

Speaker: Dana Tippin Cutler, James W. Tippin & Associates

The language of inclusion is evolving. Most people don’t want to offend, but inadvertently do so. During this session, you’ll learn from an attorney (and court TV celebrity) known and honored for her outstanding leadership in promoting all aspects of diversity in her legal community. Dana will cover timely topics including micro-aggression, the #MeToo movement, and implicit bias. Dana will keep it real, keep it relevant and keep it entertaining.

CLE: 1.0 Hours Recognition and Elimination of Bias in the Legal Profession and Society

Track 1: Patent

Speakers:
Alex H. Chan of DataNovo, Inc.
Andrew Michaels, University of Houston Law Center

In this panel, our speakers will discuss the practical impact of WesternGeco, examine the specific application of WesternGeco in recent cases, and explore ways in which practitioners can navigate their clients safely in increasingly global markets post-WesternGeco.

The presumption against extraterritoriality is a longstanding American principle that U.S. law applies only within the U.S. territorial jurisdiction. It plays an important role in maintaining political harmony and state sovereignty between the U.S. and foreign nations. In patent law, this presumption has been applied to exclude foreign profits flowing from domestic infringement. In 2018, the U.S. Supreme Court in WesternGeco v. ION Geophysical rejected the application of this presumption in awarding patent damages, effectively allowing patent owners to recover lost profits arising from foreign sales and strengthening the general damages principle that a patentee is entitled to full compensation regardless of where such damages occur.

CLE: 1.0 Hour

Track 2: Other

Speakers:
Sean C. Kane, Frankfurt Klein & Selz, P.C.
Chrissie Scelsi, Wargaming, Inc.

Loot boxes and microtransactions are a core element of video game monetization in the modern era.

However, as the international law on the topic becomes more expansive and complicated — particularly when coupled with the laws at home — setting up the legalities of loot boxes has become more and more difficult. Come learn the details of the law and best practices for this difficult topic.

CLE: 1.0 Hour

Speakers:
Jill Hubbard, Intel Corporation
Carrie Le Roy, Gibson, Dunn, & Crutcher, LLP

Overbroad or inappropriately narrow patent licenses, as well as covenants not to sue not infrequently buried in commercial agreements, require significant attention and create risk for many M&A transactions. Questionable patent prosecution histories and chain of title issues are similarly concerning to practitioners.

Please join this experienced panel for a discussion of best practices in conducting patent due diligence in M&A transactions. Additionally, we will explore various risk mitigation techniques, including specific representations and warranties, indemnities, and closing conditions, to help ensure that the transaction will meet the needs and expectations of clients.

CLE: 1.0 Hour

Track 2: Other

Speakers:
Nannina Angioni, Kaedian, LLP
Charles Kolstad, Withers Worldwide
Robyn Sokol, Brutzkus Gubner Rozansky Seror Weber, LLP

This panel will address ways to protect IP during and after the employment relationship- along with examining the Dynamex decision and how a contractor/employee relationship change may affect IP protections. Learn how to examine the winners and losers when a party holding IP or licensing IP files for bankruptcy protection.

CLE: 1.0 Hour

Speakers:
Beatrice Martinet, Sideman Bancroft, LLP
Mark Leonard, Jelly Belly Candy Company

In the highly competitive food and beverage business companies are using IP to help distinguish their products from their competitors. This panel will discuss the increasing role of nontraditional marks and other novel protection schemes (patent, design, indication of origin, and trade secret) in the United States and European Union to protect novel features of their products and attract consumers.

CLE: 1.0 Hour

Speaker: Mark Fingerman, ADR Services, Inc.

Being skillful as a lawyer requires clarity of both intention and perception. The rigors of practice tend to reduce that clarity, with a cascading effect that adversely impacts a lawyer’s work and clients. In this course, mediator and functional mindfulness teacher Mark Fingerman will identify and discuss mental issues that impair a lawyer’s ability to practice skillfully and teach basic mindfulness practices which reduce that impairment. These simple practices develop the ability to calmly focus on what matters, to act rather than react, to have better relations, to live with less stress and to have an easier time getting better results at whatever you do.

CLE: 1.0 Hour Competence Issues

Raffle along with closing remarks

PURCHASE TICKETS: themobmuseum.org/plan-your-visit/purchase-tickets/tickets