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08:00 AM

*All agenda times are in US Eastern Time Zone (ET)

08:55 AM
09:00 AM
Portfolio Management & IP Strategy in the Realities of a New Business Environment

It is imperative that practitioners effectively manage their portfolios during times of economic and market uncertainty. Challenges are mounting - IP budgets are strained, portfolios are being restructured, and the scope of patent prosecution is shifting. Practitioners can effectively navigate these times by developing a strategy that will result in long-term ROI and exclude competitors from key markets. A fresh approach may be required as companies seek global expansion for growth opportunities. Practitioners are assessing whether monetization of patents may be the right tactic going forward as portfolio management has shifted during these uncertain times. As the environment continues to unfold and reshape the IP landscape, effective portfolio management will be key to maintaining a competitive advantage.

This panel will explore:

  • Assessing the impact of the pandemic and creating strategies for a changing economic landscape
    • Adapting to rapid technological developments and competition
    • Effective data management
    • Maximizing ROI
    • Identifying factors indicative of a strong portfolio
  • Developing ways to use resources to realign IP strategy
    • Competitive analysis
    • Strategically reevaluating your IP portfolio
      • Continuous portfolio assessments
      • Making key IP acquisitions and licensing agreements
      • Defending against threats
      • Generating revenue
  • Preparing policies and resources in anticipation of future economic downturn and market uncertainty

09:45 AM
10:00 AM
A Balanced Approach to IP Litigation and Forecasts for 2022

Patent litigation is continuously in flux and incredibly complex. The demands of litigation require an effective strategy to remain consistent as the litigation landscape changes due to an uncertain environment. The economic downturn added more layers which resulted in growth in certain areas of IP litigation while other areas such as operating company litigation remained constant. On the defense side, organizations have sought to revise their strategies due to the rising cost of litigation, while still maintaining the freedom to develop and launch innovative new products.  Plaintiffs, on the other hand, have proven to be savvy, battle-tested, and ready to use international forums. Practitioners need to exercise caution on using PTAB proceedings while keeping an eye out for NPE litigation in other regions of the world.

This panel will explore:

  • Determining whether defensive patenting is an effective strategy as companies aim for litigation avoidance through portfolio management
  • Conducting freedom to operate searches and obtaining clearance opinions
  • Preparing for international litigation or ITC
  • Implementing a proactive defensive strategy
    • Exploring the roles of operating company and rivals
    • NPE defense updates
  • Clearing the confusion surrounding change at the PTAB

10:45 AM
11:00 AM
A Renewed Focus for PTAB Proceedings and the Added Complexities of IPR

No matter which side of the fence you are on, the PTAB is here to stay. In 2020, the PTAB received more than 1,300 petitions, issuing a similar number of institution decisions and nearly 500 final written decisions. As a result, the dynamic has been permanently changed as it relates to patent application, drafting, prosecution, licensing dynamic, and enforcement strategies. Patent owners can be reassured, however, that institution rates are decreasing as compared to previous years. Devising an IPR strategy is key when considering co-pending district litigation and the PTAB’s continual discretionary denial practice. In addition, pending leadership at the USPTO adds to the complexity of PTAB proceedings. There is a strong need to continuously reshape the plan as the PTAB appears to be more efficient and consistent.

This panel will explore:

  • The current state of the IPR landscape
    • Preparing for an IPR with the PTAB
    • Understanding how cost and resources allocated to IPR can affect business strategy
  • Developing strategies for PTAB proceedings
    • The impact of precedential opinions
    • Analyzing the differences between design patents vs. utility patents
  • Impact of the PTAB changing its standard to construe claims
    • Moving from the broadest reasonable interpretation (BRI) standard to Phillips standard 

11:45 AM
12:00 PM
Patent clinic: Solving in-house counsel challenges in European IP

With the growing need to have a global patent strategy, companies need to anticipate challenges in specific jurisdictions. When preparing and filing cases, having a single jurisdiction in mind can lead to bumpier prosecutions elsewhere and challenge any possible implementation of a worldwide IP strategy. When they are considered at an earlier stage of a patent lifecycle, local IP challenges can be anticipated, resulting in faster and stronger grants. This panel will explore how bringing on board early your foreign counsel, especially in Europe, can help with in-house day-to-day challenges linked to executing a global IP strategy. From invention capture to challenging IP rights, we will cover:

  • Taking EP aspects at the invention capture stage,
  • Selection of EP counsel,
  • Prosecution issues,
  • Grant and validation issues,
  • Challenging IP rights, post grant or opposition,
  • Continuing legal education

Sponsored by: Kilburn & Strode LLP

12:45 PM
01:00 PM
Trade Secret Protection and Breach Avoidance

Trade secrets have been brought to the front lines in a complex patent landscape which recently saw high-profile cases and espionage threatening the integrity of the IP sector. The C-Suite is on high alert – even more so now – as the global pandemic has intensified the challenge of protecting trade secrets. We have seen the vulnerabilities resulting from a virtual workforce, mass layoffs, economic uncertainty, and foreign attacks on our IT infrastructure. Every company needs to implement an effective trade secrets strategy in order to protect its most valuable assets. 

This panel will explore:

  • The current trade secret landscape
    • Benchmarking strategies with industry peers
    • Implementing effective training and policies for protecting trade secrets
    • Establishing protocols – responding to breaches
  • Identifying areas of risk
    • Assessing the impact of the global pandemic, exiting employees, cyber-attacks, remote workforce, and global expansion
    • Reviewing high-profile DTSA claims
      • Interpreting cases relevant to misappropriation of trade secrets
      • Using DTSA as a strategic litigation tool

01:45 PM
02:00 PM
Growing Beyond Borders with Foreign Filings: Best Practices in 2021

Just as important as domestic U.S. trademarks, international trademarks and brand protection is increasingly necessary for businesses of any size. Since business knows no boundaries, your brand and your trademark portfolio should similarly know no boundaries. Do not be mistaken in believing business stops at the border.
Your business name, logo, and overall brand is how people will identify with your goods and services, so you want to have one, clear identity. That identity and brand should be shared and viewed consistently around the world to the greatest extent possible.

Join Victoria Friedman, Managing Partner for Dennemeyer & Associates US in a discussion around best practices for filing your foreign Trademarks. Victoria will cover topics of translations and transliterations, Madrid protocol and what happens after filing.

Sponsored by: The Dennemeyer Group

02:30 PM
Your International IP strategy in 2022

With growing complexity in the United States' IP landscape many US companies are looking at international IP strategy to enhance the company’s business goals. For example, in the two biggest markets for the majority of US companies, China and Europe, there are multiple developments to stay on top of. In China the development of a more balanced approach to IP litigation is making it an essential market for US companies. With Europe the turmoil of Brexit and recent changes to the EPO have US companies needing to understand where that leaves them in terms of strategy. 

This panel will explore:

  • China – is it becoming more balanced for US companies?
  • What are the other markets to pay attention to in Asia?
  • Europe – Brexit and EPO updates
    • UK and Germany litigation landscape
  • Working with foreign law firms and corporate offices

03:15 PM
Closing Remarks and Networking Reception