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AGENDA: Tuesday, May 12th, 2015

7:30am
BREAKFAST AND REGISTRATION
8:15am
OPENING REMARKS: THE EVOLUTION AND MATURATION OF THE IP STRATEGIST


8:30am
PORTFOLIO MANAGEMENT: ALIGNING BUSINESS GOALS WITH IP STRATEGY

The management of your IP portfolio is the nexus of every component of your IP strategy. From evaluating what to keep, what to monetize, and how to go about generating your IP pipeline, the way you manage your portfolio is central to your success as an IP leader. This panel tackles how to use a combination of offensive and defensive strategies to develop a robust intellectual property strategy that aligns with your business goals.

This panel will explore:

• Conducting due diligence in advance and in the moment
• Evaluating the health of your portfolio—signs of vitality and red flags
• Short- and long-term strategies for buying, selling, and licensing
• Creating and implementing your strategy with management buy-in

 

MODERATOR













9:15am
DESIGNING A UNIFIED PATENT PROSECUTION STRATEGY

Maintaining an IP portfolio can be complicated when it is managed both domestically and internationally. However, unifying your patent prosecution strategy across regions is crucial; the consequences of inconsistent or contradictory patent prosecution strategies can be devastating.
 
This presentation will explore:


• Benchmarking the impact of AIA and first-to-file on your portfolio
• Making provisionals work for you
• Defining what “cost-effective” means and applying that definition to your portfolio
• Building a strategy around business goals to business threats
• Getting everyone on board, from R&D to Upper Management











10:00am
SECTION 101 & PATENTABLE SUBJECT MATTER

In 1980, the US Supreme Court verdict in Diamond v. Chakrabarty established that "anything under the sun . . . made by man" is patent eligible in the US.  But recent Supreme Court decisions have made the patent eligibility issue much more murky and confusing.

In 2013, the Supreme Court decision in Myriad Genetics held that isolated and purified human genes such as BRCA1/BRCA2 are products of nature and therefore are patent ineligible.  In 2014, the Supreme Court’s decision in Alice Corp. v. CLS held that computer implemented processes are not patentable if they simply apply an abstract idea.  These and other cases in the life science and business method arenas have created difficulty in identifying a clear path to patent eligibility.

This panel will take a look at what the Supreme Court meant in 1980 when it said ‘made by man’ and discuss the problems created by the Supreme Court’s decisions in Mayo-Myriad as well as Alice Corp. and their progeny.









10:45am
NETWORKING BREAK
11:25am
STRATEGIES FOR DEALING WITH NPES – FIGHT OR FLIGHT

The majority of IP infringement and litigation suits are brought on by NPEs.  Unfortunately, there is no “one size fits all” strategy for dealing with them, so IP leaders must develop a coherent understanding of when to fight and when to settle.

This panel will examine:

• How to evaluate an NPE and the specific threat it poses
• Strategies to deter NPEs at the outset
• When you should fight and when you should settle
• Is sharing caring? (Is inter-company defense viable?)









12:10pm
THE PRICE OF ENTRY: LITIGATING & ENFORCING AGAINST OPERATING COMPANIES

To achieve the best outcome for your enforcement strategy, you need to put in place an effective strategy for dealing with infringers. While licensing may provide short-term results and litigation offers more finality, both pose specific risks and opportunities that you must understand before you choose between them.

This panel will examine:


• The current environment: AIA, ALICE, defensive landscape
• How to identify and understand infringers
• When to license—advantages and disadvantages
• When to litigate—benefits and risks







12.55pm
NETWORKING LUNCH
1:05pm
LUNCH’N’LEARN

Utilizing the ITC in your Enforcement Strategy

This session will explore how companies can use the rapid pace and global reach of the International Trade Commission, the most effective venue for combating patent and other intellectual property infringement, as part of an overall enforcement strategy.  IP attorneys Jeff Catalano and Mircea Tipescu will provide practical advice on how companies should revise and update their ITC strategies in light of recent decisions from the Supreme Court and Federal Circuit.

PRESENTED BY

Brinks Gilson & Lione





2:10pm
DEFENDING AGAINST INFRINGEMENT CLAIMS FROM OPERATING COMPANIES

Organizations today are increasingly being charged with aggressive financial goals for their IP. Furthermore, IP is being used strategically to block or protect market share, and rivals are using litigation for a quick revenue hit. As a result, infringement claims from operating companies are on the rise. However, defensive strategies against other operating companies are very different from defensive strategies against NPEs; therefore, developing a defensive strategy specifically for operating companies is imperative to protecting your IP.

This panel will examine:


• What to do when approached—engaging and understanding motivation
• Determining legitimacy and exposure
• Preparing your defense: buy time, maximize resources, know the endgame
• Anticipating enforcement strategies and formulating your responses
• Considering the consequences when defending against rivals









2:55pm
POST ISSUANCE PROCEEDINGS – THEIR ROLE IN YOUR IP STRATEGY

The AIA created three pseudo-litigation proceedings for challenging patents after issue: post-grant review, inter partes review, and CBM, plus the new supplemental examination. This process is supposed to be faster and more streamlined. Understanding how to best utilize these proceedings will help to shore up effective defensive and enforcement strategies.

This panel will examine:


• When you should consider post issuance proceedings against NPEs
• Determining the defensive strategic implications of the new proceedings
Post-grant review
o Inter Partes Review
CBM
o Supplemental examination











3:40pm
NETWORKING BREAK
4:10pm
ROUNDTABLES

Four 20-minute discussions hosted by a topic expert on the following topics:

  • Due Diligence:  Acquiring Company v. Target –
    practical tips on what to look for when on either side of the table

  • Operating at Peak Organizational Innovative Efficiency

  • The Impact of Alice






5:50pm
CLOSING REMARKS


6:00pm
COCKTAIL RECEPTION

SPONSORED BY

Carlson Caspers