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Wednesday May 21, 2014

Chairperson's Remarks

Due Diligence & Portfolio Evaluation

The management of your IP portfolio is the nexus of many different aspects of your IP strategy. From evaluating what to keep or monetize to your IP generation pipeline – the way you manage your portfolio is central to your success as an IP leader.

This panel will explore:

  • Due diligence of patents, people and the portfolio
  • How to understand what to let expire, sell, license?
  • Do you have the resources to manage, monetize, defend and enforce your portfolio

A Unified Patent Prosecution Strategy

Maintaining an IP portfolio can be complicated when it is managed both domestically and internationally. Whether you are a large, multi-national corporation or a small venture-backed company, a unified patent prosecution strategy is important because the consequences of inconsistent or contradictory patent prosecution strategies can be devastating.

This presentation will explore:

  • The IP generation stage
  • Working with inventors. scientists & engineers
  • Structures and process
  • Balancing effectiveness with cost: determining what is ‘good enough’

Defending Against NPEs

Operating companies face the reality and threat of NPEs: The majority of IP infringement and litigation suits are brought on by NPEs.  Every case is unique, but there is now enough experience to identify solid strategies that are highly effective in fending off patent trolls. 

This panel will examine:

  • Know your NPE – is it a Troll or an Ogre?
  • Utilizing and understanding the IPR process
  • Joint Defense Groups
  • The AIA and current IP environment


Litigation And Proactive Enforcement

Striking the right balance when dealing with infringers is vital in getting the best outcome for your enforcement strategy. While licensing may provide short term results and litigation provides more finality, both pose specific risks and opportunities.

This panel will examine:

  • Due Diligence - Understand your potential infringers
  • What outcomes do you want
  • When to License – Advantages/Disadvantages
  • When to Litigate –Benefits/Risks

LUNCH 'N' LEARN: Identifying patents of value in any portfolio (not just your own)

Many technology companies in today’s economic climate are looking to leverage IP as a way to generate revenue, either by selling non-core assets or by expanding their patent licensing programs. A number of major players currently generate significant licensing revenue. Many also have patent portfolios for sale. However, bloated portfolios challenge budget conscious CIPO’s to find the marquee patents hiding in plain sight.  What can be done?

This session will suggest tools and processes for identifying those 3% - 5% of patents in a portfolio that are valuable – for licensing, sale or acquisition – and how you can prove it.


Show Me The Money... To Sell, To License, To Hit Quota?

With the exponential growth in IP transactions and deals, business leaders and investors are now looking to create stronger ROI from their IP portfolios. IP is a vital part of a company’s value and a key revenue generator. As a result, IP leaders are being held more accountable for the revenue generated from their portfolios.

This panel will explore:

  • Benchmarks of a strong monetization program
  • Understanding your leadership and managing their expectations
  • When to sell and risks of selling IP?
  • Know your licensee & licensee as a customer

KEYNOTE INTERVIEW: Quarterbacking IP: The New Playbook for IP Leaders

IP leaders need a new playbook to succeed in the post-AIA IP landscape: You must combine business acumen with IP knowledge and the ability to manage, educate, and sell your strategy across your organization. Whether your organization is multinational or a mid-cap operating company, if you have a patents portfolio, you also need a strong offense/defense IP strategy.

Post Issuance Proceedings - The 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 - as well as the new supplemental examination. The process is supposed to be faster and more streamlined – how can they be used both in defensive and enforcement strategies?

This panel will examine:

  • AIA so far – what is the feedback?
  • What are the defensive strategic implications of the new proceedings?
  • How can they be used in an enforcement strategy?
    • Post-grant review
    • Inter Partes Review
    • CBM
    • Supplemental examination

Defending Against Infringement Claims From Operating Companies

More organizations are being charged with aggressive financial goals for their IP and larger companies routinely have enforcement division. IP is also being used strategically to block or protect market share, while litigation is used by rivals during M&A activity purely for a quick revenue hit. As a result, infringement claims from operating companies are rising. However, defensive strategies against other operating companies are very different.

This panel will examine:

  • What to do when approached - engage and understand motivation
  • Understand legitimacy & exposure
  • Defense Preparation: Buy time, use technical & personnel resources, understand endgame
  • Defensive strategies - if sued, or if you have to settle, what enforcement strategies to expect?
  • Defending against rivals: Portfolio Management as a defensive tool