Managing patent prosecution and a portfolio in today’s complex and ever-changing landscape requires tackling inconsistency by the APJ, budget pressures and a need for higher quality patents. With the budget pressure comes a need to be selective with international filings, focusing on countries that are both important to the business and patent friendly. Coupled with an apparently pro-patent USPTO director what does the future hold and how will this environment effect your current filings and portfolio?
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The businesses goals come to the forefront with the transactional side of IP. M&A, buying and selling portfolios, and structuring impactful licensing deals can be a challenge in a shifting IP landscape. As a result, IP business models have evolved. The lack of data on IP transactions and the multiple valuation techniques for portfolios make for a subjective benchmarking strategy.
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A complex and unclear patent landscape, the DTSA and headlines covering high profile cases and stories of intrigue and espionage have brought Trade Secrets to the attention of the C-Suite. To avoid making the headlines organizations must understand that at its core trade secrets is a human initiative – requiring constant management and employee engagement. How can trade secret breaches and liability be avoided? How can you prove a trade secrets breach if it occurs?
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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.
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The last 12 months have seen a slight shift towards patent owners, due in part to recent legal decisions. Now comments from USPTO leadership hint at forthcoming changes but no firm policies are in place. Keen to avoid longer US litigation cycles and IPRs - owners are looking internationally for faster, cheaper and more favorable enforcement opportunities. As the landscape evolves how can you prepare? What pitfalls should you avoid?
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The PTAB has acted swiftly, adjusting to SCOTUS’ SAS Institute Inc. V. IANCU decision – instituting a spate of short-term efforts to comply with the decision. A finalized set of processes however, still remains unclear. While IPR costs and time to trial is expected to increase – counsel are also facing a strategic rethink to the process. Will IPR dominance remain? Will the recent sovereign immunity ruling bring even greater complexity to the process? What should you focus on? How will the business be impacted?
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Four 20-minute roundtable discussions hosted by a topic expert.
(Attendance is for in-house counsel only – except moderators)
Roundtable 1: Patent Annuity Market Trends
Cary Levitt, Chief Operating Officer, Dennemeyer Group
Dan Bikus, Business Development Manager, Dennemeyer Group
Roundtable 2: Unintended Consequences of Nautilus, Highmark, Octane & Alice for Patent Owners
Brad Lawrence, Partner, Cantor Colburn LLP
Roundtable 3: European Patent Strategy
Christopher Carroll, Partner, White & Case LLP
Roundtable 4: Opinions of Counsel: Recent Developments
Sandra Frantzen, Shareholder, McAndrews, Held & Malloy
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