AGENDA: Thursday, October 15th, 2020

A complex and unclear patent landscape, headlines covering high profile cases and stories of intrigue and espionage have brought Trade Secrets to the attention of the C-Suite. COVID-19 has now intensified the challenge of protecting trade secrets. The pandemic has caused virtual workforces, mass layoffs, a restarting economy, and foreign attacks on our IT infrastructure.

A well-structured and thorough Trade Secrets strategy and implementation need serious consideration in order to secure the most valuable assets of many companies. How can trade secret breaches be avoided? How can you prove a trade secrets breach if it occurs?

This panel will explore:

• Benchmarking the current landscape:
• Areas of risk: Impact of the global pandemic, exiting employees, cyber-attacks, employees working from home, global expansion, reduced patenting activity
• DTSA
• Current case law
• Going beyond ticking boxes – What are effective trainings and policies?
• When there is a breach – how do you control the damage?
• What strategies should be implemented to prepare for the next wave of economic uncertainty?

How can patent practitioners effectively manage a portfolio during times of economic and market uncertainty? Effective patent portfolio management enables a return on investment in the long-run, and it is also key in excluding competitors from key markets. 

However, the challenges are mounting:

• Economic challenges continue to place cost pressure on IP budgets   
• Many patent portfolios are currently being restructured
• The scope of patent protection is shifting
• Global expansion of businesses requires new thinking
• Should Monetization of IP be part of the strategy?

In today’s environment, what does running an effective portfolio look like? How can you prepare for the future?

This panel will explore:

• The changing landscape – how does it impact your portfolio management?
• What is the impact on COVID-19 on your IP portfolios and portfolio management?
• What are the signs that your portfolio is in good shape?
• What are the areas of strategy or analysis that are overlooked?
• How can patent owners effectively manage a portfolio through a recession?
• What policies and resources are needed to prepare for future economic downturns and market uncertainty?

Managing patent prosecution and a portfolio in today’s complex and turbulent landscape requires tackling inconsistency by global patent offices and courts, budget pressures, and a need for higher quality patents.   Some of the challenges are rooted in the dynamically changing global patent law, others are rooted in the different patent prosecution standards and still others are impacted by the current economic and market uncertainty.

How will this environment affect your current filings and portfolio?

This panel will explore:

• How will USPTO’s initiatives impact patent filing strategies?
• Budget constraints and a push for quality patents – Can this continue?
• Are continuations and provisional filings a sound strategy to buy-time?
• Managing the portfolio budget and renewals – Mixed messages from management
• International filings:  What are the best strategies?
• Can AI tools assist practitioners with the preparation and prosecution of patents?

The environment for Patent Litigation is changing but exactly how much is still unclear. From a defensive perspective, companies must be adept at managing the risk of costly patent litigation.  Plaintiffs are more savvy, battle tested and willing to use international forums. The landscape is in flux and seems to be getting more complex. As institution rates decline, the use of PTAB proceedings is less automatic and requires greater due diligence. While NPE litigation decreases in the U.S., it is increasing in other regions of the world. Operating company litigation remains constant.

Avoiding litigation is preferable but how can you maintain strong defenses when needed?  In light of these developments, companies need to rethink how best to maintain their freedom to develop and launch innovative new products.

This panel will explore:

• Litigation avoidance through portfolio management and product development; is defensive patenting an effective strategy?
• To what extent should companies conduct freedom to operate searches and obtain clearance opinions?
• Be ready for the international litigation or ITC
• Proactive defensive strategy:
• Operating company and rivals
• NPE defense updates
• Shift at the PTAB – the data is confusing

Trends and Future Developments with the European Patent Office for US companies

• What is the Current landscape for US companies in the EPO?
• What impact will Brexit have?
• Which Jurisdictions offer what type of opportunities and challenges?
• Standard Misconception with Oppositions
• How to get the most out of UK outside counsel?

This presentation will discuss the key considerations for protecting trade secrets and litigating trade secrets cases where employees work from home and across borders, the pros and cons of litigating in various forums, and the application of the Defend Trade Secrets Act to conduct outside the United States including the availability of monetary damages and injunctive relief for conduct outside the United States. Given that so many businesses now have employees working remotely, particularly with the COVID-19 pandemic.

Roundtable 1: Litigation Trends in 2020
Ronald Cahill, Partner, Nutter, McLennen & Fish LLP

Roundtable 2: Compact Prosecution
Brad Lawrence, Partner, Cantor Colburn

Roundtable 3: Determining Patent Inventorship
Maya Elbert, Of Counsel, Nelson Mullins Riley & Scarborough LLP

Click here for more info.