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AGENDA: Tuesday, December 3, 2019

07:30 AM
08:30 AM
Patent Prosecution & Portfolio Management: U.S. & International

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?

This panel will explore:

  • How will the new USPTO director’s initiative impact patent filing strategies?
  • Budget constraints and a push for quality patents – Can this continue?
  • Are continuations and provisionals a sound strategy to buy-time?
  • Managing the portfolio budget and renewals – Mixed messages from management
  • International filings:
          - A bad omen for the U.S. system?
          - What are the best strategies?

09:15 AM
Trade Secrets: Global & Domestic Strategies

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. Now add in international trade secrets elements and the complexity only increases. 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 do you handle this both domestically and internationally? What can be done to avoid trade secret breaches and liability? How can you prove a trade secrets breach if it occurs?

This panel will explore:

  • Benchmarking the current landscape:
         - DTSA
         - Current case law
  • Going beyond ticking boxes: What are real-world effective trainings and policies?
  • Areas of trade secrets liability – exiting employees, onboarding and high-stakes markets or innovation
  • When there is a breach – damage control

10:00 AM
Defensive Litigation Strategies

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 U.S. 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? 

This panel will explore:

  • Reality in today’s landscape – Still pro defendant
  • Leaning towards owners
  • Identifying opportunity or strategic advantage
  • Budget
  • Case Law and Preparation
  • SAS
  • TC Heartland
  • IPRs
  • Short term – What can counsel do?

10:45 AM
11:20 AM
U.S. Litigation Trends 2020

The tide is turning, and enforcement is a more viable option for operating companies. How should you change your strategy? Is it time to become more proactive?

This panel will explore:

  • The change in the enforcement landscape
  • A shifting of balance – moving back towards a more neutral environment
  • Drop in institution rates for the PTAB
        - How does this play into the way you approach enforcement?
  • NPEs are ramping up their efforts
  • How is this venue impacting your strategy?
  • Are the jurisdictions ready – Delaware?
  • New USPTO Director – mixed messages
  • ITC and International Litigation 

12:05 PM
Managing Effective International Litigation

With growing complexity in the United States' IP landscape, many U.S. companies are looking internationally. With a global outlook comes the need to manage litigation - both defensive and enforcement. For example, in the two biggest markets for the majority of U.S. 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 U.S. companies. With Europe the turmoil of Brexit and recent changes to the EPO have U.S. companies needing to understand where that leaves them in terms of strategy. How do you manage you approach your litigation strategy?

This panel will explore:

  • China – is it becoming more balanced for U.S. 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

12:55 PM
01:30 PM
Dessert & Coffee Panel: Shaking up PTAB - Post SAS

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?

This panel will explore:

  • State of the current IPR landscape
  • PTAB Today – What do we know? What should you plan for?
  • How should you prepare?
  • Choosing IPRs – Have considerations changed?
  • How to change or evolve your strategy?
  • Has the business case changed for IPRs?
  • Cost, Resource Allocation – Impact on the business
  • Fee hikes – What will their impact be?
  • Best practices in front of the USPTO

02:15 PM
02:30 PM
Roundtable Discussions

Four rotating, 20-minute discussions hosted by a topic expert.
(Attendance is for in-house counsel only – except moderators)

Roundtable 1: Leaving Money on the Table: Unclaimed Subject Matter
Moderated by Dolcera 

Roundtable 2: Patent Annuity Market Trends
Cary Levitt, Chief Operating Officer, Dennemeyer

Roundtable 3: Updates and Strategy for Delaware post TC Heartland
Adam Poff, Partner, Young Conaway Stargatt & Taylor LLP

Roundtable 4: IPR Strategies
Clement Roberts, Partner, Orrick

Roundtable 5: Patentable Subject Matter Under 35 USC § 101
Phil Colburn,
Co-Managing Partner, Cantor Colburn LLP

Click here for more information.

04:10 PM