FORUM 2014
M A R C H 2 5 2 0 1 4 , WA S H I N G T O N D C W I L L A R D I N T E R C O N T I N E N TA L



W W W . M A N A G I N G I P. C O M / U S P A T E N T F O R U M 2 0 1 4

F O R U M 2 0 1 4


Facing major legal developments, especially in the US and Europe, IP owners have to constantly work at the forefront of IP law to maintain competitiveness and protect their most valuable assets. New amendments to the America invents act (AIA), first outcomes of post-grant proceedings, an increasingly activist Supreme Court and major changes to the international tax system affecting your intangible assets pose incredibly dynamic and challenging problems. With focus on litigation, licensing, patent protection and IP commercialisation in the US as well as the most important global developments, the MIP US Patent Forum 2014 is a learning opportunity for leaders managing IP portfolios in the US and abroad. This forum will take a close look at the most recent challenges to IP, which include: a guide to improve your company’s patent application process post-AIA; an evaluation of post-grant proceedings; new updates on the European unified patent court; and analysis of recent standard essential patent (SEP) litigation between Apple and Samsung. With a close focus on leading industry sectors as well as commercialisation of IP, this forum is tailored to those who need to get everything out of their IP assets and like to stay a step ahead of their competition. The MIP US Patent Forum brings together world leaders in corporations, public health and the sciences as well as local and global leading legal experts to discuss and impart valuable knowledge.

• Learn how to improve the content and quality of your company’s patent application process postAIA Listen to analysis of early trends in post-grant proceedings Debate litigation and injunctive relief of standard essential patents (SEPs) Find out how major OECD legislation on tax and transfer pricing will impact your patent portfolio Discover issues about the Unified Patent Court and new litigation strategies in Europe Find ways to tackle trolls effectively and plan ahead of new legislation Examine the rise of antitrust considerations in licensing, litigation settlement and in the patent market

• •

Delegates are warmly invited to attend the day’s discussions to hear from, and network with, leading experts in multiple fields. All delegates will be party to important debates about the most significant developments in the US patent system and will have the opportunity to contribute as well as to learn. Attending this forum will allow local corporations to enhance their IP rights and protection at home as well as in Europe. The topics to be discussed will equip attending corporations with the necessary means to strategise for building a robust and profitable patent portfolio. Whether your industry is pharmaceuticals, software, technology & telecoms or agriculture this forum will cater to your needs and concerns at home and abroad.

F O R U M 2 0 1 4


8.00 8.55 9.00 9.20 Registration Opening remarks by Managing IP Keynote address Michelle Lee, deputy under secretary of commerce for intellectual property and deputy director, US Patent and Trademark Office The total user experience: Improving the content and quality of your company’s patent application process post-AIA • Objectives: Learn how to perfect the invention disclosure process to best protect/mine the core of the user experience post-AIA • Explore ways to speed up the filing/patenting process in light of the new first-to-file system of the AIA • Learn what additional details must be captured during the invention disclosure process Life science panel: How to deal with an increasingly “activist” Supreme Court • Overview of developments: Myriad vs. Gene by Gene, Consumer Watchdog vs. Wisconsin Alumni Research Foundation and others • What constitutes patentable matter? • How far does this lack of legal stability impact the Industry? • Strategies: How to respond to the courts new activism Peter Nguyen, corporate and patent counsel, SC Johnson & Son Inc. Lisa McIntye, patent counsel, Google Bradley J. Van Pelt, shareholder, Banner & Witcoff, Ltd Aseet Patel, shareholder, Banner & Witcoff, Ltd.


Bradford Lyerla, partner, Jenner & Block LLP Sherry Knowles, principal, Knowles Intellectual Property Strategies, LLC Joseph Contrera, patent counsel, Johns Hopkins Technology Transfer Denise Hickey, senior director intellectual property strategy, AbbVie Jason Garbell, senior manager & senior patent attorney, Novozymes North America Inc

11.00 11.20

Coffee ITC panel: Litigation and licensing • How to manage the increase in litigation • Interpretation of “fair, reasonable and non-discriminatory” (Frand) and changes in standard essential patent litigation • A prisoner’s dilemma?: “Honest licensing” versus law suit wars • How to make the most of your assets: An overview of options Stephen E. Belisle, partner, Fitzpatrick, Cella, Harper & Scinto Edmund J. Haughey, partner, Fitzpatrick, Cella, Harper & Scinto Andrew Hirsch, general manager & general counsel, Fuelcor Rodger Sadler, senior patent litigation counsel, Canon USA Alexandra Brodie, partner / chair of tech sector, Wragge & Co Michael Schneider, partner, Wragge & Co


Litigation planning and forum shopping in Europe • Risks and opportunities of forum shopping in Europe • Game over? Litigation planning and strategy under the new UPC • Implications of the Spanish legal challenge outcome Lunch India focus • How effective are India’s patent rights in enhancing innovation and foreign investment • Future legislation to improve patent laws: What is being done, and how effective will it be? • How promoting business is pitted versus social responsibility and protecting human rights in India Perspectives from the Bench: The Inter-relationship between the District Courts, the Federal Circuit, and the Supreme Court • Understanding interaction between the three courts • Why the District Court Patent Pilot Project is useful for you • Analysing implications of the turnover on the Federal Circuit over the last years • Ask the Judge: Open Q&A for the audience Coffee Post-grant proceedings in the USA • Analysis of early post-grant proceedings • Lessons learned from the first outcomes • Future outlook: Preparing for amendments or new legislation

13.00 13.50

Pankaj Soni, partner, Remfry & Sagar


Judge Sharon Prost, US Court of Appeals for the Federal Circuit Todd Q. Dickinson, Executive Director, AIPLA Blair M. Jacobs, partner, McDermott Will & Emery

15.30 15.50

Adam Lerner, intellectual property manager, QIAGEN Eugene T. Perez, intellectual property attorney, Birch, Stewart, Kolasch & Birch, LLP Lead Judge Michael Tierney, Patent Trial and Appeal Board, USPTO

F O R U M 2 0 1 4
16.40 Tackling the trolls: Legislative trends towards NPEs • What is the status of new legislation? • Analysis of how effective the new bills are • How are other countries dealing with non-practising entities? • Class actions for “criminal conspiracy”: Best-practise responses to NPE law suits


Richard Rainey, executive counsel and IP litigation, General Electric Vaishali Udupa, IP litigation counsel, HewlettPackard Company Brian A. Tollefson, partner, Rothwell, Figg, Ernst & Manbeck, P.C. Jennifer B. Maisel, associate, Rothwell, Figg, Ernst & Manbeck, P.C.


Legal developments in China

Mark Cohen, senior counsel, China, United States Patent & Trademark Office Xiaolin Dang, partner, Sanyou Intellectual Property Agency Ltd Commissioner Bruce Lehman, chairman IIPI


End of conference

F O R U M 2 0 1 4


Booking forum
1|Register (Please tick one box)
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(before December 20 2013)

To Register
Advisers / Consultants / Private practitioners  $795  $995  $1,295 TOTAL Online Telephone +1 212 224 3570 Fax +44 20 7779 8279 Email Mail Alicia Sprott Legal Media Group Nestor House Playhouse Yard London EC4V 5EX, UK
CANCELLATION POLICY: If you cannot attend you must cancel your registration in writing by 25 February 2014 to receive a refund less a 10% administration charge. Cancellations received after 25 February 2014, or no shows, are liable for the full conference fee (where applicable). You may send a substitute to attend in your place at no extra charge, however we must know by 21 March 2014 via email. We cannot accept verbal cancellations. If you make your booking online, by email or via the telephone, you are automatically adhering to our terms and conditions. REGISTRATION: The registration fee includes participation in the forum, documentation material, breakfast, coffee breaks and lunch. All delegates are responsible for their own accommodation and travel. PAYMENT: All registration fees (where applicable) must be received in full prior to the event date. The information you provide on this form will be used by Euromoney Institutional Investor PLC and its group companies (“we” or “us”) to process your order and deliver the relevant products/services. We may also monitor your use of the website(s) relating to your order, including information you post and actions you take, to improve our services and track compliance with our terms of use. Except to the extent you indicate your objection below, we may also use your data (including data obtained from monitoring) (a) to keep you informed of our products and services; (b) occasionally to allow companies outside our group to contact you with details of their products/services; or (c) for our journalists to contact you for research purposes. As an international group, we may transfer your data on a global basis for the purposes indicated above, including to countries which may not provide the same level of protection to personal data as within the European Union. By submitting this order, you will be indicating your consent to the use of your data as identified above. Further detail on our use of your personal data is set out in our privacy policy, which is available at or can be provided to you separately upon request. If you object to contact by telephone , fax , or email , or post , please tick the relevant box. If you do not want us to share your information with our journalists , or other companies  please tick the relevant box.

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