Boston - November 2012 Advisory Board Sponsors Partners Agenda Speakers Venue Registration

9:00-9:15  -  Opening Remarks by:

CHAIRS:
Diane Ferguson
Deputy General Counsel, IP
VCE Company, LLC

Tony Gomes
Deputy General Counsel
Citrix

9:15-10:15   -   NPE Litigation: Alternative Strategies

When your company is sued by an NPE, you may want to negotiate and try to settle before hiring counsel, but what do you do when the NPE refuses to negotiate or even engage in civil discourse? This panel will discuss recent experiences and explore alternative strategies.

- Is the problem getting worse?
- How to manage NPE risk?
- What joint defense groups exist? How to manage cost?

Speakers:
Tony Gomes
Deputy General Counsel
Citrix

John Rabena
Partner
Sughrue Mion

Mallun Yen
Executive Vice President
RPX Corp.

10:15-11:15   -   Developing Your Internal Patent Strategy: Working With Senior Management to Get Buy-In

Given the role of today's patents, developing a comprehensive patent strategy is vital to a company's livelihood.  This panel will examine the implications of the Patent Reform Bill and discuss:

-How the Patent Reform Bill affects your patent strategy?
-How to get buy in?
-How to grow an IP aware culture?
-What kind of processes should you put in place to make it easy for people to be part of the patent dialogue?
-How to encourage open innovation within the company?

Speakers:
Jason Fiorillo
Senior Counsel
Analog Devices

Ayaz Hameed
Senior IP & Licensing Counsel
Pegasystems

Monica Grewal
Partner
WilmerHale

11:15-11:30   -   Break

11:30-12:30   -  Building and Managing Your Patent Portfolio

Companies are paying record prices for patent portfolios, but how do you determine which portfolios to buy or sell?  Whether you are looking to sell or buy, this discussion is not to be missed!

- Which patents should you buy?
- Defensive buying vs. innovation
- How to assess an application?
- How to build a strong portfolio?
- How to quickly valuate a portfolio?
- Once you have a strong portfolio, what should you do with it? License it out, or sell off the patents that aren’t pertinent to your products?

Speakers:
Diane Ferguson
Deputy General Counsel
VCE

Sean Daley
Principal
Fish & Richardson

12:30-12:45   -   Managing Your IP Portfolio: A Different Perspective

Speaker:
Dr. Hoo-min D. Toong
IP Vision

12:45-2:00   -   Luncheon and Address

Patent Reform:  What Companies Need to be Thinking About

The Patent Reform Bill was signed into law in September 2011. Some changes have gone into effect almost immediately, while more significant changes will go into effect in September 2012. What do companies need to be aware of? How can companies prepare? What are we not thinking about but should?

- How can companies take advantage of their new options?
- How can companies prepare for upcoming changes?
- How does "first to file" affect your patent prosecution strategy?
- How are companies using provisionals?

Speaker:
John B. Pegram
Senior Principal
Fish & Richardson
 

2:00-3:00   -    Open Source: Assessing Risks and Setting Up Compliance Programs

There is increasing use of open source software. How can companies assess the real risks? How to educate engineers on the difference between open source and free? What warranties should you give? What should be the scope of indemnification? How are companies identifying licensing concerns? What licenses are amenable to the cloud? How to set up compliance programs?

Speakers:
David Barron
Vice President & Senior iP Counsel
Vistaprint

Phil Koltun
Director, Open Compliance Program
The Linux Foundation

Paul Sarkis
Media & Technology Attorney
ESPN
 

3:00-4:00   -   Working with your engineers

Engineers and lawyers work very differently to meet their goals but with a little bit of training, engineers can successfully collaborate with legal departments to innovate and protect inventions. This panel will address:

-What kinds of training should legal departments provide?
-How much training do engineers need?
-Should legal departments explain the patent system to engineers?
-How to get invention disclosures in? How to review them?

Speakers:
David Foster
Senior Counsel
The Walt Disney Company

Mark Freeman
Associate Counsel and Managing IP Attorney
Hollingsworth & Vose Company

Alyssa Harvey
Vice President, Legal - Global IP
Harman International Industries

4:00-5:00   -   Cocktail Reception

Day Two

8:45-9:45   -   Breakfast and Registration  hosted by Watermark

“Help! I Can’t Find Outside Counsel for my Company!” How In-House Counsel Locate and Establish Strong Relationships with Outside Counsel

Finding the right outside counsel for your company can be a challenge, especially if you are a mid-sized and/or growing company competing with larger companies for law firm attention. Join us for a round-table discussion on how In-House Counsel have found outside counsel who can meet their growing company’s needs

- How to find the right law firm for your company?
- If your company is dispersed throughout the country (or the world), where should your outside counsel be located?
- How to establish relationships that allow outside counsel to meet your growing company’s needs?
- What kind of work do you give your outside counsel?
- How to engage your outside counsel?

Speakers:
Diane Ferguson
Deputy General Counsel, IP
VCE Company, LLC

Alyssa Harvey
Vice President, Legal - Global IP
Harman International Industries

Karineh Khachatourian
Advisory Board Member
Watermark

Lindsay McGuinness
Vice President, Chief Patent Counsel
Hologic 

9:45-10:00   -   Day Two Opening Remarks

CHAIRS:
Diane Ferguson
Deputy General Counsel, IP
VCE Company, LLC

Tony Gomes
Deputy General Counsel
Citrix 

10:00-11:00   -   Standards and Patent Pools

Standard setting is increasingly vital to the commercialization of new technologies, but it also poses many challenges to innovation. This panel will discuss recent trends in standard setting and the status of patent pool regulation. What is the future of patent pools?

Speakers:
Bill Geary
Vice President
MPEG LA

Pete Moller
Managing Director, IP Equity
GE Licensing

Jaime Siegel
Senior IP Counsel
Sony

11:00-12:00   -   Foreign Filing and Prosecution

With limited budgets, companies are re-evaluating where they are filing and prosecuting their patents. If you don’t plan to enforce your patents abroad, do you still need to file abroad? How to position your company for growth? What types of defensive filing strategies and freedom-to-operate considerations matter? What to do to massage PCT applications for different countries? How to structure your foreign filing rights?

Speakers:
Margo Furman
Corporate Counsel
Pfizer

Kellan Ponikiewicz
IP Counsel
Citrix

Linda Thayer
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

12:00-1:00   -   Lunch

1:00-5:00   -   Patent Prosecution Bootcamp sponsored by Sughrue Mion

Avoid rejections and invalidations! This workshop will cover the basics of patent prosecution as well as tips for avoiding sloppy mistakes in written descriptions. Save time and money. Get your applications right the first time!

-How to write a patent application from scratch?
-How to draft a claim that meets transformation test under Bilski?
-What tools are available for facilitating patent application and prosecution?
-How to respond to rejections? How to get your cases allowed
-How to avoid prior art rejections?
-When and how to interview?
-After an application has been filed, are there things you should or should not do to obtain a patent that is stronger or enforceable?
-Should you grant elections over the phone? Why or why not?
-What to say or not say to an examiner on the phone?
-Should you use declarations and if yes, what should be in there?

Speaker:
Ellen Smith
Of Counsel
Sughrue Mion

PLATINUM SPONSOR

Fish & Richardson is a leading global law firm with more than 375 lawyers and technology specialists practicing intellectual property strategy and counseling, intellectual property litigation and business litigation. The depth and breadth of our technical expertise sets us apart from our competitors, helping us earn “IP Firm of the Year” in 2010. We have been distinguished by leading industry resources as a top patent litigation firm for seven straight years, a premier IP firm for America’s biggest companies and an elite Tier 1 law practice in the areas of IP litigation, patent prosecution, ITC and life sciences. Visit www.fr.com.

PLATINUM SPONSOR