NYC Corporate Counsel Dinner Event
November 9, 2017
Thank you for joining us! See you next year.
As IP assets increasingly become the core value of today's companies, IP Counsel have an unprecedented opportunity to shape law, business, and policy. This opportunity, however, is fraught with uncertainties around IP valuation and a constantly evolving legal landscape. This Fall, we invite you to join us for cocktails, dinner, and a frank discussion on current industry challenges and how we can move forward together to drive change and lead.
What changes at the USPTO do we need to know about?
How is litigation evolving?
How can we manage an ever-growing IP portfolio so that we can readily use it in different contexts?
How can we simplify the evaluation of our assets as the law changes?
What expanding role can we play within our organizations as well as the industry at large
November 9, 2017
NEW YORK CITY Dinner Program
Welcome and Introductions
“How Corporate Counsel Can Unite to Improve the PTAB and Patent Quality”
In June 2017, the US Supreme Court granted certiorari in Oil States vs. Greene’s Energy Group, et al. At issue is whether IPRs are unconstitutional because they extinguish property rights through a non-Article III forum without a jury. In the mean time, the USPTO continues its efforts to ensure high-quality patents are issued.
- What is the status of the Enhanced Patent Quality Initiative and its various pilot programs?
- What are the pros and cons of compact prosecution?
- Tech vs. Pharma: What are the policy considerations around patent quality, the PTAB, and IPRs?
- What is the status of IPRs? (By November, oral arguments for Oil States case should have occurred.)
- How can companies engage in policy conversations and introduce legislation?
Garson Segal Steinmetz & Fladgate LLP
Associate General Counsel
VP, Legal IP
Senior Patent Counsel
Senior Counsel, IP Law
Associate Commissioner for Patent Quality
“TC Heartland and the Changing Face of Litigation”
In May 2017, the U.S. Supreme Court issued its decision in TC Heartland LLC v. Kraft Food Group Brands LLC. The decision in essence requires patent owners to file patent infringement district court actions in the state where the alleged infringer is incorporated, or where the defendant had a regular place of business and where the infringement occurred.
- What litigation trends are we seeing as a result of the TC Heartland decision?
- What impact has this decision had on forum shopping?
- What impact, if any, has this decision had on U.S. litigation vs. European and Chinese litigation?
- Have we seen an increase in ITC filings or an increase in Delaware district court filings?
Sr. Managing Counsel & Sr. IP Counsel
Chief Patent Counsel
VP & Senior Counsel
“Take Charge of Your IP Portfolio: How to Organize, Identify and Maximize the Value of Your Assets for M&As, Monetization, and Licensing”
Companies have increasing amounts of IP, yet limited resources for IP management. How do you cost-effectively manage and monetize your IP portfolio without compromising the quality of your work? Join us for a strategic discussion on the challenges facing IP departments and different approaches for managing, pruning and monetizing your assets.
- How to get a handle on what you own, how they all fit together, their relative value, and the industry interest for particular assets?
- How to objectively assess each asset and determine whether to maintain, invest in, or abandon it?
- How to ensure the value of your asset is consistent with the value of the corresponding investment?
- How to rank your assets in a way that makes sense to your innovators and business teams?
- Should you form a patent review committee?
- How to manage your IP in an M&A? How to decide which assets to keep, what’s available for a license? How to transfer existing licenses?
McDonnell Boehnen Hulbert & Berghoff
General Patent Counsel
Vice President, IP Counsel
Sony Corporation of America
Assistant General Counsel
Director of IP
“Empowering the IP Function: Interacting with Other Departments to Build Value”
As IP assets increasingly become the core value of today's companies, the IP function can no longer be treated as a collateral part of an organization. In order to develop and implement successful strategies, an organization must include the IP function in all stages of planning in order to maximize the value of its IP assets.
- How to structure the IP function?
- How can the IP function successfully interact with legal, litigation, innovation, marketing and sales to bring the most value?
- How does the IP function evolve as the business evolves?
- How to work with your engineers to increase invention disclosures and optimize claim strategies?
- What is the role of the IP function in corporate ventures and interactions with start-ups? How to co-create?
Vice President of IP
Senior Director, IP Portfolio Management
Director of Strategic Development and IP
Titan Medical, Inc.
Assistant General Counsel
Deputy General Counsel
Hollingsworth & Vose