Energy Industry Intellectual Property Law Conference

in Plano, Texas, USA

The Center for American and International Law
5201 Democracy Dr.
Plano, Texas 75024

Online registration is closed. Walk-in registrations will be accepted at the conference.

Past Event

Credits:MCLE Credit will be available

Overview

Conference Co-Chairs

Nicholas N. Leach
Chief IP Counsel
Chevron Corporation
San Ramon, CA

Paul R. Morico
Co-Chair Energy IP Practice Group
Baker Botts L.L.P.
Houston, TX

Download the Brochure (pdf)

For more details, download the online brochure.

Tuition

Note: Early registration pricing is available through March 8, 2017.

  • $345.00 - Regular Registration Fee (Regular Price: $395.00)
  • $295.00 - IEL or ILT Advisory Board Member (Regular Price: $345.00)
  • $295.00 - IEL or ILT Supporting or Sustaining Member Employee (Regular Price: $345.00)
  • $295.00 - IEL Young Energy Professional Member (Regular Price: $345.00)
  • $295.00 - CAIL Member or Member Employee (Regular Price: $345.00)
  • $295.00 - Government Employee (Regular Price: $345.00)
  • $75.00 - Full-Time Student (Regular Price: $75.00)
  • $75.00 - Full-Time Professor (Regular Price: $75.00)

Schedule and Faculty

8:20 am


Introductions

8:30 am


Drafting Enforceable Patent Claims in the Oil Field

The unique and evolving nature of the oilfield can present a number of challenges for patent attorneys seeking to draft patents that will be enforceable and provide meaningful protection for inventors and their employers. This presentation will address issues such as patent-eligible subject matter under 35 USC § 101, divided/joint infringement, and extraterritorial limitations on the applicability of US patents.

  • Erik Hawes, Morgan, Lewis & Bockius, LLP, Houston, Texas

9:15 am


What the Texas Uniform Trade Secret Act, the New Federal Trade Secrets Act and the EU Directive Mean for the Energy Industry

  • John H. Barr, Jr., King & Spalding, Houston, Texas
  • Joseph F. Cleveland, Jr., Brackett & Ellis, P.C., Fort Worth, Texas

10:00 am


Break

10:15 am


Departing Employee Issues Associated With Industry Layoffs-Trade Secret Misappropriation: Rogue Inventors

Moderator

  • Steven Christian, Lead Attorney – Energy Technology Company, Chevron, Houston, Texas

Panelists

  • Dwayne L. Mason, Greenberg Traurig LLP, Houston, Texas
  • Scott M. Nelson, Baker McKenzie LLP, Houston, Texas
  • Scott Richardson, Counsel, IP Law Practice Group, Halliburton, Carrolton, Texas

11:00 am


The Effects of Bankruptcy Proceeding on IP Assets and Freedom to Operate

This talk will examine the impact that bankruptcy proceedings have on the disposition of intellectual property rights that are tied up in such proceedings. Such issues include what happens to a licensee’s interest in a license agreement when the trustee rejects an executory contract under which the debtor is a licensor, and the impact such proceedings have on the sale of IP assets. The talk will also focus on certain issues unique to the oil and gas industry such as the right of debtors to disclose seismic data which has been licensed to the debtor as part of sale of those assets.

  • Hon. Stacey G. C. Jernigan, United States Bankrupt Court for the Northern District of Texas, Dallas, Texas
  • Timothy Lynch, Quatela Lynch McCurdy, Rochester, New York
  • Ian Peck, Haynes and Boone, LLP, Houston, Texas

11:45 am


Lunch

12:30 pm


The Impact of Counterfeiting on the Energy Industry and Best Practices For Dealing with Same

Moderator

  • Nicholas N. Leach, Chief IP Counsel, Chevron Corp., San Ramon, California

Panelists

  • Annora Bell, Exxon Mobil Corporation, Houston, Texas
  • Howard J. Shire, Andrews Kurth Kenyon LLP, New York, New York

1:15 pm


Legal Implications of International Transfers of Energy-Related Technology and IP Assets

Due to the global nature of the energy industry, many assets – including intellectual property and related technology – are the subject of cross-border transactions. This program will discuss some of the tax issues associated with such transactions, as well as export controls that may be implicated when technology is sent outside the US.

Moderator

  • Joseph M. Beauchamp, Jones Day, Houston, Texas

Panelists

  • Ryan Chadwick, Vice President and General Counsel, TMK IPSCO, Houston, Texas
  • Kathrin Zoeller, Transfer Pricing, Tax Department, Weatherford, Houston, Texas

2:15 pm


Break

2:30 pm


Technology Development in a Low Cost Environment - Traps of Collaborative Technology Agreements (Ethics .25)

This session will feature panelists providing their perspective on technology development in the energy industry in a low cost environment including the challenges of collaborative technology agreements.

Moderator

  • Melissa Patangia, Chevron Services Company, Houston, Texas

Panelists

  • Frank Turner, Managing IP Counsel, Chevron Corporation, Houston, Texas
  • Bruce Cottrell, Patent Counsel, Los Alamos National Security LLC, Los Alamos, New Mexico
  • Mark A. Tidwell, Haynes and Boone, LLP, Houston, Texas

3:15 pm


Considerations in Drafting License Agreements for Energy Transactions

The international and complex nature of how energy projects are structured presents a number of challenges for intellectual property attorneys seeking to draft license agreements that protect various players in the markets’ interests. This presentation will address issues such how to account for the transferability of IP assets in such transactions, patent exhaustion, avoiding patent misuse and issues to consider when licensing technology from universities.

  • Paul R. Morico, Baker Botts LLP, Houston, Texas

3:45 pm


Break

4:00 pm


What Impact Do Energy-Related Regulatory Requirements Have On IP Rights?

The energy industry is a highly-regulated industry. Those regulations impact all aspects of the business, and intellectual property rights are no exception. This talk will examine the impact several notable industry regulations have on certain intellectual property rights and how to deal with that impact.

  • Thomas Jackson, Baker Botts L.L.P., Washington, D.C.
  • Charles B. Walker, Norton Rose Fulbright US LLP, Houston, Texas

4:45 pm


The State of Patent Agent Privilege and Its Impact on Multinationals (Ethics .75)

In 2016 in In re Queen’s Univ. at Kingston, the US Court of Appeals for the Federal Circuit recognized a patent-agent privilege extending to non-attorney patent agents relating to their authorized practice before the US Patent & Trademark Office. However, in a Texas state court decision, a court of appeals stated that the Queen’s University decision was not binding and refused to recognize a discovery privilege for patent agent communications in a breach of contract case. See In re Andrew Silver (Tex. App. -- Dallas Ct. App. 05-160074-CV, Aug. 17, 2016). This panel will explore the current state of privilege as applied to patent agent communications and its implications, in particular, on multinational corporations.

  • Sharon Israel, Mayer Brown LLP, Houston, Texas
  • Chris Northcutt, Senior Counsel, Chevron, Houston, Texas

5:30 pm


Reception

CLE Credit

MCLE Credit

This program is approved by the State Bar of Texas for a total of 7.5 hours, including 1 hour of ethics. Course ID Number: 901372662. Credit hours for other states will vary and are subject to each state’s approval and credit rounding rules.

For this conference, IEL will directly apply (if requested) for course accreditation in the following states: California, Minnesota, New Mexico, Ohio, Oklahoma, Pennsylvania, Texas and Virginia. Some of these states may not approve a program for credit hours before the program occurs. Attorneys may be eligible to receive CLE credit through reciprocity or attorney self-submission in other states. IEL conferences are typically accredited by all mandatory CLE states.

Overnight Accommodations

The cost of housing is not included in tuition. However, rooms (in limited number) have been reserved at Dallas/Plano Marriott at Legacy Town Center, 7121 Bishop Road, Plano, Texas 75024. Guests may call Marriott Reservations directly at 1-800-228-9290 and mention "IEL - Energy Industry IP Law Conference" to receive the reduced room rate of $198 + tax. The last day to obtain this special rate is March 6, 2017.

Start date: 3/27/17
End date: 3/29/17

BOOK HOTEL ONLINE

Sponsorship Opportunities

Gold Level Conference Sponsor - $2,500 each

  • Recognition in the conference brochure, which will be mailed and emailed to thousands of interested counsel and business leaders
  • Company/firm logo prominently displayed in the conference program
  • Recognition on the conference website, with link back to company/firm website
  • Recognition at the conference, including oral recognition and signage
  • 3 complimentary registrants at the conference
  • Recognition at the conference
  • An opportunity to display company/firm materials at the Conference

Silver Level Conference Sponsor - $2,000 each

  • Recognition in the conference brochure, which will be mailed and emailed to thousands of interested counsel and business leaders
  • Company/firm logo prominently displayed in the conference program
  • Recognition on the conference website, with link back to company/firm website
  • Recognition at the conference, including oral recognition and signage
  • 1 complimentary registrant at the conference

Faculty Dinner (Exclusive) - $2,500 - SOLD OUT

  • Recognition in the conference brochure, which will be mailed and emailed to thousands of interested counsel and business leaders
  • Company/firm logo prominently displayed in the conference program
  • Recognition on the conference website, with link back to company/firm website
  • Recognition at the conference, including at main program and via a sign at the dinner
  • 1 complimentary registrant at the conference
  • Up to 3 complimentary guests for the dinner
  • An opportunity to display company/firm materials at the conference

Exhibitor - $1,500 each
(Non-law Firms only)

  • Space to display company/firm materials at the conference
  • Name/logo on conference website with link to company page

Other Information

Press Policy

All IEL and ILT conferences are held under the Chatham House Rule. Participants, including journalists, are free to use any information received, but comments may not be attributed to any speaker identifi ed by name or affiliation.

Nondiscriminatory Policy

The Center for American and International Law does not discriminate on the basis of race, color, sex, religion, national origin, age, disability, veteran status or any other protected status in educational activities, scholarship programs or admissions.

Registrar: +1.972.244.3404
IEL: +1.972.244.3421
Fax: +1.972.244.3401
E-Mail: iel@cailaw.org

Supported by

Gold Level Sponsors

Faculty Dinner Sponsor