Advanced Practice under the America Invents Act

Overview

Learn in an interactive setting how chief IP counsel of leading corporations are reacting to the implementation of the America Invents Act, and what leading lawyers in private practice are advising their clients about patenting, licensing and enforcement strategies in response to the AIA. This advanced course is for experienced in house and private practice lawyers who want to take a critical look at the AIA and other issues facing patent law that need to be addressed.

Topics will include the unintended consequences of the AIA and its implementation; effects of the AIA on licensing and litigation tactics and strategies and on prosecution; successfully prosecuting and defending contested proceedings at the PTAB; important issues still facing the patent system and the need for additional reforms; and rulemaking, legislative and other activities of the PTO.

Download the Brochure (pdf)

For more details, download the online brochure.

Conference Co-Chairs

Marc A. Hubbard
Hubbard Law PLLC
Dallas, Texas

Lisa Jorgenson
Group Vice President, IP and Licensing
STMicroelectronics
Coppell, Texas

Planning Committee

Tuition

Registration includes the one and a half-day Conference, course materials, the luncheon and reception. 

• $595 / $645 - Regular registration fee
• $395 / $445 - ILT Advisory Board Member
• $395 / $445 - ILT Supporting or Sustaining Member Employee
• $395 / $445 - CAIL Member or Member Employee
• $395 / $445 - AIPLA Member
• $250 / $300 - Government / Non-Profit / Academic

Schedule and Faculty

Thursday, April 11

8:00 am

Continental Breakfast

9:00 am

AIA: What did we achieve, what are the unintended consequences, and what still needs to be done?

• Will patent quality improve?
• What are the unintended consequences?
• Will the AIA lead to greater international harmonization?
• How important is harmonization, and what remains to be done?
• Need for additional reform/changes?
• Technical amendments to AIA
• Outlook for current congressional term

Panel Moderator

Professor David O. Taylor, SMU Dedman School of Law, Dallas, Texas

Panelists

• Philip S. Johnson, Chief Patent Counsel, Johnson & Johnson, New Brunswick, New Jersey
• Bart Showalter, Partner, Baker Botts, Dallas, Texas
• Robert Stoll, Drinker Biddle & Reath LLP, Washington, D.C.

10:30 am

Break

10:45 am

New and changing patent prosecution strategies after the AIA

• How are corporations changing their patenting and prosecution strategies?
• What are private practitioners telling their clients?
• Issues with existing rules
• Traps for the unwary
• Transition to first to file
• Third party participation at the PTO

Panel Moderator

Richard Phillips, Chief Intellectual Property Counsel, ExxonMobil Chemical Company, Houston, Texas

Panelists

• Rob King, Corporate IP Counsel, Silicon Laboratories, Austin, Texas
• Michael Piper, Conley Rose, Plano, Texas
• Jennifer Wuamett, Vice President and Chief Intellectual Property Counsel, Freescale Semiconductor, Inc., Austin, Texas

12:15 pm

Break

12:30 pm

Lunch / Keynote Address

Philip S. Johnson
Chief Patent Counsel
Johnson & Johnson
New Brunswick, New Jersey 

2:00 pm

Break

2:15 pm

Effect of AIA on licensing and litigation strategies and tactics

• Intersection of IPR/PGR and licensing/litigation strategies
• Handling estoppel arising with IPR/PGR
• Stays
• MDLs and mechanisms for managing discovery and claim construction in cases on same patent
• Effect on valuation of patents
• Unresolved litigation issues

Panel Moderator

Lisa Jorgenson, Group Vice President, IP and Licensing, STMicroelectronics, Coppell, Texas

Panelists

• Patrick J. Coyne, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C.
• Hilda Galvan, Jones Day, Dallas, Texas
• Myra McCormack, Johnson & Johnson, New Brunswick, New Jersey

3:45 pm

Break

4:00 pm

Stats and Insights from the Initial IPR and CBM Petitions and Decisions

A look at initial results from the early review proceedings, including statistics, trends and highlights. Plus, examples of the what’s working and not working in terms of petitions, declarations, protective orders, preliminary patent owner statements, motions, and cross-examination. 

Brad Pedersen, Patterson Thuente Pedersen, Minneapolis, Minnesota

4:30 pm

Nuances and strategies for successfully prosecuting and defending IPRs, PGRs, CBMRs before the Board

• Best practices
• Discovery
• Motions practice
• Strategies
• Traps for the unwary
• Unresolved issues

Panel Moderator

Joe Mahoney, Mayer Brown, Chicago, Illinois

Panelists

• Mehran Arjomand, Morrison Forster, Los Angeles, California
• Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., Alexandria, Virginia
• Bernard Knight, General Counsel, U.S. Patent and Trademark Office, Alexandria, Virginia

5:30 pm

Networking Reception

Friday, April 12

8:00 am

Optional Ethics Breakfast Presentation

Professionalism and the AIA: How to Keep You and Your Clients Out of Trouble

The change from first-to-invent to first-to-file makes critical differences to the procedures you and your clients need to follow to obtain patent protection. This presentation will focus on the professional standards required to be successful working under the new act, and what you need to know and do to give your clients the highest quality service.

Colin Cahoon, Carstens & Cahoon, LLP, Dallas, Texas

9:00 am

Critical issues still facing patent law

• Patent timeliness and quality
• Jurisdiction and forum shopping
• Damages
• Joint infringement and inducement
• Subject matter eligibiltiy
• Claim construction

Panel Moderator

Panelists

• Vince Garlock, Deputy Executive Director, American Intellectual Property Law Association, Alexandria, Virginia
• David McCombs, Partner, Haynes & Boone, LLP, Dallas, Texas
• Wayne Sobon, InventErgy, California
• Dean John Whealan, Dean, Intellectual Property Law Studies, George Washington University Law School, Washington, D.C.

10:45 am

Break

11:00 am

The role of the PTO in shaping patent law and policy, and updates on important PTO initiatives

• The role of the PTO in crafting legislation and formulating policy
• Its role in the AIA
• New legislative and policy initiatives
• Software partnership roundtables
• Real-party-in-interest workshops
• Request for comments on RCE practice
• Usage of AIA offerings and current statistics
• Satellite offices; the goals, vision, progress and operation of the Silicon Valley office and what this might mean for Dallas

Bernard Knight, General Counsel, U.S. Patent and Trademark Office, Alexandria, Virginia

12:30 pm

Adjourn 

CLE Credits

MCLE Credit

The State Bar of Texas has approved this program for 10.25 hours, including 1 hour of ethics. Course ID Number: 901262996. Sign-in sheets and/or certificates of attendance will be available for ALL states.

Hotel Information

The cost of housing is not included in tuition. However, rooms (in limited number) have been reserved at the Hyatt Regency Hotel, 300 Reunion Blvd, Dallas, TX 75207. Registrants should call 1.888.421.1442 and advise them they are attending the Advanced Practice Conference to receive a reduced room rate of $189 + tax. Reservations may also be made online by visiting http://www.cailaw.org/ilt/america-invents-act-details-2013.html. The last day to obtain this special rate is March 30, 2013.

Reservations may also be made online. 

CANCELLATION POLICY

Tuition, less a $50 cancellation fee will be refunded upon receipt of written cancellation received by March 29, 2013. E-mail cancellation notice to cburkel@cailaw.org. After this date, no refunds, but substitution of attendees for this program will be permitted. Registrants not entitled to a refund will receive the course materials.

Other Information

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