Held June 20-21, 2023
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Agenda

Tuesday, Jun 20, 2023

7:00 AM ET

Add to Calendar 06/20/2023 7:00 AM America/New_York Breakfast, Registration & Networking ,

8:00 AM ET

Welcome

James Hallenbeck
Gene Quinn
Add to Calendar 06/20/2023 8:00 AM America/New_York Welcome ,

8:45 AM ET

Panel #1 – Building an IP Portfolio: Deciding If and When Patent Protection Makes Sense*

Patenting and secrecy are the two major methods of protecting technology that supports competitive advantage. Trade secrets protect a wide range of confidential information, ranging from customer lists to strategic plans and business methods. Patents, of course, protect innovations. There can be substantial overlap between what can be protected with secrets and patents. Or, perhaps it is more accurate to say…

Sivon Kalminov
Justin Mullen
Michael Nye Michael Nye
Louisa Salomon Louisa Salomon
Add to Calendar 06/20/2023 8:45 AM America/New_York Panel #1 – Building an IP Portfolio: Deciding If and When Patent Protection Makes Sense*

Patenting and secrecy are the two major methods of protecting technology that supports competitive advantage. Trade secrets protect a wide range of confidential information, ranging from customer lists to strategic plans and business methods. Patents, of course, protect innovations. There can be substantial overlap between what can be protected with secrets and patents. Or, perhaps it is more accurate to say…

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9:45 AM ET

Add to Calendar 06/20/2023 9:45 AM America/New_York Break ,

10:00 AM ET

Panel #2 – Creating an Innovative Ecosystem to Drive Value

The concept of driving value in the patent context can mean many different things to different people. Conceptually, there is nothing new about the need for fiscal responsibility as a lead component in the value proposition. What is new, however, is what seems to be the sometimes-unrealistic expectations of the courts, which is diametrically inapposite to the often-indiscriminate cost-cutting measures…

Randy Canis Randy Canis
Idris McKelvey
Joseph Monaghan Joseph Monaghan
Derek Somogy Derek Somogy
Add to Calendar 06/20/2023 10:00 AM America/New_York Panel #2 – Creating an Innovative Ecosystem to Drive Value

The concept of driving value in the patent context can mean many different things to different people. Conceptually, there is nothing new about the need for fiscal responsibility as a lead component in the value proposition. What is new, however, is what seems to be the sometimes-unrealistic expectations of the courts, which is diametrically inapposite to the often-indiscriminate cost-cutting measures…

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11:15 AM ET

Panel #3 – Practical Tips for Increasing Patent Allowance Rates*

The first commandment of patent prosecution should be to know your patent examiner. To do this, patent practitioners need to consider examiner time constraints and production goals, what examiners need to see to allow an application, and must have an appreciation for what examiners are being instructed to do by supervisors. Interactions between patent examiners and patent practitioners are often…

Robert Brush
Drew Hirshfeld Drew Hirshfeld
John Rogitz
Add to Calendar 06/20/2023 11:15 AM America/New_York Panel #3 – Practical Tips for Increasing Patent Allowance Rates*

The first commandment of patent prosecution should be to know your patent examiner. To do this, patent practitioners need to consider examiner time constraints and production goals, what examiners need to see to allow an application, and must have an appreciation for what examiners are being instructed to do by supervisors. Interactions between patent examiners and patent practitioners are often…

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12:15 PM ET

Add to Calendar 06/20/2023 12:15 PM America/New_York Lunch & Networking ,

1:15 PM ET

Panel #4 – Patent Robustness After Amgen: Drafting Specifications to Satisfy the 112 Requirements of Tomorrow*

After Amgen the Supreme Court made what some believe to be significant changes to the law of enablement, finding that the 26 examples, 400+ pages of disclosure and information submitted on via CD ROM was not sufficient to enable the claims. Meanwhile, the United States Patent and Trademark Office (USPTO) has recently embarked on a public inquiry relating to what…

Robert Bahr Robert Bahr
Dan Evans
Brad D. Pedersen
Thara Russell
Add to Calendar 06/20/2023 1:15 PM America/New_York Panel #4 – Patent Robustness After Amgen: Drafting Specifications to Satisfy the 112 Requirements of Tomorrow*

After Amgen the Supreme Court made what some believe to be significant changes to the law of enablement, finding that the 26 examples, 400+ pages of disclosure and information submitted on via CD ROM was not sufficient to enable the claims. Meanwhile, the United States Patent and Trademark Office (USPTO) has recently embarked on a public inquiry relating to what…

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2:15 PM ET

Add to Calendar 06/20/2023 2:15 PM America/New_York Break ,

2:30 PM ET

Panel #5 – Secondary Considerations and the Art of Responding to Obviousness Rejections*

While much attention in recent years has been placed on patent eligibility—and rightly so— the truth is obviousness remains the most important threshold for most innovations. When the Supreme Court issued its decision in KSR v. Teleflex, things substantially changed. Obviousness today is all about predictability of results. Long gone are the days where an obviousness rejection was inappropriate simply…

Keith Fredlake
John Hocker
Keri Sicard
Add to Calendar 06/20/2023 2:30 PM America/New_York Panel #5 – Secondary Considerations and the Art of Responding to Obviousness Rejections*

While much attention in recent years has been placed on patent eligibility—and rightly so— the truth is obviousness remains the most important threshold for most innovations. When the Supreme Court issued its decision in KSR v. Teleflex, things substantially changed. Obviousness today is all about predictability of results. Long gone are the days where an obviousness rejection was inappropriate simply…

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3:30 PM ET

Add to Calendar 06/20/2023 3:30 PM America/New_York Break ,

3:45 PM ET

Panel #6 – The Good, The Bad, and the Ugly: Tips and Strategies for Building a Strong Patent Portfolio*

Patents have been and continue to be an important asset for all innovators. Unfortunately, a patent is not an asset that typically possesses flexibility and adaptability. This makes “doing it right” from the outset of the utmost importance. What does “doing it right” mean? What it means to “do it right” will be the focus of this panel conversation, but…

Timothy Grathwol
Scott Markow Scott Markow
Kristin Murphy Kristin Murphy
Robert Stoll
Add to Calendar 06/20/2023 3:45 PM America/New_York Panel #6 – The Good, The Bad, and the Ugly: Tips and Strategies for Building a Strong Patent Portfolio*

Patents have been and continue to be an important asset for all innovators. Unfortunately, a patent is not an asset that typically possesses flexibility and adaptability. This makes “doing it right” from the outset of the utmost importance. What does “doing it right” mean? What it means to “do it right” will be the focus of this panel conversation, but…

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4:45 PM ET

Add to Calendar 06/20/2023 4:45 PM America/New_York Break ,

5:00 PM ET

Panel #7 – Strategic Portfolio Acquisition and Maintenance: Ensuring Business Objectives Align with Patent Strategy*

A sound patent strategy, and effective execution of such a strategy, are essential ingredients for a technology company’s road to success. While many, if not most, enterprises have instituted or are attempting to execute, a patent strategy of some sort, an important question must be considered: Does the patent strategy align with current and future business goals? Some corporate patent…

Matthew Fenselau
Dean Geibel
Devon Grant Devon Grant
Geoffrey White Geoffrey White
Add to Calendar 06/20/2023 5:00 PM America/New_York Panel #7 – Strategic Portfolio Acquisition and Maintenance: Ensuring Business Objectives Align with Patent Strategy*

A sound patent strategy, and effective execution of such a strategy, are essential ingredients for a technology company’s road to success. While many, if not most, enterprises have instituted or are attempting to execute, a patent strategy of some sort, an important question must be considered: Does the patent strategy align with current and future business goals? Some corporate patent…

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6:00 PM ET

Cocktail Reception

Beer, wine and cocktails with hors’ d’ oeuvres.

Add to Calendar 06/20/2023 6:00 PM America/New_York Cocktail Reception

Beer, wine and cocktails with hors’ d’ oeuvres.

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Wednesday, Jun 21, 2023

8:00 AM ET

Add to Calendar 06/21/2023 8:00 AM America/New_York Breakfast & Networking ,

9:00 AM ET

Panel #8 – Best Practices for Building a Worldwide Patent Portfolio*

For many companies, the best course of action when seeking to obtain worldwide patent protection is to file an International Application under the Patent Cooperation Treaty. This strategy puts off decision-making for up to 30 months after filing the PCT application and leaves virtually all doors open. However, the PCT process is not cheap, and it can be more economical…

Gary Lobel
Cynthia Deal Mitchell Cynthia Deal Mitchell
Rob Rodrigues
John White John White
Add to Calendar 06/21/2023 9:00 AM America/New_York Panel #8 – Best Practices for Building a Worldwide Patent Portfolio*

For many companies, the best course of action when seeking to obtain worldwide patent protection is to file an International Application under the Patent Cooperation Treaty. This strategy puts off decision-making for up to 30 months after filing the PCT application and leaves virtually all doors open. However, the PCT process is not cheap, and it can be more economical…

,

10:00 AM ET

Add to Calendar 06/21/2023 10:00 AM America/New_York Break ,

10:15 AM ET

Panel #9 – The Challenges of Drafting and Prosecuting AI Patents*

So, you’d like to patent your artificial intelligence (AI). It might not be as easy as you think! In the United States, patents can be obtained on inventions that are themselves systems, apparatuses and processes. But patenting AI and machine learning (ML) innovations can be quite challenging because the patent laws as they are written contemplate a different invention paradigm.…

Chris Hannon Christian Hannon
Malgorzata (Gosia) A. Kulczycka
Gene Quinn
Wen Xie
Add to Calendar 06/21/2023 10:15 AM America/New_York Panel #9 – The Challenges of Drafting and Prosecuting AI Patents*

So, you’d like to patent your artificial intelligence (AI). It might not be as easy as you think! In the United States, patents can be obtained on inventions that are themselves systems, apparatuses and processes. But patenting AI and machine learning (ML) innovations can be quite challenging because the patent laws as they are written contemplate a different invention paradigm.…

,

11:15 AM ET

Add to Calendar 06/21/2023 11:15 AM America/New_York Break ,

11:30 AM ET

Panel #10 – The Ethical Implications for Using Artificial Intelligence*

The use of Artificial Intelligence while engaging in the practice of law is fraught with peril and pitfalls from an ethical standpoint. The ethical concerns presented by the use of artificial intelligence are not insurmountable, but do require practitioners to engage in serious forethought and consultation with clients prior to using these tools. Understanding how any particular AI solution collects,…

Jeffrey Cobia
Will Covey Will Covey
Gene Quinn
Add to Calendar 06/21/2023 11:30 AM America/New_York Panel #10 – The Ethical Implications for Using Artificial Intelligence*

The use of Artificial Intelligence while engaging in the practice of law is fraught with peril and pitfalls from an ethical standpoint. The ethical concerns presented by the use of artificial intelligence are not insurmountable, but do require practitioners to engage in serious forethought and consultation with clients prior to using these tools. Understanding how any particular AI solution collects,…

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12:30 PM ET

Add to Calendar 06/21/2023 12:30 PM America/New_York Lunch & Networking ,

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