Event Info

IP Reform: The Future Has Arrived

Implementation of the America Invents Act (“AIA”) is well under way. With such provisions as the expansion of the definition of prior art and creation of a first-to-file system, practice before the US Patent and Trademark Office (“USPTO”) has changed significantly. Concurrently, the European Patent Office (“EPO”) will introduce the new European Unified Patent Court in January 2014 to accompany the new EU Unitary Patent System. Attend the Global Outsourcing Association for Lawyers’ (“GOAL”) international conference to get the latest information about sweeping patent reforms, and gain the necessary tools for developing a strategic IP plan within these new patent regimes. Learn from IP lawyers from in-house and private practice, government representatives, and outsourcing experts who are on the front lines pertaining to these changes.


Ozer Teitelbaum

Ozer Teitelbaum

Senior Director, Global IP Strategy & Senior Corporate IP Counsel Alcatel-Lucent

David Shofi

David Shofi

Chief Intellectual Property Counsel ATMI

Diane Plaut

Diane Plaut

Senior IP Counsel Honeywell International Inc.

Paul Gupta

Paul Gupta

Partner DLA Piper

Raymond Parker III, JD, PhD

Raymond Parker III, JD, PhD

Executive Director and Assistant General Counsel, Intellectual Property Aptalis Pharma US, Inc.

James N. Baillargeon, Ph.D

James N. Baillargeon, Ph.D

Senior Corporate IP Counsel Alcatel-Lucent

David Bomzer

David Bomzer

Assistant Intellectual Property Counsel Pratt & Whitney

Olivier Manigat

Olivier Manigat

Legal Counsel Major League Soccer

Agenda 1

  • 08:30 – 09:30 AM

    Registration; Informal Networking with Exhibitors

  • 09:30 – 09:45 AM

    Opening Remarks; Official Introductions of Global Delegates

    • Official introductions of global delegates
    • About the conference speakers
    • Official introductions among buyers, vendors, and other delegates
    • How to build synergies and leverage conference services most effectively
  • 09:45 – 10:45 AM

    Panel Discussion
    The AIA and New EU Patent System

    The America Invents Act (AIA) is now fully implemented. This Act, the most sweeping legislation of its kind reinvented the U.S. Patent System and brought the US on par with the rest of the world in moving from a “first to invent” to “first inventor to file” system. In 2015, the European patent system will change with the introduction of the unitary patent system, which will provide a choice of either registering a patent country by country, or as a unitary patent providing protection across the 25 EU states.

    This session will address the challenges, complexities, and conundrums— as well opportunities that these new systems pose for companies developing new innovations. Recommendations for tactical planning will be discussed.

    • Challenges and Opportunities under New Patent Regimes: There are many uncertainties arising from the fast-changing and challenging patent environment. US and EU patent reforms, patent trolls and trademark management are just some of the issues shaping the global patent landscape. Patent owners are searching for the best strategies to maximize revenue from their patents while cutting costs.
  • 10:45 – 11:15 AM

    Networking Tea and Informal Networking with Exhibitors

  • 11:15 – 12:00 PM

    Panel Discussion
    Strategies for Managing Global Patent Portfolios under New Patent Regimes

    • Effective IP portfolio management requires a combination of foresight, discipline, preparation, and diligence. This session will offer techniques for portfolio management that align IP assets with financial and business goals. Session leaders will discuss benchmarks, best practices and support strategies for managing IP across the entire value chain.
  • 12:00 – 12:45 PM

    Patent Challenges for Standards in Global ECONOMY


    Where Patents meet technical standards  – a global mix

    • Standards basics
    • What are Standards Essential Patents (SEPs) and why are they Making headlines?
    • Theme relating to Standard Essential Patents (SEPs)
    • How does SEP status affect enforcement – injunction, royalties, competition?
    • Transferring SEPs
    • Case- Courts and agencies and different countries
    • Useful tips
  • 12:45 – 01:45 PM

    Networking Luncheon and Informal Networking with Exhibitors

  • 01:45 – 02:30 PM

    Panel Discussion
    Maximize Your Value and Profits Through Globalization -What role language and localization services play in today’s IP world

    •  What China and Asia mean for IP globalization and IP Monetization
    • The role of patent translations and why high-quality translations are not easy to obtain
    • How to source top-notch translations for IPO, M&A, and litigation support
    • The competition of IP software markets and how effectively a China-based language and globalization service outsourcing firm can help
    •  How to enter the China and Asian markets through cost-effective website localization and marketing.
  • 02:30 – 03:15 PM

    Panel Discussion
    Trademark Strategies and Protections in a Branded World

    In today’s global marketplace, a trademark strategy can create business value. Learn about trademark management processes such as:

    • conducting a thorough trademark search
    • securing the corresponding domain names, and
    • handling foreign translations and equivalents for product brand names
  • 03:15 – 03:30 PM

    Networking Tea Break and Informal Networking with Exhibitors

  • 03:30 – 04:15 PM

    Panel Discussion
    IP Litigation and Alternative Fee Arrangements

    • Using Decision Trees to Deconstruct Patent Litigation
    • Deconstructing the Matter into Phases
    • Methodology
    • Best Practices to Avoid Patent Litigation
    • Staffing
    • Communications/Technology
    • Leveraging Relationships
    • Alternative billing arrangements
    • Leveraging the High Quality and Cost Benefits of Low Cost Countries
    • Ethical Consideration for Billing Arrangements
  • 04:15 – 05:00 PM

    Panel Discussion
    Truth or Fiction?

    This will be a timely global debate on the misconceptions involving legal support services via outsourcing, and best practices for implementing an outsourcing model. An expert panel will debunk the most common objections including:

    • Unauthorized practice of law
    • Quality and confidentiality
    • Attorney-client privilege and other ethical considerations
    • Loss of jobs
  • 05:00 PM

    Day One Closing Remarks

     Agenda 2

  • 09:00 – 09:30 AM

    Registration; Informal Networking with Exhibitors

  • 09:30 – 10:30 AM

    Panel Discussion
    IP Outsourcing Strategies

    Large law firms and legal departments outsource much of their patent prosecution processes already, including prior art searches, patent illustrations, patent proofreading, patent drafting, and patent docketing support. The outsourcing of patent services is high-value work for LPOs, and the recent changes to the US and EU patent systems have the potential to generate an increased volume and scope of work for IP outsourcers. Session leaders will discuss legal, IT and business process outsourcing strategies and how they can be incorporated as part of your overall IP program.

    • Ethical and Legislative Considerations
      • The outsourcing of legal work by a law firm or legal department to a third party LPO provider raises specific issues pertaining to the outsourcing lawyer’s ethical obligations to his or her client.
    • Regulatory and Professional Body Guidance Update
    • Avoiding Unauthorized Practice of Law
    • Supervisory Responsibilities
    • Duty to Act Competently
    • Client Confidentiality
    • How to Bill Appropriately
    • Limitation of Liability in LPO
    • Export Control Regulations
    • EU Data Protection
  • 10:30 – 11:00 AM

    Networking Tea and Informal Networking with Exhibitors

  • 11:00 – 11:45 AM

    Panel Discussion
    Patent Litigation Updates

    • This session will offer a review of patent cases and landmark court rulings, so you can understand how recent decisions may impact your IP strategies.
  • 11:45 – 12:30 PM

    Panel Discussion
    Charting Out the Winning Strategies for IP Services –Excellence is What Matters in the End

    • Need Analysis in IP Services
    • Winning Strategies
    • Involve Clients
    • Consultants, Law Firms vs LPOs
    • Define Expectations (SLA)
    • Establish Channels for Query
    • Update Clients Periodically
  • 12:30 – 01:15 PM

    Panel Discussion
    What You Need to Know about Export Control Regulations

    • In 2008, the US Patent and Trademark Office issued a notice which warned that US export controls might apply to transfers of technical data in the context of outsourcing of patent preparations. IP experts will describe the application of US export controls and sanctions to the export of technical data in connection with patents.
  • 01:15 – 02:15 PM

    Networking Luncheon and Informal Networking with Exhibitors

  • 02:15 – 03:00 PM

    Panel Discussion
    Exploring Strategies in Light of the New Post-Grant Proceedings

    • Parties are taking advantage of the new post-grant proceedings—including inter partes review (IPR), supplemental re-examination, and covered business methods. Hear from patent lawyers on the latest developments for dealing with this new US patent provision.
  • 03:00 – 03:45 PM

    Expert Panel Discussion and Q&A
    The A-Z of Negotiating, Enacting and Managing Outsourcing Relationships

    • Establishing your goals
    • How to begin with legal/IP outsourcing
    • Due diligence process
    • Visiting service provider offices
    • Getting the right people on board
    • Pricing and negotiations
    • Signing contracts
  • 03:45 – 04:00 PM

    Day Two Closing Remarks

  • 04:00 – 05:00 PM

    Networking Tea Break and Informal Networking with Exhibitors


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