Event Info

The Role of LPO in Navigating the Patent Reform Storm

New US patent law, enacted under the America Invents Act, is changing the process for patent filing, prosecution and litigation. Across the Atlantic, the European Patent Organisation (EPO) remains engaged in its own process of reform aimed at creating a single patent valid throughout the EU, while lowering costs and simplifying the administrative procedures. The Legal Process Outsourcing (LPO) industry can play a key role in helping law firms and in-house counsel navigate these unchartered waters and build a strategic intellectual property program to thrive in a competitive global market.

PROMINENT SPEAKERS

Nigel Hsu

Nigel Hsu

Patent Operations Lead, Google Inc., USA

Bruce Rubinger

Bruce Rubinger

Managing Director, Global Prior Art, Inc., USA

John F. Martin

John F. Martin

Chairman and Chief Executive Officer, Innography, Inc., USA

Bryan W. Butler

Bryan W. Butler

IP Counsel, IBM, USA

Nathan Smith

Nathan Smith

Counsel and Patent Attorney, McDermott Will & Emery , USA

Stacey M. Cooper

Stacey M. Cooper

Partner, Gordon & Rees LLP, USA

Darshan Mujumdar

Darshan Mujumdar

Chief Executive Officer LexInnova, USA

Anna Rapp

Anna Rapp

Sales Director, Swedish Patent and Registration Office (PRV), Sweden

Agenda

DAY 1 – 17 Feb 2014 (Pacific Time) – The Changing IP Landscape and the Role of Legal Outsourcing

 

07:30 – 08:45 AM Registration and Informal Networking
08:45 – 09:00 AM Opening Remarks
09:00 – 09:30 AM Around the World in 30 Minutes; Tips for Navigating and Maximizing this Conference

  • Official introductions of global delegates
  • Official introductions among buyers, vendors, and other delegates
  • Understanding the conference schedule
  • How to build synergies and leverage conference services most effectively
  • About the conference speakers
  • About the conference’s exclusive one-on-one introductions
  • FAQs on legal outsourcing strategies
09:30 – 10:00 AM Keynote Address
The New Patent Reform Regime
  • New US patent law, enacted under the America Invents Act, is changing the process for patent filing, prosecution and litigation. Across the Atlantic, the European Patent Organization (EPO) remains engaged in its own process of reform aimed at creating a single patent valid throughout the EU, while lowering costs and simplifying the administrative procedures. The Legal Process Outsourcing (LPO) industry can play a key role in helping law firms and in-house counsel to navigate these unchartered waters and build a strategic intellectual property program to thrive in a competitive global market.
10:00 – 10:30 AM Networking and Coffee Break
Meet Conference Exhibitors
10:30 – 11:30 AM Panel Discussion
U.S. Patent Reform and Key Provisions of the America Invents Act

  • The changes brought by U.S. patent reform and what it means to individuals and firms. The key provisions of the America Invents Act that went into effect in March 2013 are overwhelmingly among the most important topics for the IP industry in 2013.

–         First to File or publish regardless who is the original inventor with exceptions

–         Expanded definition of “Prior Art”

–         Derivation Proceedings

  • The changes brought by U.S. patent reform and what it means to individuals and firms. The key provisions of the America Invents Act that went into effect in March 2013 are overwhelmingly among the most important topics for the IP industry in 2013.
11:30 – 12:30 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
  • Outsourcing Patent Prosecution and Litigation Support
  • Leveraging the High Quality and Cost Benefits of Low Cost Countries
  • Ethical Consideration for Billing Arrangements
12:30 – 01:30 PM Networking Luncheon
01:30 – 02:00 PM GPA’s Experts vs. The Crowd: Setting the Performance Record Straight

  • The historical record of crowdsourcing for IP research.
  • Impact of having full-time search experts compared to reliance on anonymous submitters.
  • GPA’s extensive experience covering key international sources.
  • How to carry out an international search without leaving your desk.
  • Comparison of coverage between GPA’s experts & Crowd.
  • Why transparency is so important.
  • Factors underlying GPA’s big performance edge over the crowd.
02:00 – 03:00 PM Panel Discussion
Charting Out the Winning Strategies for IP Work -Excellence is What Matters in the End

  • Need Analysis in IP Support Services
  • Winning Strategies
  • Involve Clients
  • Internal vs External Teams
  • Define Expectations (SLA)
  • Establish Channels for Query
  • Update Clients Periodically
03:00 – 04:00 PM Panel Discussion
Debunking Perceived Obstacles in Off-Shore IP Resources

A timely debate on the misconceptions involving legal support services via outsourcing, and best practices for implementing an outsourcing model.

  • Selecting a provider – key considerations
  • Transition and Implementation
  • Quality Control and SLAs
  • Successful internal change management and buy-in
  • Perceptions of job loss and loss of control
  • Governance and risk management
04:00 – 04:30 PM Networking and Coffee Break
Meet Conference Exhibitors
04:30 – 05:15 PM Panel Discussion
Applying the Legal Outsourcing Model to IP Strategies

  • Describe a time when legal outsourcing helped you achieve an aspect of your IP strategy
  • Describe how you as a legal or business services provider have enabled your clients to achieve aspects of their IP strategy
  • Describe how as a legal or business services provider you have been able to help clients both develop and execute their IP strategy in support of their overall business objectives
05:15 – 05:30 PM Day One Closing Remarks

DAY 2 – 18 Feb 2014 (Pacific Time) – How IP Outsourcing Can Maximize Portfolio Value in the Era of Reform*

08:00 – 09:00 AM Registration and Informal Networking
09:00 – 10:00 AM Panel Discussion
Emerging Trends and Considerations in IP Outsourcing

  • In this session, delegates will gain practical insights into how the world’s leading companies are tackling current legal and commercial IP outsourcing trends and challenges. As law firms look to expand intoemerging markets, the IP function must support the wider business, while finding efficiencies and protecting against infringement. This session will answer the following questions:

–         As an IP counsel/law firm partner, how can you lead your organization growth in new markets when you have different IP rule and laws applicable in different location?

–         What operational framework must you have in place to implement a successful IP services outsourcing strategy?

–         IP concerns in negotiating offshore outsourcing arrangements

–         What are the major challenges and opportunities for outsourcing IP legal work

  • Contracting models – Traditional, legal engagement letter or a full blown outsourcing contract
  • Work bid out competitively or awarded to present partner – Knows and Trusts?
  • How Conflict of Interest handled in case of third Parties association
  • How conflict between contract terms and applicable codes of professional conduct be mediated and resolved.
  • Role and responsibilities of LPO provider for work that needs to be performed in countries where lawyers are not admitted to practice
  • Work which falls under “reserved legal activity” and should be supervised by a licensed attorney in the relevant jurisdiction
10:00 – 10:30 AM Networking and Coffee Break
Meet Conference Exhibitors
10:30 – 11:30 AM Panel Discussion
IP Litigation: Demonstrating Value through Outsourcing Models

  • In today’s highly aggressive IP litigation environment, legal outsourcing can improve competencies and drive down overall costs. Learn how outsourcing can make a litigation team more efficient and agilethrough e-discovery and technology solutions, such as cloud-based computing, analytics and visualization. The opportunities and saving of both financial and operational cost with a proper governance mechanism

Issues with Outsourcing and Insourcing Patent Prosecution

  • Advantages/disadvantages of outsourcing
  • Advantages/disadvantages of insourcing
  • Middle ground – what steps of the patent prosecution can/should be outsourced vs. kept inside
  • Best practices in working with outside counsel in a full or partial outsourcing situation
11:30 – 12:30 PM Panel Discussion
Measuring the Value: Financial Metrics, Portfolio Growth, Patent Quality, Increased Bandwidth

    • With measurable goals and guidance, the LPO can offer measurable results in advancing your IP strategy. This session will offer advice and solutions for determining the return on investment in IP legal outsourcing.

–         Focus on core activities

–         Cost and efficiency saving

–         Highly competitive team to handle cross border business

–         Training and mentoring of In House Legal Counsel

–         Governance mechanism, continuity and risk management

–         Operational control

12:30 – 01:30 PM Networking Luncheon
01:30 – 02:30 PM Panel Discussion
Choosing Your Brand: The Importance of Trademark Prosecution

  • Choosing the right brand for a new product is critically important in an increasingly global marketplace. A trademarked product name can lead to increased consumer recognition and increased profits.Companies may benefit from engaging an LPO specializing in IP to ensure a thorough trademark search is conducted, the corresponding domain names are secured and foreign translations and equivalents are consideredwhen choosing the best brand name for a new product.
02:30 – 03:30 PM Panel Discussion
Outsourcing – 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
03:30 – 04:30 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
04:30 PM Day Two Closing Remarks

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