University of Texas School of Law
13th Annual
Advanced Patent Law Institute
Alexandria Mar 1-2, 2018 United States Patent and Trademark Office
Conference Concluded
NOTICE: All Federal offices in the Washington, D.C. area were closed on Friday, March 2nd. Due to the closure, Day 2 of this event could NOT proceed. 

 
PRESENTED BY
The University of Texas School of Law
Antonin Scalia Law School, George Mason University

UT Law CLE

2018 Advanced Patent Law Institute

Program Features
The 13th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office offers a unique opportunity to join USPTO senior staff, leading practitioners, academics and members of the federal judiciary for two days of presentations on the latest developments in patent law, including: 
  • An in-depth discussion on the global patent landscape, with an emphasis on the current state of licensing, enforcing and monetizing patents in the U.S. and overseas.
  • A review of the year’s key patent decisions in the Federal Circuit and Supreme Court, and their impact on patent practice.
  • Section 101 and recent decisions impacting software and high tech, as well as current U.S. and international perspectives on patent eligibility in life sciences.
  • PTAB practice tips, as well as a look at proposed legislation and reforms.
  • Practical tips for prosecuting high quality patents, including claim drafting, claim construction and the use of declarations.
  • Developments in prosecuting design patents, including the impact of Samsung v. Apple in determining the “total” profit for design patent infringement.
  • Changes to the patent venue rules and the impact on enforcement.
  • A look at conflicts of interest and other forms of liability and risk that can arise during patent prosecution.
  • Presentations from members of the judiciary including a keynote presentation by Chief Judge of Federal Circuit, Hon. Sharon Prost, as well as the popular Judicial Panel.

UT Law CLE

2018 Advanced Patent Law Institute

4/26/18
Schedule

Thursday Morning, Mar. 1, 2018

Presiding Officer:
Stephen G. Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

7:30 am
Registration Opens

Includes continental breakfast.

8:20 am
Welcoming Remarks

By Drew Hirshfeld, Commissioner for Patents, U.S. Patent and Trademark Office

8:30 am

1.00 hr

The Global Patent Landscape

Discuss current issues around patenting, licensing, enforcing, and monetizing patents in the U.S., and look at what the EU, China, and UK are experiencing and the impact on U.S. patent environment.

Moderator:
Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Panelists:
Mark Cohen, U.S. Patent and Trademark Office - Alexandria, VA
Hon. Paul R. Michel, United States Court of Appeals for the Federal Circuit - Washington, DC
James Pooley, James Pooley PLC - Menlo Park, CA
Wayne P. Sobon, PAX Labs, Inc. - San Francisco, CA
Robert P. Taylor, RPT Legal Strategies PC - San Francisco, CA

9:30 am

0.75 hr

Standard Essential Patents and FRAND

Hear industry and academic perspectives on some current issues relating to SEPs being debated at various standards development organizations, as well as a case law update relating to the same. Issues include transparency and declarations, the right to license versus the right to access, the willingness of a licensee, the right to injunctive relief, and others.

Andy Culbert, Perkins Coie LLP - Seattle, WA
John Kolakowski, Nokia Technologies - Washington, DC
Materials By:
Kristen Osenga, University of Richmond School of Law - Richmond, VA

10:15 am
Break

10:30 am

0.75 hr

Section 101: Software and High Tech

Alice v. CLS changed the way we, the Federal Circuit, and the USPTO look at Section 101. The law is developing in our common law tradition. But it's important to stay up to date with the latest case law to most effectively refute Section 101 rejections. Review the current state of the law in this evolving area.

Robert Bahr, U.S. Patent and Trademark Office - Alexandria, VA
Dale S. Lazar, DLA Piper LLP US - Reston, VA

11:15 am

0.75 hr

Section 101: Life Sciences

The United States (U.S.) America Invents Act (AIA) of 2011 did not amend the patent subject matter eligibility standards under 35 U.S.C. § 101. Yet, despite the AIA’s goal to provide greater global patent law harmonization, the current state of patent subject matter eligibility law in the U.S. is decidedly not aligned with this long-standing effort. Review the current status of U.S. subject matter eligibility for life sciences, hear how it compares with major international jurisdictions, and explore proposed legislative solutions to address the ongoing negative impact on the U.S. life sciences industry.

Leslie Fischer, Novartis Pharmaceuticals Corporation - East Hanover, NJ
Courtney Stopp, U.S. Patent and Trademark Office - Alexandria, VA

12:00 pm
Pick Up Lunch

Included in registration. 

Thursday Afternoon, Mar. 1, 2018

Presiding Officer:
Devlin Hartline, Antonin Scalia Law School, George Mason University - Arlington, VA

LUNCHEON PRESENTATION

12:20 pm

0.50 hr

Update from the USPTO

Hear about the current priorities, programs, and initiatives underway at the Office.

Joseph Matal, U.S. Patent and Trademark Office - Alexandria, VA

 
12:50 pm
Break

1:05 pm

1.00 hr ethics

Brave New World: Technology Advances Create Ethical Risks For Patent Practitioners 

Technological developments have fundamentally changed how IP legal services are delivered. From virtual offices to outsourced services, patent and other IP services can be provided faster and cheaper, and lawyers can have greater flexibility in where and how they work. Applying old ethics rules to new technologies can create risks for the unwary practitioner. Address how regulatory agencies, including the USPTO’s Office of Enrollment and Discipline, apply the Rules of Professional Conduct to modern technologies and evolving practice environments.  

Michael E. McCabe Jr., McCabe Law LLC - Potomac, MD

2:05 pm

0.50 hr

Changes to the Patent Venue Rules and Enforcement

The U.S. Supreme Court’s ruling in TC Heartland has changed the landscape for patent venue. What constitutes a company’s “regular and established place of business” is now the question before many courts.

John W. Ryan, Washington, DC

2:35 pm

0.50 hr

Licensing Issues

Explore current licensing and tech transfer considerations including PTAB university and tribal sovereign immunity, patent exhaustion, and licensor/licensee provisions.

Jeffrey A. Wolfson, Haynes and Boone, LLP - Washington, DC

3:05 pm
Break

3:15 pm

0.50 hr

PTAB Update

Hear an update on PTAB appeals and trial proceedings.

Hon. David P. Ruschke, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

3:45 pm

0.75 hr

PTAB: Practice Tips and "Pet Peeves"

As the PTAB continues to evolve, several best practices have been identified—as well as possible landmines to avoid. Hear practitioners and PTAB personnel share their experiences from real cases on what works most effectively (and what doesn't) in practicing before the Board.

Eldora L. Ellison, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
Hon. William Fink, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Jeffrey P. Kushan, Sidley Austin LLP - Washington, DC
Hon. Michael Zecher, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

4:30 pm

1.00 hr

PTAB: Proposed Legislation and Reforms

Future patent reform may include legislative changes to the post-grant proceedings included in the AIA. Consider constitutional issues as well as sovereign immunity and explore possible changes that may improve and support innovation.

Moderator:
Hon. Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
Panelists:
Philip S. Johnson, Johnson & Johnson - New Brunswick, NJ
Stephen G. Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Kevin H. Rhodes, 3M Innovative Properties Company - Saint Paul, MN

5:30 pm
Adjourn

Friday Morning, Mar. 2, 2018

Presiding Officer:
William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA

7:30 am
Conference Room Opens

Includes continental breakfast. 

8:30 am

0.50 hr

USPTO Quality and Pilot Programs

Providing high-quality, efficient examination of patent applications is paramount to the mission of the USPTO. Hear about some of the USPTO quality programs including Quality Metrics, Training, Examination Time Analysis, as well as recent and current pilot programs that promote and support the improvement of USPTO products, processes, and services.

Canceled due to weather and closure of Federal offices on March 2.

Greg Vidovich, U.S. Patent and Trademark Office - Alexandria, VA

9:00 am

0.50 hr

Ex Parte Appeals

When is a case ready for appeal? What types of issues should be highlighted in an appeal brief? How do you make the best use of your oral hearing time? Hear insights on these questions and other keys to winning ex parte appeals.

Canceled due to weather and closure of Federal offices on March 2.

Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
Hon. Romulo H. Delmendo, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
Hon. Bruce Wieder, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

9:30 am

1.00 hr

Prosecution of High Quality Patents

Get practical tips for drafting and prosecuting patent applications, which can withstand scrutiny at the Patent Trial and Appeal Board (PTAB). Hear strategic advice for the patent practitioner regarding how to strengthen patent applications, including the importance of considerations regarding claim drafting, claim construction, and the use of declarations.

Canceled due to weather and closure of Federal offices on March 2.

W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA
Stefanos Karmis, U.S. Patent and Trademark Office - Alexandria, VA
Whitney Remily, Haynes and Boone, LLP - Washington, DC

10:30 am
Break

10:45 am

0.75 hr

Determining "Total" Profit for Design Patent Infringement after Samsung v. Apple

After Samsung v. Apple, the unchanged language of 35 U.S.C. 289 awards “total profit” on “any article of manufacture” to which a patented design has been applied, but the Court said the relevant article on which “total profit” is based could be less than the entire infringing product sold, e.g., just a component. This presentation covers issues around determining the relevant “article of manufacture” and “total profit” under 35 U.S.C. 289, including guidance for design patent prosecution after Samsung v. Apple.

Canceled due to weather and closure of Federal offices on March 2.

George Raynal, Saidman DesignLaw Group, LLC - Silver Spring, MD
Commentator:
Lore Unt, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA

11:30 am

1.00 hr

Judicial Panel

Distinguished judges discuss their experiences hearing and trying patent cases.

Canceled due to weather and closure of Federal offices on March 2.

Moderator:
William L. LaFuze, McKool Smith - Houston, TX and Washington, DC
Panelists:
Hon. David Folsom, Jackson Walker LLP - Texarkana, TX
Hon. Amos L. Mazzant III, U.S. District Court, Eastern District of Texas - Sherman, TX
Hon. Liam O'Grady, U.S. District Court, Eastern District of Virginia - Alexandria, VA

12:30 pm
Pick Up Lunch

Included in registration. 

Friday Afternoon, Mar. 2, 2018

Presiding Officer:
Hon. Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC

LUNCHEON PRESENTATION

1:00 pm

0.50 hr

A View from the Federal Circuit

Canceled due to weather and closure of Federal offices on March 2.

Hon. Sharon Prost, Chief Judge, U.S. Court of Appeals for the Federal Circuit - Washington, DC

 
1:30 pm
Break

1:45 pm

0.50 hr

Patent Exhaustion and Lexmark

In Lexmark v. Impression Products, the U.S. Supreme Court dramatically upended long-established Federal Circuit precedent regarding exhaustion of U.S. patent rights for products sold either domestically or internationally, irrespective of any conditions of sale.

Canceled due to weather and closure of Federal offices on March 2.

Timothy C. Meece, Banner & Witcoff - Chicago, IL

2:15 pm

0.75 hr

Year in Review: Recent Decisions from the Federal Circuit and U.S. Supreme Court

Discuss the major patent decisions made this past year and their possible impacts on patent practice, including those from the Supreme Court and the Federal Circuit.

Canceled due to weather and closure of Federal offices on March 2.

Christopher A. Cotropia, Intellectual Property Institute, University of Richmond School of Law - Richmond, VA

3:00 pm

1.00 hr ethics

Patent Prosecution and Malpractice

Understand conflicts of interest and other forms of liability and risk that can arise during patent prosecution, addressing recent cases, and potential means to reduce exposure.

Canceled due to weather and closure of Federal offices on March 2.

David Hricik, Mercer University School of Law and Taylor English Duma LLP - Macon and Atlanta, GA

4:00 pm
Adjourn

UT Law CLE

2018 Advanced Patent Law Institute

Faculty

Conference Faculty

Robert Bahr
U.S. Patent and Trademark Office
Alexandria, VA
W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Mark Cohen
U.S. Patent and Trademark Office
Alexandria, VA
Christopher A. Cotropia
Intellectual Property Institute, University of Richmond School of Law
Richmond, VA
Andy Culbert
Perkins Coie LLP
Seattle, WA
Hon. Romulo H. Delmendo
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Eldora L. Ellison
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Hon. William Fink
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Leslie Fischer
Novartis Pharmaceuticals Corporation
East Hanover, NJ
Hon. David Folsom
Jackson Walker LLP
Texarkana, TX
David Hricik
Mercer University School of Law and Taylor English Duma LLP
Macon and Atlanta, GA
Philip S. Johnson
Johnson & Johnson
New Brunswick, NJ
Stefanos Karmis
U.S. Patent and Trademark Office
Alexandria, VA
John Kolakowski
Nokia Technologies
Washington, DC
Stephen G. Kunin
Oblon, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Jeffrey P. Kushan
Sidley Austin LLP
Washington, DC
William L. LaFuze
McKool Smith
Houston, TX and Washington, DC
Dale S. Lazar
DLA Piper LLP US
Reston, VA
Joseph Matal
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Amos L. Mazzant III
U.S. District Court, Eastern District of Texas
Sherman, TX
Michael E. McCabe Jr.
McCabe Law LLC
Potomac, MD
Timothy C. Meece
Banner & Witcoff
Chicago, IL
Hon. Paul R. Michel
United States Court of Appeals for the Federal Circuit
Washington, DC
Hon. Liam O'Grady
U.S. District Court, Eastern District of Virginia
Alexandria, VA
Kristen Osenga
University of Richmond School of Law
Richmond, VA
James Pooley
James Pooley PLC
Menlo Park, CA
Hon. Sharon Prost
Chief Judge, U.S. Court of Appeals for the Federal Circuit
Washington, DC
George Raynal
Saidman DesignLaw Group, LLC
Silver Spring, MD
Hon. Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Whitney Remily
Haynes and Boone, LLP
Washington, DC
Kevin H. Rhodes
3M Innovative Properties Company
Saint Paul, MN
Hon. David P. Ruschke
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
John W. Ryan
Washington, DC
Wayne P. Sobon
PAX Labs, Inc.
San Francisco, CA
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Courtney Stopp
U.S. Patent and Trademark Office
Alexandria, VA
Robert P. Taylor
RPT Legal Strategies PC
San Francisco, CA
Lore Unt
U.S. Patent and Trademark Office, Office of the Solicitor
Alexandria, VA
Greg Vidovich
U.S. Patent and Trademark Office
Alexandria, VA
Hon. Bruce Wieder
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
Jeffrey A. Wolfson
Haynes and Boone, LLP
Washington, DC
Hon. Michael Zecher
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Planning Committee

W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
Hon. Scott Boalick
U.S. Patent and Trademark Office
Alexandria, VA
Courtenay C. Brinckerhoff
Foley & Lardner LLP
Washington, DC
Elizabeth L. Dougherty
U.S. Patent and Trademark Office
Alexandria, VA
Karin Ferriter
U.S. Patent and Trademark Office
Alexandria, VA
Joanna Jefferson
The University of Texas School of Law
Austin, TX
Stephen G. Kunin
Oblon, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA
William L. LaFuze
McKool Smith
Houston, TX and Washington, DC
William LaMarca
U.S. Patent and Trademark Office, Office of the Solicitor
Alexandria, VA
Dale S. Lazar
DLA Piper LLP US
Reston, VA
David L. McCombs
Haynes and Boone, LLP
Dallas, TX
Adam Mossoff
Antonin Scalia Law School, George Mason University
Arlington, VA
Chris Newman
Antonin Scalia Law School, George Mason University
Arlington, VA
Hon. Teresa Stanek Rea
Crowell & Moring, LLP
Washington, DC
Whitney Remily
Haynes and Boone, LLP
Washington, DC
Hon. David P. Ruschke
U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA
John W. Ryan
Washington, DC
Perry Saidman
Saidman DesignLaw Group, LLC
Silver Spring, MD
Robert Greene Sterne
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC
Shirley Webster
Ocean Tomo, LLC
Houston, TX
Jeffrey A. Wolfson
Haynes and Boone, LLP
Washington, DC
Bradley C. Wright
Banner & Witcoff, Ltd.
Washington, DC

UT Law CLE

2018 Advanced Patent Law Institute

Credit Information

MCLE Credit

Texas
8.00 hrs  |  1.00 hrs Ethics
Additional Information
A Texas MCLE Reporting Form will be included in your course materials. Please complete and return to the registration desk and UT Law CLE will report credit on your behalf to the State Bar of Texas, or you can self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Attendance will be provided at the conference to keep for your records.  
California
8.00 hrs  |  1.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Delaware
8.00 hrs  |  1.00 hrs Ethics
Florida
9.50 hrs  |  1.25 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to The Florida Bar at www.floridabar.org. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Illinois
8.00 hrs  |  1.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will verify the number of Illinois attorneys in attendance within 10 days after the conference. Self report your credit to the MCLE Board of the Supreme Court of Illinois. UT Law CLE will maintain Attendance Records for four years.
Ohio
8.00 hrs  |  1.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.
Oklahoma
9.50 hrs  |  1.25 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the conference.
Pennsylvania
8.00 hrs  |  1.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. You will receive the Pennsylvania CLE Board Credit Request Form and approval documentation to self-report credit directly to the Pennsylvania CLE Board. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Virginia
7.50 hrs  |  1.00 hrs Ethics
Additional Information
At the conference, you will need to sign in on the Record of Attendance form at the registration desk. Self-report your CLE credit directly to the Virginia State Bar. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
Other States
Note on Self-Reporting Your Credits in Another State
If you wish to satisfy MCLE or other professional education requirements in another state for a program offered by the University of Texas School of Law, please check with the state bar or other licensing authority in that state before taking the program to ensure it will qualify for self-reporting your credits.

Other Credit

TX Accounting CPE
9.50 hrs
Additional Information
The University of Texas School of Law (Provider #250) live conferences are presumptively approved by The Texas State Board of Public Accountancy for Texas Accounting CPE credit based on a 50-minute credit hour. Approved for general CPE credit only.

At the conference, you will need to sign in on the Accounting CPE Record of Attendance form at the registration desk. You will receive a Texas Accounting Certificate of Completion at the conference for your records. Self-report your CPE credit directly to TSBPA. UT Law CLE will maintain Attendance Records for four years.  

UT Law CLE

2018 Advanced Patent Law Institute

Key Dates

Alexandria

  • Last day for Individual early registration: Mar 1, 2018
    Add $50 for registrations received after this time
  • Last day for USPTO Employee early registration: Mar 1, 2018
    Add $0 for registrations received after this time
  • Last day for cancellation (full refund): Feb 23, 2018
  • Last day for cancellation (partial refund): Feb 26, 2018
    $50 processing fee applied

UT Law CLE

2018 Advanced Patent Law Institute

Hotel / Venue

Alexandria

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA


Nearby Hotel Accommodations

The Westin Alexandria

400 Courthouse Square
Alexandria, VA
866.837.4210 (reservations)
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