Overview

The 15th Annual Advanced Patent Law Institute  at the United States 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. This year’s highlights include:

  • An Update from the USPTO from Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
  • Current Global Enforcement Trends including the influence of countries like Germany, China and others on the U.S. patent system and patent enforcement.
  • An in-depth discussion on Section 101, comparing/contrasting its application across different technologies and life sciences.
  • Hot design patent issues and practical implications of recent decisions.
  • Recent developments and practices before the PTAB, including an update from Deputy Chief Judge Jacqueline Bonilla.
  • Coverage of current issues and best practices for patent practitioners: Section 102 “nuts and bolts”, double patenting issues, after final rejection practice, and more.
  • A review of the year’s key patent decisions in the Federal Circuit and Supreme Court, and their impact on patent practice.
  • Insight from members of the federal judiciary as part of the popular Judicial Panel.

Event Schedule

  • Time
    Credit
    Subject
    Speaker
  • Thursday Morning, Mar. 12, 2020
    Presiding Officer:
    William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
  • 7:30 am
    Registration Opens

    Includes continental breakfast.
  • 8:20 am
    Welcoming Remarks

  • 8:30 am
    1.00 hr
    Global Enforcement Trends

    Moderator:
    Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
    Panelists:
    Atsushi Sato, TMI Associates - San Mateo, CA
    Tobias Wuttke, Meissner Bolte - Munich, Germany
    James Zhu, JunHe LLP - Shanghai, China

    Patent enforcement is often global in two or more jurisdictions requiring a deep understanding of the laws and practices of each jurisdiction, competent counsel in each jurisdiction, and on-going close cooperation between the litigation teams in each jurisdiction. This panel focuses on effective patent litigation in the largest economies after the USA – China, Japan, Germany, and the UK.
  • 9:30 am
    0.75 hr
    Preparing High Quality Patent Applications

    Bradley Forrest, Schwegman Lundberg & Woessner - Minneapolis, MN
    Daniel J. Pereira, Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria, VA

    From biotech to computer software, gain insight on preparing high quality patent applications that are enforceable. Explore the challenges pertaining to patent eligibility, written description, and enablement from drafting through enforcement.
  • 10:15 am
    Break

  • 10:30 am
    1.25 hrs
    Section 101: High Tech v. Life Sciences

    Moderator:
    Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
    Panelists:
    Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC
    June Cohan, U.S. Patent and Trademark Office - Alexandria, VA
    Dale S. Lazar, DLA Piper LLP US - Reston, VA

    The U.S. patent statutes apply equally to all patent applications, but the application of the patent eligibility requirement of Section 101 varies across technologies. Discuss, compare and contrast eligible and non-eligible claims in different fields, review the current examination guidance, and hear an update on legislate reform efforts.
  • 11:45 am
    0.75 hr
    Section 101 Issues in Patent Litigation

    James M. Heintz, DLA Piper LLP US - Reston, VA
    Matthew J. Rizzolo, Ropes & Gray LLP - Washington, DC

    In many contexts “101” is used to mean something basic and easily understandable, but recently Section 101 of the Patent Act has been anything but. Explore the myriad of issues that patentable subject matter uncertainty has caused in patent litigation, touch on lessons learned, and explore what developments may be on the horizon.
  • 12:30 pm
    Pick Up Lunch

    Included in registration.
  • Thursday Afternoon, Mar. 12, 2020
    Presiding Officer:
    J. Devlin Hartline, Antonin Scalia Law School, George Mason University - Arlington, VA
  • KEYNOTE LUNCHEON PRESENTATION
  • 12:50 pm
    0.50 hr
    Update from the USPTO

    Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office - Alexandria, VA

    Hear about the current priorities, programs, and initiatives underway at the Office.
  • 1:20 pm
    Break

  • 1:35 pm
    1.00 hr ethics
    Ethics Issues Facing USPTO Practitioners: A View from the Inside

    Dahlia George, U.S. Patent and Trademark Office, Office of Enrollment and Discipline - Alexandria, VA
    Bernie Knight, BK Consulting - Washington, DC

    Focus on the ethics rules issued by the USPTO in 2013 and how they are applied and enforced by today’s Office of Enrollment and Discipline. New developments will be discussed, including current cases and the new Diversion Program.
  • 2:35 pm
    1.00 hr
    Potpourri of Hot Design Patent Issues: Practical Implications

    Perry Saidman, Saidman DesignLaw Group, LLC - Silver Spring, MD

    Gain insight on maximizing total profit damages in spite of Samsung v. Apple; using single-view drawings; choosing a good title for your application; countering aesthetic functionality and patent exhaustion defenses when asserting spare parts infringement; and praying that reason prevails in Section 103 analysis after federal circuit kicks the can down the road.  

  • 3:35 pm
    Break

  • 3:45 pm
    0.75 hr
    SEPs and FRAND

    Moderator:
    Christian Hannon, U.S. Patent and Trademark Office - Alexandria, VA
    Panelists:
    T. Andrew Culbert, Perkins Coie LLP - Seattle, WA
    Isabella Fu, Microsoft Corporation - Redmond, WA

    Discuss recent developments related to standard essential patents, including cutting edge technologies, fair reasonable and non-discriminatory licensing issues, and an overview of government agency views.
  • 4:30 pm
    1.00 hr
    Judicial Panel

    Moderator:
    William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
    Panelists:
    Hon. Liam O'Grady, U.S. District Court, Eastern District of Virginia - Alexandria, VA
    Hon. Leonard P. Stark, U.S. District Court, District of Delaware - Wilmington, DE

    Distinguished judges discuss their experiences hearing and trying patent cases.
  • 5:30 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Friday Morning, Mar. 13, 2020
    Presiding Officer:
    Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
  • 8:00 am
    Conference Room Opens

    Includes continental breakfast.
  • 8:30 am
    0.75 hr
    On Sale Bar / Impact of Helsinn - 102 Nuts and Bolts

    William LaMarca, U.S. Patent and Trademark Office, Office of the Solicitor - Alexandria, VA
    Jeffrey A. Wolfson, Haynes and Boone, LLP - Washington, DC

    Gain insight on the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. on-sale bar decision and interpretation under the AIA, along with a nuts and bolts look at the resulting practical implications for patent application timing and supply agreement structuring considerations.
  • 9:15 am
    0.50 hr
    Obviousness-Type Double Patenting Issues: Best Practices and Current Trends

    Whitney Remily, Birch Stewart Kolasch & Birch, LLP - Falls Church, VA

    Understand issues and evolving case law relating to double patenting, as well as best practices for addressing double patenting rejections during examination, and pitfalls to avoid. Discuss the impact of double patenting on Patent Term Extension under 35 USC §156, portfolio management, validity, and enforcement after grant.
  • 9:45 am
    0.50 hr
    After Final Rejection Practice

    Kery Fries, U.S. Patent and Trademark Office - Alexandria, VA

    Understand the various available options to reply to a final office action from the USPTO as well as their advantages and disadvantages and chances of success. Topics include QPIDS, pre-appeal brief program, AFCP2.0, as well as amendments, affidavits under rule 41.33.
  • 10:15 am
    Break

  • 10:30 am
    0.50 hr
    PTAB Update

    Hon. Jacqueline Bonilla, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

    Hear an update on PTAB appeals and trial proceedings.
  • 11:00 am
    1.00 hr
    Recent Developments in Practice Before the Patent Trial and Appeal Board (PTAB)

    Moderator:
    Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
    Panelists:
    Jonathan Bowser, Haynes and Boone, LLP - Washington, DC
    Hon. Kalyan Deshpande, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA
    Jessica L.A. Marks, Unified Patents, LLC - Washington, DC
    Angela Oliver, Haynes and Boone, LLP - Washington, DC
    Hon. Michael Tierney, U.S. Patent and Trademark Office, Patent Trial and Appeal Board - Alexandria, VA

    Discuss new developments impacting practice before the Board, including evolving standards on discretionary institution based on prior petitions for review and/or developments in other forums; increasing guidance from the Board in the form of precedential and/or informative decisions and updates to the Trial Practice Guide; the new pilot program on motions to amend that provides earlier feedback to the parties; the impact of Federal Circuit precedent on PTAB practice; and other topics of interest.
  • 12:00 pm
    0.50 hr
    Section 101 Challenges in AIA Trials at the PTAB

    Andrew S. Baluch, Smith Baluch LLP - Washington, DC

    Gain insight on strategic use of AIA trials (CBM, PGR, IPRs) to raise Section 101 issues; raising Section 101 issues in connection with IPR motions to amend and claim construction; and implications of 2019 Patent Eligibility Guidance on PTAB.
  • 12:30 pm
    Break for Lunch - Presentations Resume at 1:00 p.m.

  • Friday Afternoon, Mar. 13, 2020
    Presiding Officer:
    John W. Ryan, Owens & Minor - Mechanicsville, VA
  • LUNCHEON PRESENTATION
  • 1:00 pm
    0.50 hr
    View from the Federal Circuit
    This presentation, originally scheduled to be presented by Hon. Kathleen O'Malley, has been CANCELLED.

  • 1:00 pm
    0.75 hr
    A Year In Review: Recent Decisions from the Supreme Court and Federal Circuit
    This presentation was originally scheduled at 1:45 p.m.

    J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Washington, DC

    A review of the most important cases from the Federal Circuit and the Supreme Court in the past year that every practitioner should know.
  • 1:45 pm
    1.00 hr ethics
    Practical IP Ethics Problems
    This presentation was originally scheduled at 2:30 p.m.

    David Hricik, Mercer University School of Law - Macon, GA

    Using film, animations, and even clips from a patent lawyer-turned stand-up comic, this session addresses conflicts of interest, competently policing trademark infringement without harming your client’s brand, and how to competently and ethically represent clients with IP needs.
  • 2:45 pm
    Adjourn

Conference Faculty

Andrew S. Baluch

Smith Baluch LLP
Washington, DC

Hon. Jacqueline Bonilla

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Jonathan Bowser

Haynes and Boone, LLP
Washington, DC

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

June Cohan

U.S. Patent and Trademark Office
Alexandria, VA

T. Andrew Culbert

Perkins Coie LLP
Seattle, WA

Hon. Kalyan Deshpande

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Bradley Forrest

Schwegman Lundberg & Woessner
Minneapolis, MN

Kery Fries

U.S. Patent and Trademark Office
Alexandria, VA

Isabella Fu

Microsoft Corporation
Redmond, WA

Dahlia George

U.S. Patent and Trademark Office, Office of Enrollment and Discipline
Alexandria, VA

Christian Hannon

U.S. Patent and Trademark Office
Alexandria, VA

James M. Heintz

DLA Piper LLP US
Reston, VA

David Hricik

Mercer University School of Law
Macon, GA

Andrei Iancu

Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office
Alexandria, VA

J. Michael Jakes

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Washington, DC

Bernie Knight

BK Consulting
Washington, DC

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

William LaMarca

U.S. Patent and Trademark Office, Office of the Solicitor
Alexandria, VA

Dale S. Lazar

DLA Piper LLP US
Reston, VA

Jessica L.A. Marks

Unified Patents, LLC
Washington, DC

Hon. Liam O'Grady

U.S. District Court, Eastern District of Virginia
Alexandria, VA

Angela Oliver

Haynes and Boone, LLP
Washington, DC

Daniel J. Pereira

Oblon, McClelland, Maier & Neustadt, L.L.P.
Alexandria, VA

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Whitney Remily

Birch Stewart Kolasch & Birch, LLP
Falls Church, VA

Matthew J. Rizzolo

Ropes & Gray LLP
Washington, DC

Perry Saidman

Saidman DesignLaw Group, LLC
Silver Spring, MD

Atsushi Sato

TMI Associates
San Mateo, CA

Hon. Leonard P. Stark

U.S. District Court, District of Delaware
Wilmington, DE

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC

Hon. Michael Tierney

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Tobias Wuttke

Meissner Bolte
Munich, Germany

James Zhu

JunHe LLP
Shanghai, China

Planning Committee

Hon. Scott R. Boalick

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Hon. Jacqueline Bonilla

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
Alexandria, VA

Jonathan Bowser

Haynes and Boone, LLP
Washington, DC

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

Hon. Janet Gongola

U.S. Patent and Trademark Office
Alexandria, VA

Joanna Jefferson

The University of Texas School of Law
Austin, TX

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

William L. LaFuze

McKool Smith
Houston, TX

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

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Whitney Remily

Birch Stewart Kolasch & Birch, LLP
Falls Church, VA

John W. Ryan

Owens & Minor
Mechanicsville, VA

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

Credit Info

MCLE Credit
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.  
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.  
No Additional Credit 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.  
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 and will report your credit to the MCLE Board of the Supreme Court of Illinois. UT Law CLE will maintain Attendance Records for four years.
As The University of Texas School of Law is a State Bar of Texas approved MCLE provider (Sponsor #13), our courses are presumptively approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Regulations of the Supreme Court of New Jersey Board on Continuing Legal Education. More information and details can be found in the Board of Continuing Legal Education Regulations.

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 Supreme Court of New Jersey Board on Continuing Legal Education. 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.
As The University of Texas School of Law is a State Bar of California approved MCLE provider (#1944), and the State Bar of California is a New York Approved Jurisdiction, our courses are approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Program Rules and the Regulations and Guidelines of the New York State Continuing Legal Education Board. More information and details can be found at Section 6 of the Regulations and Guidelines.

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 New York State Bar Association. 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.  
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.
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.
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.  
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.  
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
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.  

Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Key Dates

Alexandria – Mar 12-13, 2020 – United States Patent and Trademark Office
Conference Concluded
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Alexandria
Last day for Individual early registration: Mar 4, 2020

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Last day for Group (5 registrants minimum) early registration: Mar 4, 2020

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Last day for Group (10 registrants minimum) early registration: Mar 4, 2020

Add $50 for registrations received after this time

Last day for cancellation (full refund): Mar 6, 2020

$50 processing fee applied after this date

Last day for cancellation: Mar 9, 2020

Venue

speaker

United States Patent and Trademark Office

600 Dulany Street
Alexandria, VA


Nearby Hotel Accommodations

speaker

400 Courthouse Square
Alexandria, VA
866.837.4210 (reservations)
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