BEST PRACTICES IN INTELLECTUAL PROPERTY MANAGEMENT 2017

BPIP 5th Annual Conference

IP Globalization

Tel Aviv March 27th, 2017*

Sheraton Hotel, Tel Aviv

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08:30 – 09:00

Registration and Breakfast

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09:00 – 10:00

Welcome: Kimberly Lindy, Intellectual Property Resources

Opening Remarks: Yoav Alkalay Co Chair

Opening Remarks and Introduction to Keynote:

 

Morning Keynote Address:  Working Title/Subject: Intellectual Property in the Global Era

 

Brian Hinman, Chief IP Officer of Royal Philips

 

10:00 – 10:30

​Networking Break

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10:30 - 12:00

THE BIG DEBATE: Patent or WHAT ELSE?

Our panelists will debate in two separate debates the pros and cons of: Patents vs. Other IP Strategies; Trolls vs. Practicing Entities; Patents: Homemade or Buy?; To Patent or Not to Patent; Open Development vs. Proprietary; Whether to patent or whether to Trade Secret; Generic vs. Ethical.

 

Moderator:   Barry Schindler, Co Chair BPIP Conference, Co Chair Patent Prosecution Group Greenberg Traurig

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Debaters: 

• Lou Sorrell, Patent Counsel, Google

• Robert Tassinari, Intel Managing Counsel, Patent Licensing Group

• Sonia Cooper, IP Policy & Strategy Intellectual Property Group, Microsoft

• Brian Hinman, Chief Intellectual Property Officer, Philips Intellectual Property &Standards  

• Eyal Barash, Chief IP Counsel for Endocyte

• Ken Seddon, CEO LOTNetwork   

• Erich Spangenberg CEO, nXn Partners 

• Jennifer Swan, Partner Finnegan

• Adam Samansky, Shareholder Mintz Levin

• Harry Grinnell, former IP Counsel Cargill  

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12:00 - 12:15

Presentation of .  The AWARD will be presented to Israeli companies who consistently maintain Intellectual Property as a central pillar of their business strategy. The AWARD recognizes Israeli companies who are at the forefront of safeguarding their innovations, developing valuable intellectual property assets, and using their IP assets as a tool to advance corporate business goals. A select panel of local and international judges will choose three companies to receive the AWARD.

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12:15 - 13:45

Lunch

Facilitated Luncheon Table Discussions    

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This program is subject to updates and changes*

 

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May 31 Master Classes/Intensive 3 hour Workshops (8.30 - 12.00):

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Master Classes are intensive seminars that give participants time to delve into specific subjects with as much detail as time permits. Faculty instructors are proven experts in the field with over dozens of years of experience.

 

Participant Reviews of the Master Classes range from “Spectacular. Worth every minute of my time!” to “I never would have known some of these details; I am now much more able to direct my European Counsel

 

The following are 5 options for the MASTER CLASSES:

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Option 1: Strategic Operation of a Corporate IP Department 

This comprehensive master class will cover topics such as how company value can be destroyed by not managing the company’s intellectual property, how to build a successful IP department from the ground up, the benefits of patent mapping, patent analysis and systematic patent landscaping, ways to control IP costs, ways to extract value from your IP portfolio, and the structure and operation of a visionary IP department.  Also included are challenges, metrics, examples of the elements of a successful IP plan, the budget process, a sample 10 year IP development plan, and examples of some real life corporate success stories. 

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Faculty: Harry Gwinnell is the former VP and CIPO at Cargill Incorporated, America’s largest company. He was the Assistant GC, IP and Assistant Secretary, at Eastman Chemical Company and Intellectual Property Corporate Counsel and Assistant Secretary, at Cabot Corporation and Assistant Chief Patent Counsel, at United Technologies Corporation. Mr. Gwinnell has been named by Intellectual Asset Management Magazine as one of the World’s Leading IP Strategists; he has received the IPO President’s Distinguished Service Award. Mr. Gwinnell is currently Counsel at Greenblum & Bernstein.

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Daniel Ovadya is a patent engineer having studied computer science and economics at the Technical University of Munich. He worked as a patent attorney during his studies and filed an EP patent on cloud computing with his startup in 2000, which was granted in 2003.

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In 2001 he began working in the world biggest electricity company EDF and was there in charge of the development of one of the first tablets and home automation services including connected washing machines. Later he accompanied among other projects the cross-country cooperation of the first smart meter for private homes in Germany.

Since 2014 he is working for Questel and is in charge of the automotive market in Europe and responsible for Turkey and Israel.

 

Option 2: Boosting the Value of Digital Inventions in Europe

Strategic approaches to the creation of European patents for multi-disciplinary inventions across the areas of software, cyber tech and hardware will be topics of this mater class. Profound understanding of European legislation and patent practice is key to obtaining strong protection for digital inventions. This master class takes you on a guided tour through the legal provisions defining the framework for patentability of computer-related inventions, including the European exemptions to patentability, and the requirement for “technical character” developed in EPO case law. Current practice will be illustrated by way of examples from the fields of data encryption, control systems, and medical devices. Practical drafting and prosecution tips will be given, with an emphasis on how to escape European exemptions, build a convincing non-obviousness case, and avoiding added matter. A mini workshop is envisaged as part of the master class.

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Faculty Pia Stahr is a European patent attorney and holds a BSc degree in chemical engineering. She is a partner of Inspicos and part of its life sciences team. She has more than 25 years’ experience in IP consulting and has previously worked with another Danish IP law firm and acted as Head of IPR departments in two larger international companies. She specializes in pharmaceuticals, organic and inorganic chemistry, and biotechnology. Pia has gained extensive experience in IP strategy definition and implementation in the life science industry. She advises a number of Danish and international industrial companies on whose behalf she among other things has drafted a large number of patent applications, infringement and freedom-to-operate analyzes, patent strategies, and participated in litigation. Pia has for years acted as an IP tutor in CEIPI Denmark, training of candidates for the European Qualifying Examination and organizes several courses for the Danish Institute for IPR training. She is a member of the Professional Education Committee (PEC) of the European Patent Institute. She is also the chairman of the education committee of the Association of Danish Intellectual Property Attorneys.

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Jakob Pade Frederiksen has more than 20 years of experience in the IP profession and represents clients in national and multinational patent infringement and validity disputes, as well as in patent office proceedings. His experience includes a significant number of EPO oppositions and appeals. Jakob’s activities further comprise patent strategy consultancy, drafting and prosecution of patent applications, opinion work and freedom to operate studies. He is particularly active within the fields of sustainable energy systems, medical devices, conveyor and manufacturing plants, fluid dynamics, hydrocarbon recovery, control systems, software and general mechanics. He has passed the CEIPI/epi Litigation Course and frequently acts as an expert judge and court-appointed expert on patent infringement in Denmark. He has been nominated as “IP Star” by Managing Intellectual Property, and he is listed in “IAM 1000 – The World’s Leading Patent Practitioners”. Jakob is a member of various working committees under the epi and the Association of Danish Intellectual Property Attorneys, and he has authored and contributed to a number of articles and other publications on European patent law.

 

Option 3: Inter Partes Review Proceedings and Patent Eligibility: The Impact on US Patent Prosecution

US IPR’s and patent eligibility challenges after the Supreme Court’s “Alice” decision have had a major impact on US patent law. During this Master Class, learn from known experts regarding: the impact of IPR’s, how to minimize the likelihood of an IPR challenge by strategic patent prosecution, how to minimize the risk of a patent ineligibility finding for new applications, how to overcome ineligibility rejections at the USPTO, and the nature and impact of evolving case law in these two rapidly changing areas.

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Faculty: Barry J. Schindler is Co-Chair of Greenberg Traurig's Global Patent Prosecution Group -- a group that has approximately 4,000 domestic and 4,100 foreign applications pending and over 100 attorneys, who are registered with the USPTO -- and a shareholder in the New Jersey Intellectual Property & Technology Department. Barry has more than twenty-five years of legal experience in all aspects of pharmaceutical and chemical patent prosecution -- representing numerous major pharmaceutical and chemical companies regarding patents relating to small molecules and synthetic compounds. Barry also has wide-ranging patent experience in such areas as medical devices, business method processes, food products/supplements, telemedicine, internet-based systems, plastics and has provided counsel to some of the world's most innovative corporations in such areas.

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Barry has helped companies of all sizes build and manage significant patent portfolios, develop in-house procedures, and formulate intellectual property strategies. Barry positions clients to gain a competitive advantage by identifying patentable subject matter and drafting claims and providing patent opinions in such a way that infringement becomes possible to prove. Barry has been entrusted to manage the worldwide patent portfolios of some of the largest companies in the world, and has prosecuted hundreds of patents. Barry also focuses his practice on managing the patent portfolio for numerous innovative Israeli start-ups. Barry has experience with reexaminations and IPR proceedings as well as partnering with the USPTO in improving these proceedings. Barry periodically presents at the USPTO and has presented numerous seminars regarding the strategic use of the new AIA post-grant proceedings. 

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Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice.  A registered patent attorney and Electrical Engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking space, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions. He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware. Jim’s litigation and prosecution matters have covered other wide-ranging technology areas including semiconductors, semiconductor fabrication, pharmaceuticals, medical devices, fiber optics, cameras, injection molding, manufacturing, toys, pulp and paper, steel production, electronics and electro-mechanical devices.

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Jim’s clients in the US and abroad range from start-ups with one or two key patents to giants with thousands of patents worldwide.  A frequent author and lecturer on patent law issues, he is relied on by clients to assist in protecting their most significant technology in a manner that will stand up in litigation, to defend against charges of infringement frequently brought by patent assertion entities, and to work with in-house counsel to develop processes and procedures to effectively manage worldwide patent portfolios.  Jim also maintains strategic relations with the USPTO, and has conducted hundreds of personal interview with US Patent Examiners to more rapidly move his clients’ cases to allowance.

 

Option 4: Avoiding Costly Mistakes in Patent Prosecution

Numerous pitfalls during patent prosecution can limit, or destroy, the value of patents.  Patent-eligibility, definiteness, written description, functional claiming, and over-breadth are just a few of the key issues that affect patent value.  During this master class, learn from known experts about what to do and, most importantly, what to avoid doing, during patent prosecution.

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Faculty: Elliot Cook, Partner at Finnegan, maintains a diverse intellectual property practice, including patent litigation, post-grant patent challenges, patent prosecution, and patent monetization. Mr. Cook focuses on helping clients strategically develop patent portfolios that effectively block competitors and build corporate value. He works closely with clients to ensure that their patents align with and advance their business goals, thereby optimizing value and minimizing cost. Based on his involvement in more than 20 patent litigations, Mr. Cook has significant experience both defending against and asserting patent rights. His litigation experience ranges from early dispositive motions through trying a case before a jury, including both written and oral advocacy. 

Mr. Cook's practice before the U.S. Patent and Trademark Office (USPTO) includes post-grant proceedings and patent prosecution. He has worked on more than 40 inter partes review (IPR) matters, representing both petitioners and patent owners, as well as several ex parte and inter partes reexamination matters. He maintains an active patent prosecution practice, securing patent rights for both startups and established market leaders. Mr. Cook has assisted clients with patent licensing, patent monetization strategy, and patent sales and purchases ranging in value from approximately $20 million to more than $1 billion.

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Darren Jiron, Partner at Finnegan relying on extensive experience in both patent procurement and patent litigation, focuses on building strategically developed patent portfolios. With a special interest in helping high-tech and fast-growing companies craft patent plans to block competitors and build corporate value, Mr. Jiron works closely with clients to ensure their patents align with and support their business goals. He is also skilled in defensive and offensive patent portfolio assessment, patent validity and infringement opinions, due diligence, product clearance studies, patent portfolio management, and patent prosecution.   Mr. Jiron has more than a decade of litigation experience and has represented clients in all phases of patent litigation before numerous U.S. district courts and the U.S. International Trade Commission (ITC). Mr. Jiron also leads post-grant review (PGR) proceedings before Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) and has extensive experience in the strategic use of patent reexamination and PGR in conjunction with parallel litigation. 

Option 5: The Interplay of IP and FDA strategy to maximize value for companies in Biopharma, Medical Device

and e-Health

Adam Samansky and Bethany Hills discuss the critical importance of integrating your Intellectual Property and Federal Drug Administration & other health regulatory strategies to create a framework for the successful launch and growth of drugs and medical devices in the US market. Patents, Trademarks, clinical trials, naming, labeling, marketing, pricing, and reimbursement should all be taken into account early in planning your approach to the US. Falling short in one or more of these areas could severely limit opportunity for success.

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Faculty: Bethany Mills is Chair of the Mintz Levin’s FDA practice and leverages deep FDA regulatory experience and exceptional knowledge of the health care delivery system to help international and domestic health technology companies enter and navigate the US health care market. Bethany helps companies manage the full range of FDA regulation issues, from inspections and investigations through complex regulatory challenges affecting everything from product approvals and product labeling to collaborative research, supply, and distribution agreements. She focuses on mission critical strategic engagements, including all aspects of FDA communications. She regularly devises unique regulatory strategies that are then implemented through FDA submissions and complex interactions with the FDA, including post-approval compliance and enforcement.

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Bethany has represented the full breadth of health care provider businesses — hospitals, physicians, accountable care organizations, developmental disability specialists, and others — in a broad range of regulatory, reimbursement, and US and international compliance matters.

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Adam Samansky, member at Mintz Levin, has a practice which focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in a range of industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

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For pharmaceutical clients, Adam leverages his trial and appellate experience in litigation when advising on new product development, regulatory strategy, Orange Book listing, citizen petition practice, and the settlement of multiparty, highly contested Hatch-Waxman litigation. Adam regularly conducts due diligence on blockbuster pharmaceutical assets, including reviewing and assessing litigation, regulatory, and competitive strategies.