In-House IP Manager Forum Webinars

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Title: Complex IP Licensing Transactions:

Faculty: David Kappos (Cravath) and

Asa Kling (Naschitz, Brandes, Amir) 

Wednesday, January 13 | 16.00 – 17.00 IST

As industries from bio/pharma to information technology and materials/chemicals have become more specialized in recent years, intellectual property licensing -- as a supplement to or replacement for in-house technology development -- has become increasingly complex in Israel, the U.S., and indeed globally in view of the many options and considerations to be taken into account. This session will examine the benefits and the risks of licensing, while also exploring how to best structure and negotiate complex licensing agreements to ensure effective results for both licensor and licensee.

The Secret Weapon of Utility Models:  

Spontaneously improve your enforcement options out of pending patent applications against infringers in Europe. Hear how to’s and war stories

Faculty: Christopher Maierhoefer and Felix Roediger, Bird & Bird 

Wednesday, November 11 | 16.00 – 17.00 IST

In this session, Bird & Bird discusses the often-underrated legal instrument of branching off utility models to get the best outcome in an enforcement campaign against patent infringers in Europe. In Germany and other continental European countries, it is possible to branch-off utility models from a pending patent application and amending the claim language when doing so. Being an unexamined right, the utility model is usually registered within a few weeks only. If there is disclosure in the pending (but not yet granted) patent application for tailor-made claims covering the infringing products, utility models not only enhance and leverage enforcement options for right holders, but also provide the chance to quickly obtain an enforceable IP right in case of a slow progress of examination proceedings. The two Bird & Bird partners presenting this topic have years of experience in patent and utility model litigation in Europe and will also focus on how to embed this legal instrument in the overall enforcement strategy. The presenters will give practical examples and case studies where such strategy has proven to be successful.

Trade Secret Threat Looms Due to Economic Downturn:
Protecting and enforcing trade secrets in the COVID era.

Faculty: Adam Samansky, & Nick Armington, MINTZ

Wednesday, October 14 | 16.00 – 17.00 IDT

In this session, Mintz discusses the impending increase in trade secret litigation triggered by the current economic downturn and the sudden increase in work-from-home arrangements due to the COVID-19 pandemic.
Topics include:

  • Economic and social drivers of a likely uptick in trade secret misappropriation

  • What qualifies as a trade secret under the Defend Trade Secrets Act and state trade secret statutes

  • What measures qualify as reasonable, under the statutes, to maintain the secrecy of valuable information

  • Steps businesses can take to protect against misappropriation by employees and/or business partners, including techniques for identifying risk factors that may precede misappropriation and what to do once misappropriation is identified.

Super-Powering Your Patents by Switching from Technical to Conceptual Claiming 

Presenters: Gerson Panitch, Partner, Finnegan
Wednesday, September 2 | 16.00 – 17.00 IDT

** This webinar is open to in house IP managers only. 

The Program:

Inventors, technical by their nature, tend to describe their inventions in highly technical terms.  Patent attorneys, cast from similar technical molds, regularly transcribe the inventor’s disclosure into patents with technical claims.  And competitors, imbued with technical acumen, are skilled in avoiding infringement by substituting alternative non-patented technical solutions to achieve a patent’s goals.  This is the technical quagmire of patents.  And you, as the patent attorney, are the only one with the power to break the cycle.  For inventors will never stop viewing the world through a technical lens, and competitors will never stop trying to find alternative technical solutions to avoiding your patents.  In this webinar open exclusively to IPR in house IP managers, we will empower you, as the patent attorney, with the ability to recast the inventor’s technical description into a conceptual one that, at the highest claiming level, omits the very details your competitors would otherwise find ways to avoid. 


Drafting Patents to Survive Patent-Eligibility
Threats in Litigation
Presenters: Elliot Cook and Darren Jiron, Partners Finnegan

IP Landscaping and Competitor Analysis: Use case Bioinformatics

Faculty: Anna Maria Villa, Manuel Wirz;

Swiss Federal Institute of Intellectual Property – ip-search

Wednesday, December 2 | 16.00 – 17.00 IDT

A strategic patent analysis helps to gain an overview of a technology sector, your competitors or trends in a specified field of technology. In addition, it can also help you to better assess the economic value of a patent portfolio. This webinar will provide an insight into strategic patent analysis using bioinformatics as an example.


The topics include:

  • The minimum information required to perform an analysis

  • How to identify SME’s and start-ups

  • How to analyze what big players are doing

  • Find the perfect match for a merger or acquisition

IP Issues in Different Technology Areas Leveraging AI and Big Data

Presenters: Barry Schindler, Adam Snukal, Mark Ruberto, Greenberg Traurig

Wednesday, September 9 | 16.00 – 17.00 IDT

As more technology platforms and solutions are architected around an artificial intelligence (AI) foundation, businesses will need to consider both the internal and external effects on AI, particularly around intellectual property protection of AI.  This webinar will examine the following related topics:


  • Does the specific industry vertical demand special considerations when it comes to developing/using AI?

  • Should AI patent applications be written differently depending upon the industry vertical?

  • Unique challenges that we’ve encountered when prosecuting AI patent applications across different industry verticals; and

  • Best practices when it comes to protecting AI within select industry verticals.

360 Degree Perspective on AI Patenting challenges and opportunities in AI
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From the IP Department to the Boardroom
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U.S. Design PatentsQuickest, Easiest and Cost Effective
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