Mr. Ainsworth concentrates his practice in the area of patent litigation. He has represented clients in patent cases in federal courts and before the United States International Trade Commission in the pharmaceutical, consumer products, electronics, and e-commerce industries. He has extensive experience representing clients in the pharmaceutical industry in litigation arising under the Hatch-Waxman Act.

After law school, Mr. Ainsworth served as a law clerk for the Honorable Sue L. Robinson, United States District Judge, District of Delaware. Prior to joining the firm, he was a senior associate in the Washington DC office of Covington & Burling LLP.

The Reexamination Center is a comprehensive website providing news, events, education, and analysis on all aspects of patent reexamination, as well as patent office litigation spurred by the passage of the Leahy-Smith America Invents Act. To visit the website, click here.

Corporate Counsel® magazine recently published its 9th annual reference guide “In-House Law Departments at the Top 500 Companies” (based on revenue) in December 2011.  The guide includes detailed profiles for general counsel at these corporations, as well as listings of their current outside Go-To Law Firms in various practice areas, including litigation, securities, corporate transactions, labor & employment and intellectual property.

Pictured with this year's recipients are Monica R. Talley, Jennifer S. Bisk, and former SKGF scholarship winner Michelle K. Holoubek.

Article originally published in Vol. XXXIV 337  Rep., ITC Trial Law. Ass'n, The Paul J. Luckern Summer Associate Edition 2 (2011).

The USPTO will hold two public hearings in support of the genetic testing study. The first public hearing will be held on Thursday, February 16, 2012, beginning at 9 a.m., Eastern Standard Time (EST), and ending at 4 p.m., EST, in Alexandria, Virginia. The second public hearing will be held on Friday, March 9, 2012, beginning at 9 a.m., Pacific Standard Time (PST), and ending at 4 p.m., PST, in San Diego, California.

Those wishing to present oral testimony at either hearing must request an opportunity to do so in writing no later than February 8, 2012. Requests to testify should indicate the following: (1) The name of the person wishing to testify; (2) the person's contact information (telephone number and email address); (3) the organization(s) the person represents, if any; (4) an indication of the amount of time needed for the testimony; and (5) a preliminary written copy of the testimony. The USPTO asks for a preliminary written copy of the testimony in order to better prepare for pre-scheduled witness testimony. Requests to testify must be submitted by email to Saurabh Vishnubhakat at saurabh.vishnubhakat@uspto.gov. Based upon the requests received, an agenda for witness testimony will be sent to testifying requesters and posted on the USPTO Web site.

Speakers providing testimony at the hearings should submit a written copy of their testimony for inclusion in the record of the proceedings no later than March 26, 2012.

The public hearings will be available via Web cast. Information about the Web cast will be posted on the USPTO Web site before the public hearing.

 To learn more, click here.

To read the full article by Howard A. Schmidt on The White House Blog, click here.

• Prior User Rights Defense Report
• International Patent Protection for Small Businesses Report
  

1.  Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act. 

Brief Summary:

SUPPLEMENTARY INFORMATION: Section 6 of the Leahy-Smith America Invents Act replaces the current inter partes reexamination proceedings with inter partes review proceedings, and creates new post grant review proceedings. See Public Law 112-29, 125 Stat. 284 (2011). Section 6 of the Leahy-Smith America Invents Act also provides for an estoppel that may attach with respect to ex parte reexamination based on an inter partes review or post grant review proceeding. The Office is proposing to revise the rules of practice in title 37 of the Code of Federal Regulations (CFR) to implement these post-patent provisions, along with changes in nomenclature pertaining to the renaming of the ``Board of Patent Appeals and Interferences'' as the ``Patent Trial and Appeal Board'' and the replacement of references to interference proceedings with references to derivation proceedings. The post grant review, inter partes review, and derivation provisions of sections 3 and 6 of the Leahy-Smith America Invents Act will be implemented by separate rulemakings.

2.   Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

Brief Summary:

This provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Office, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the applications. A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing or reissue application. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted and be submitted within a certain statutorily specified time period. The third party must submit a fee as prescribed by the Director and a statement that the submission complies with all of the statutory requirements. The third-party preissuance submission provision of the Leahy-Smith America Invents Act is effective on September 16, 2012, and applies to any application filed before, on, or after September 16, 2012.

3.  Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings

Brief Summary:

The Leahy-Smith America Invents Act (AIA) requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the United States Patent and Trademark Office (Office or USPTO), as prescribed in the regulations governing disciplinary proceedings. The Office initiates disciplinary proceedings via three types of disciplinary complaints: complaints predicated on the receipt of a probable cause determination from the Committee on Discipline; complaints seeking reciprocal discipline; and complaints seeking interim suspension based on a serious crime conviction. This notice proposes that the one-year statute of limitations commences, with respect to complaints predicated on the receipt of a probable cause determination from the Committee on Discipline, the date on which the Director, Office of Enrollment and Discipline (OED Director) receives from the practitioner a complete, written response to a request for information and evidence; with respect to complaints based on reciprocal discipline, the date on which the OED Director receives a certified copy of the record or order regarding the practitioner being publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified; and, with respect to complaints for interim suspension based on a serious crime conviction, the date on which the OED Director receives a certified copy of the record, docket entry, or judgment demonstrating that the practitioner has been convicted of a serious crime.

The USPTO is proposing to change the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the BPAI rather than the date on which a notice of appeal to the BPAI is filed. The Office recently published the final rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex parte appeals and defined that jurisdiction of the appeal passes to the BPAI at the earlier of the filing of the reply brief or upon the expiration of the time in which to file a reply brief. See Rules Of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (November 22, 2011).

Accordingly, for purposes of calculating patent term adjustment based upon appellate review, the impact of the rule change would be to reduce the amount of patent term adjustment awarded for successful appeal under  35 USC 154(b)(1)(C)(iii). However, the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B). The patent term adjustment award for the three year provision may increase when the examiner reopens prosecution after a notice of appeal is filed (e.g., following a pre-appeal conference or an appeal conference) and the patent issues thereafter, because the period of time between the filing of the notice of appeal and the examiner's reopening of prosecution would no longer be deducted under 35 USC 154(b)(1)(B)(ii).
 
Written comments must be received on or before January 27, 2012. No public hearing will be held.

This full day of programming will include a discussion by Tammy Mangan, Director of Marketing for Sterne Kessler and Marguerite Downey, Director of Communications & Client Services for Adduci, Mastriani entitled "Reserving Your Seat at the Table."  They will look closely at the strategies needed to strengthen your position within the firm and get a “seat at the table?”  This session will offer practical tips to help you take charge of your personal brand. You’ll learn how to market yourself by developing alliances and positioning your careers in order to contribute to the overall business development strategy of the firm. Using case studies, the program will focus on how to develop and implement a personal marketing plan to strengthen your professional connections and your position within your firm.  You will also have the opportunity to create an individual “elevator” statement to communicate your brand to meet the professional image you wish to convey. You will come away from this session with clear examples and key resources to improve your own professional development plan.

For more information about the lecture series, click here.

Learn more about this conference here.

• Who is actually being granted the patent now - the author or inventor or the entity?
• How can inventorship be assigned and how does this impact who "owns" the patent?
• What constitutes sufficient proprietary interest?
• Ensuring that you have an adequate oath or declaration of inventorship
• Evaluating the impact on existing and future licensing and collaborations
• With the requirements that inventors collaborate gone, what is the potential for combined applications and what notification is necessary?
• What are the potential benefits and risks to the acutal inventor as a result of these changes?
• Update on PTO rulemaking initiatives related to inventorship provisions

Abstract: In an effort to promote the development and commercialization of biobased technologies that conserve natural resources or reduce negative environmental impact, such as the sustainable, cost- and eco-efficient production of chemicals, materials, consumer goods, and alternative energy, patent offices in the U.S. and around the world are adopting strategies to expedite the examination of patent applications pertaining to such “green” technologies.  Since implementation of the U.S. Patent and Trademark Office's Green Technology Pilot Program on December 8, 2009, over 500 patents have issued under the Program.  Given that the average pendency of patent applications examined in turn is about 35 months, companies should carefully consider taking advantage of this new accelerated examination procedure to quickly bring their green technologies to market.  This presentation will outline the requirements, advantages and disadvantages and current statistics for accelerated examination under the USPTO's Pilot Program and will identify and briefly discuss similar initiatives worldwide.

Learn more about the conference here.

Learn more about this conference here.

 Click here for more information about this webinar series.

The panel will be moderated by Phil Cox of Global Law Marketing.

Discussion will cover: the tools needed to raise your visibility in the legal marketing industry, how personal branding can assist you in achieving your professional goals, the use of various social media outlets to bolster your brand, and how to determine the type of on-line footprint you want your co-workers and potential employers to observe.

Learn more about this event here.

This event is the first of such roundtable discussions and will cover Inter Partes Review. In view of his expertise in inter partes reexaminations, Robert Greene Sterne will participate as a panelist in the discussion.

Other panelists include James Grimmelmann, Esq., Robert S. Katz Esq., and Charles L Mauro. Click here for more information about this event.

Given the scope of these changes, this webinar will address how the Act as a whole opens the door wider for patent litigation at the USPTO. This includes a closer look at:

• The new agency-level decision-making body created by the Act, called the Patent Trial and Appeal Board (PTAB), and its composition, role, and procedures.
• The four new (or recast) grounds for vetting patentability at the USPTO on behalf of patent owners or third-party challengers: post-grant review, inter partes review, supplemental examination, and the original ex parte reexamination.
• Various strategic issues raised by the America Invents Act as it aims to move more patentability decisions to the USPTO and at the same time make them more timely and efficient.

The Twelfth annual Sedona Conference^® on Patent Litigation again features a stellar faculty, including a judge from the CAFC, a 3rd Circuit judge, a Magistrate Judge from the ED of Texas, in-house counsel from Google and Bristol-Myers Squibb, and nationally renowned trial attorneys and patent counsel from coast to coast.

Click here for more information about this event.

For more information click here.

The first webinar will look at Post Grant Review (PGR) and Inter Partes Review/Reexamination (IPR) and the impact these provisions will have on patent litigation. Although new laws associated with PGR and IPR will not go into effect until September 16, 2012, it will be critical to understand the new laws as soon as possible.  In particular, estoppels, stays, and filing deadlines will shape patent litigation strategy.

Moreover, requests for traditional IPR will be permitted until September 16, 2012; however, the standard for granting such a request has been changed from the substantial new question (“SNQ”) standard to a “reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request.”  The U.S. Patent and Trademark Office has already implemented this change in the rules of practice.

Speakers:

• Kevin Rhodes, 3M Innovative Properties Co.
• Jon Wright, Sterne, Kessler, Goldstein & Fox, PLLC
• Charles Miller, Dickstein Shapiro LLP

 Click here for more information about this webinar series.

Senior law firm marketers and local nonprofit fundraisers come together for a roundtable discussion on how to develop “win-win” community partnerships with D.C. area nonprofits.  Topics will include:

• Understanding law firm and nonprofit strategic objectives
• What kind of community visibility is most useful for law firms?
• Sponsorship packages that provide the most impact
• Collaborative PR strategies
• And whatever questions you bring to the dialogue

Panelists:

• José Cunningham, Chief Marketing & Business Development Officer at Crowell & Moring
• Kathryn Holmes Johnson, Director of Communications at Akin Gump Strauss Hauer & Feld
• Diana Kroner, Senior Director of Marketing & Communications at Dickstein Shapiro LLP
• Tammy Mangan, Director of Marketing at Sterne, Kessler, Goldstein & Fox
  

View the agenda for the conference here.

View the brochure for the conference here.

• Understanding key pharmaceutical property & patent protection issues
• Building a strong, bullet-proof patent portfolio
• Preventing patent loopholes for new products

Click here to learn more about this event.

For more information about this event or to register click here.

Download the 2011 Georgetown Energy Conference Brochure here.

• Utility patents vs. design patents
• What types of inventions are patentable?
• Parts of a patent application and costs associated with obtaining protection
• Patents and their relationship with "freedom to operate"
• How to determine whether to file for a patent or keep a trade secret

Click here for more information about this webinar series.

For more information click here.

Click here for more information about this webinar series.

The US Patient Protection and Affordable Care Act of 2010 established an abbreviated approval pathway for biosimilar biologics.  Although modeled after the Hatch-Waxman Act that governs approval of general small molecules, the Biosimilars Act has unique provisions specific to approval of biosimilar biologics.  An overview of the legal requirements for an application of a biosimilar biologic, including the intellectual property will be reviewed.

• Understanding the FDA’s current position on the implementation of a biosimilar pathway and strategically positioning your company to protect or increase market share
• Demonstrating interchangeability and proving or disproving similarity based upon the heightened statutory standard
• Determining what level of clinical data biosimilar applicants must provide to prove safety and efficacy 
• Evaluating the impact that the 12-year exclusivity period will have on competition and research and development
• Assessing the financial viability of biosimilars in light of potential regulatory hurdles and forecasting potential profit margins
• Maximizing biologic patent life and safeguarding intellectual property in light of loss of exclusivity and patent protection
• Developing proactive strategies and plans in preparation for the eventuality of biosimilar patent disputes
• Investigating alternative pathways to market a biosimilar including Biologic License Applications (BLAs) and biobetters
• Overcoming challenges to naming, branding and distinguishing biosimilar products
• Scrutinizing the success of biosimilars globally so far and comparing various regulatory models which may influence the FDA

Commentary and practical advice from patent litigators and prosecutors on the current process and proposed improvements. Are District Courts granting fewer stays because the re-examination process, including appeals, is too long? If the USPTO accelerates the reexamination process, what effect will that have on proceedings in District Court? What can litigators do when both proceedings proceed without a stay? Click here to learn more about this event.
 

Panelists:

• Sheila Swaroop, Knobbe, Martens, Olson & Bear, LLP
• Edward V. Anderson, Sidley Austin LLP (moderator)
• Bill Galliani, Cooley LLP
• G. Hopkins Guy, Orrick, Herrington & Sutcliffe LLP
  

Program Description. 

Law firm retreats are unique opportunities to confront tough issues, set or change direction, focus on a strategic plan, and develop consensus. Retreats – whether for the full firm, office or a practice – allow lawyers to separate themselves from the daily grind of billable hours and the distractions of constant communication to focus on the firm's future.

A well-planned retreat can be THE single event with the greatest impact on the firm, bringing together the people, ideas and resources that make the practice of law worthwhile. A successful retreat requires a comprehensive plan: why are we doing this, what do we want to achieve, how will we coordinate the resources to do it? Answer those questions, and your retreat will take your firm where it should go – into the future.

This is a comprehensive discussion covering the key elements needed to produce a retreat that is worth all the time and effort. Topics include:

- Initial planning including goals, challenges, staffing, topic development, and outside speakers
- Building a budget that supports what you want to accomplish
- Choosing a location that fits your budget and will facilitate camaraderie as well as serious discussion
- Crafting an agenda, including the selection of outside speakers, that will generate interesting, challenging ideas and the enthusiasm to accomplish them
- Structuring the technology tools that support dynamic programs and full communication

Addtional Panelists: Bharat Bhushan Joshi, Dolcera ITES, Konrad Sechley, Gowling Lafleur Henderson, LLP

Click here for more information about this event.

• Best practices for building IP
• Conducting due diligence investigations
• How to best position your company’s IP to its prospective partner
• Real-life M&A examples: what went right, what went wrong, and why

Click here for more information about this event.

• Patent strategy and defensive efforts
• Trademark registration and protection strategy
• Unfair competition and false advertising
• Uniform Trade Secret Act
• Patent forensics
• Non-competition, non-disclosure and anti-raid agreements

Click here for more information about this webinar series.

03.22.11 Georgetown University School of Law, 5021 Hotung

Time: 1:30 pm

Reexamination and Concurrent Patent Litigation in the District Courts and USITC

03.24.11 University of Virginia School of Law

Time: 12:00 pm

How to Start a Law Firm

03.24.11 University of Virginia School of Law

Time: 2:00 pm

Reexamination and Concurrent Patent Litigation in the District Courts and USITC

03.29.11 George Mason University School of Law

Time: 5:00 pm

Robert Greene Sterne, Jon Wright and Sal Bezos will present "Reexamination and Concurrent Patent Litigation in the District Courts and USITC" to students at the George Mason University School of Law.

US International Trade Commission

04.12.11, University of Maryland Law School, Room 310

Time: 5:30 pm

Michael D. Specht and Daniel E. Yonan will give a presentation regarding the USITC to intellectual property students at the University of Maryland Law School. 

If you are not registering online, download the registration form here and fax to 703-415-0786.

A panel will discuss the business impact and intellectual property valuation.  Panelists include:

• Dr. Ken Carter, President and CEO, Noble Life Sciences
• Dr. Reinhard Ebner, VP of Biology, Destiny Life Sciences
• Rene Salas, Growth Markets Leader, Ernst & Young
• Dr. Kenley Hoover, Of Counsel, Sterne, Kessler, Goldstein & Fox
  
  

Other Panelists:

• Dr. Mark Rohrbaugh, Director, Office of Technology Transfer, NIH
• Dr. Michele Wales, Vice President of Intellectual Property at Human Genome Sciences
• Dr. Hans Sauer, Deputy General Counsel for Intellectual Property, Biotechnology Industry Organization

Click here for more information about this event.

• What is branding
• Why develop a personal brand
• Personal brand building blocks
• Tools for raising your visibility
• Using social media to bolster your brand

• Knowing how the new regulatory pathway operates
• Getting a clear idea of what exclusive rights are being granted to manufacturers
• Forecasting potential costs of entry
• Considering the process for resolving potential patent infringement claims

• Structuring deals and terms that incorporate rights granted under the new pathway

  • factoring the right safeguards into the agreement
  • including appropriate terms for addressing exclusivity
  • analyzing emerging follow-on strategies and players
  • Assessing what models apply in the absence of available comparables

• Developing detailed, realistic and accurate patent litigation budgets
• Identifying steps that in-house counsel can take to help
• Developing an alternative fee arrangement that can accommodate the uncertainties inherent in litigation
• Instituting litigation controls for outside counsel
• Steps that outside counsel can take to reduce costs
• Keeping discovery costs at a tolerable level, reducing e-discovery costs
• Employing technology and software tools
• Considering the pros and cons from a cost-perspective of alternatives to U.S. litigation

Other sessions include:

• Early Case Strategies
• Invalidity Defenses and Infringement Claims
• Balancing Risks and Navigating the Interplay Between Re-Examination and Litigation
• Presenting an Effective Markman Case – Winning Strategies for Managing a Pivotal Point in Patent   Litigation
• Injunctive Relief: Strategies for Obtaining and Opposing Injunctions
• Developing a Damages Case and Defenses in the Wake of Recent Federal Circuit Decisions: Calculating  and Proving Damages and Minimizing Damages Liability
• View From the Bench: Judicial Perspectives on Medical Device Patent Litigation
• Managing and Reducing Costs Associated with Patent Litigation
• Patent Litigation for Drug and Device Combination Products: Preparing for the Intersection Between Medical Devices and Hatch-Waxman Litigation
• Successfully Asserting and Challenging Claims of Inequitable Conduct in the Crowded Field of Medical Device Patents
• Restructuring Patent Marking Practices Following the Recent Surge of False Marking Litigation

Panelists include:

Pamela Bethel, O’Riordan Bethel Law Firm, LLP
Jonathan Groner, Public Relations Consultant
Tammy Mangan, Director of Marketing, Sterne, Kessler, Goldstein & Fox, PLLC
Moderator: Natalie Koss, Henrichsen Siegel, PLLC and Chair, BADC Solo and Small Firm Practice Committe

• Preventing delays due to failure to engage - understanding how the PTO defines "failure to engage"
• What constitutes late filing under the PTO's PTA rules? - identifying triggers for action date, defining action date and filing provisions (37 CFR 1.6;1.8 and 1.10)- Which stops clock and which does not?
• Circumventing PTO findings of an incomplete reply - what is considered non-responsive and non-complaint?
• Explaining delay concerns associated with supplemental replay and information disclosure statements
• Terminal disclaimers- defining them and avoiding them

Hot-button topics to be addressed include PTO stats and timelines, the SNQ requirement, request requirements, ex parte interviews, responses to Office Actions and the use of declaration evidence, KSR issues, petition practice, protective orders and the duty of disclosure, stays, use of reexam developments in trial, difference standards between reexams and the courts, and concurrency issues between tribunals.

Panelists include:

Jeffrey D. Feldman
Feldman Gale - Miami, FL

Hon. James M. Rosenbaum
U.S. District Court, District of Minnesota (Retired) - Minneapolis, MN

Discussion topics:
1. Best practices for building IP.
2. Conducting due diligence investigations.
3. Presenting IP information in a way that best positions that company to its prospective partner.

Through the prism of series of recent transaction examples, the workshop will discuss what worked well and why, as well as mistakes that could have been avoided. Therefore, this workshop would be of keen interest to companies currently involved or contemplating entering into a partnering deal, as well the investment community.

Added Topics:
1. Ways to deal with “problem” patents that may be identified during a due diligence process.
2. Several legal tools are available to the party faced with the problem patent, ranging from reexaminations to litigation to licensing discussions.
3. Each of these tools has its own set of advantages and disadvantages and each tool will be discussed in depth.

Particular examples of transactional techniques will include:

• application filing decisions (e.g., how many claims, whether one or more applications, timing of filings)
• claim drafting
• specification drafting
• selecting terms of IP licenses
• prosecution / appeal strategies
• Metrics for evaluating different legal options
• Tying in transactional techniques into the changing nature of case law

Click here for more information about this event.

Click here for more information about this webinar series.

Other presentation topics include:

• How generic companies will implement the now-approved follow-on biologic pathway, including what is patentable, exclusivity, and patent resolution
• How to draft and protect claims going forward in light of the attacks on the patentability of genes and diagnostic methods in Bilski and Myriad
• Advanced claim drafting strategies and how to incorporate both the written description and enablement requirements
• Avoiding inequitable conduct- lessons from Therasense, Inc. v. Becton, Dickinson & Co.
• How to work the PTO rules and the patent prosecution highway in order to streamline the patent approval process and extend actual patent life
• Developing global strategies for minimizing risk and maximizing profit while filing and protecting patents abroad.

Click here for more information about this conference.

Presenters will include the Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, David Kappos, Commissioner for Patents, Robert L. Stoll,  National Inventors Hall of Fame® Inductee, Art Fry, co-inventor of Post-It® Notes and successful inventor George A. Peters, Jr. inventor of The Mitt®.

For more information about this event, click here.

Each Sendona Conference features a 15-person faculty bringing together the finest attorneys, jurists and academics in the nation currently confronting cutting-edge issues, and the participant base is limited to no more than 45 additional, experienced attorneys and others to ensure the opportunity for meaningful dialogue. Find additional information about this conference here.  

• The importance of biosimilars to the biologics industry,
• Alternative proposals that were rejected during the legislative process,
• The significance of the 12-year exclusivity provision and the idea that its relative length will aid innovation in the industry, and
• The likely impact of the biosimilars pathway on the biopharmaceutical sector.

After offering a broad perspective on the legislation, our program faculty will analyze the impact of the biosimilars pathway on patent licensing. The new legislation had important ramifications for patent licensing, including:

• Increased significance of process/platform IP in the biopharmaceutical industry,
• The potential for forfeiture of rights for exclusive licensors due to the failure of a licensee to properly execute the patent dispute procedures of the biosimilars statute,
• The diverging interests of licensors and licensees under the statute, and
• The need to draft new licenses (and amend existing licenses) to account for the new statute.

Click here for more information about this webinar.

• This meeting will provide opportunities to make contacts that will help you create value and new jobs.
• This is the place where managers, entrepreneurs and decision-makers from the US, Sweden, and the rest of Europe will meet to pursue their common interest to turn bioenergy technology into concrete business opportunities.
• The conference will also highlight alternative energy in the Great Lakes region through special exhibits and tours.

For more information or to register for this event, click here.

The format of the program will be a panel discussion.  MdBio has confirmed Dr. Philip Huang, Senior Director of Regulatory Affairs and Special Projects at Merck Research Laboratories and Timothy Shea from Sterne Kessler to discuss IP and licensing issues, and is pursuing invitations with other and industry experts.  Dr. Kadriye Ciftci, Sr. Director of Regulatory Affairs at ICON Clinical Research, will be the program moderator.

This will be a joint presentation in which Dr. L. R. Mullin (SUNY,Albany) will discuss the new mathematical theorem and Dr. Raynolds will discuss numerical computational experiments and results.

The emphasis of the review is on the eight CLP domains, the practice exam questions and the participant’s results. Three experienced LES members that have achieved CLP™ status present the one-day, face-to-face course. Each one-hour webinar provides another opportunity for the test registrants to review the domains and to ask questions of the LES experts.

Click here to see the full program schedule or to register.

This presentation will be repeated on August 10, 2010.

Discussion topics:
1. Best practices for building IP.
2. Conducting due diligence investigations.
3. Presenting IP information in a way that best positions that company to its prospective partner.

Through the prism of series of recent transaction examples, the workshop will discuss what worked well and why, as well as mistakes that could have been avoided. Therefore, this workshop would be of keen interest to companies currently involved or contemplating entering into a partnering deal, as well the investment community. Click here for more information about this event.

Discussion points will include:

• Reevaluating existing licenses to determine the practical and financial impact of follow-ons on the license agreement
• Determining the correct course of action should a university want a patent enforced
• Identifying who has discretion in deciding which products will be launched
• Specific clauses and terms to include in agreements to account for follow-ons
• How do follow-ons impact valuation of products and deals and potential revenue streams

Through a series of recent decisions, the Federal Circuit has demonstrated that it will vigorously scrutinize the basis for patent damages awards. All parties involved in patent litigation will benefit from a deeper understanding of the analytical framework used by the Federal Circuit to review patent damages awards.

This webinar will discuss the current framework for patent damages resulting from the Federal Circuit's interpretation of the landmark Georgia-Pacific decision. Three important recent Federal Circuit decisions, Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009), i4i Ltd. v. Microsoft Corp., 589 F.3d 1246 (Fed. Cir. 2009), and ResQNet.com, Inc. v. Lansa, Inc., 2010 U.S. App. LEXIS 2453 (Fed. Cir. 2010), demonstrate that there has been a shift in the Federal Circuit's scrutiny of damages awards. These decisions provide discrete lessons for both patent plaintiffs and patent defendants and will be discussed in detail in the webinar.

Robert Greene Sterne will give the keynote speech on "The Impact of the U.S. Reexamination Process on Patent Portfolio Value."

The Bright Lights Conference will showcase 50 of the most innovative public companies ranked in the 90th percentile for technology leadership.  These companies were selected from more than 1,600 small cap companies which were scored, ranked and analyzed on the basis of their rate of innovative change, as well as the novelty, quality and industry impact of their patents.

Listen to the keynote address by downloading the audio. 

The Bright Lights Conference will showcase 50 of the most innovative public companies ranked in the 90th percentile for technology leadership.  These companies were selected from more than 1,600 small cap companies which were scored, ranked and analyzed on the basis of their rate of innovative change, as well as the novelty, quality and industry impact of their patents.

For more information, or to register for the conference, click here.

Kevin W. McCabe will  speak on April 27th at 2:00pm on  the topic of Pleadings and Considerations.

To read more about the conference or to see the full agenda click here.

Their hour long presentation will include an initial discussion on the topic of  patent reexamination and concurrent patent litigation strategies — one of the most important and rapidly developing topics in patent enforcement in the United States — and conclude with a lively question and answer session.

Their hour long presentation will include an initial discussion on the topic of  patent reexamination and concurrent patent litigation strategies — one of the most important and rapidly developing topics in patent enforcement in the United States — and conclude with a lively question and answer session.

The team spoke to an engaged audience of George Mason intellectual property students and other outside attendees.  Sterne and Wright's hour-long discussion focused on the rapidly developing area of patent reexamination within the United States.  The talk's material was taken from Sterne and Wright's ongoing reexam cases, as well as their roles in authoring Reexamination Practice with Concurrent District Court Litigation or Section 337 USITC Investigations, a go-to guide on reexams, published by The Sedona Conference. 

The presentation concluded in a question and answer session with the audience.  Students and attendees asked pointed questions to Sterne and Wright about current reexam cases, SKGF's micro website www.reexamcenter.com, and the future impact of patent reexamination in intellectual property law.  Jon Wright, a George Mason Law alumni, commented that "it was great to get back to my alma mater, George Mason, and talk to the current students.  They were engaged through the whole presentation and threw us some very astute questions at the end.  Rob and I appreciated their energy and we wish we could have stayed a bit longer." 

The Course Covers:

• IP Basics: patents, trademarks, know-how, trade secrets and more

• Smart strategies for creating, organizing, managing and securing IP assets

• Commercialization — Bringing IP to market

• Royalties and ideas for maximizing IP value and making money!

• A licensing game with an interactive deal negotiation — a hands-on opportunity for you!

Click here to register. 

Through a series of presentations and panels, participants will increase their knowledge of: the decision-making process at the Board, how to avoid mistakes commonly made when appearing before the Board, how to properly and persuasively present evidence by way of affidavits and the inter partes reexamination process. Participants will also hear from Chief Judge Paul R. Michel and Circuit Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit on the role of the Board in the development and advancement of the patent system.

We will be sponsoring a reception in the lower atrium, immediately following the BPAI conference.

 The two hour long presentation was divided into two parts.  The first half of the program focused on the topic of  patent reexamination and concurrent patent litigation strategies.   The second half zeroed in on alternative career paths and how students can stand out in the recruiting process during a down economy.

 When asked about returning to his Alma Mater (The University of Maryland School of Law ’77), Mr. Sterne commented, "it was touching and special to be back at the Law School.  It was a real honor to have the opportunity to speak on such a hot topic as reexaminations to a classroom of such bright students.  What a smart group of students and what a fantastic law school!  Made me feel so proud to see the school carrying on the tradition of turning out quality attorneys!"

The presentation was facilitated by Benjamin Huh (Co-President) and Bruce Villard (Treasurer) of the Law School of Maryland Intellectual Property Student Association (MIPSA) in conjunction with Patricia Campbell, Associate Professor and Director, Maryland Intellectual Property Legal Resource Center.

This program will begin at 9:00 a.m. and is an opportunity for managers, design examiners and the design patent bar to exchange ideas and to educate each other on important topics affecting design patent practice. Topics for discussion include the integration of aesthetics, commercial appeal and intellectual property considerations into product design, the role of the USPTO Solicitor’s Office in design patent practice, litigating design cases in US District Courts, and the recent decisions in Seaway Trading Corp. v. Walgreens Corp, Crocs v. ITC, and Richardson v. Stanley Works. 

The program is open to all and there is no fee. However, for planning purposes pre-registration is encouraged and can be done on-line at http://www.aipla.org/.

For the event day agenda, click here.

The Technology Managers for Global Health serves as a share-and-learn platform to:

1. Encourage licensing policies, partnering/negotiation strategies, and invention management practices that address humanitarian concerns (e.g., assuring fair access for new technologies that address treatments for neglected tropical diseases and other afflictions widely prevalent among the world's poorer populations); 
2. Feature individuals, programs, and case studies representing the evolving contexts within which academic innovation management frameworks [delete-need to be] creatively design[ed] and thougtfully implement[ed] such policies to address, for example, the [in a] complex and dynamic field of [such as] global health; and
3. Improve understanding of the ongoing challenges and opportunities of being engaged in transnational and multi-sector initiatives aimed at advancing global health causes.

Please visit www.tmgh.org for further information.

Rob Sterne and Lori Gordon Present at GWU March 17, 2010 (Image Courtesy of George Washington University Law School)

Their hour long presentation included an initial discussion on the topic of  patent reexamination and concurrent patent litigation strategies — one of the most important and rapidly developing topics in patent enforcement in the United States — and concluded with a lively question and answer session.

Associate Dean for Intellectual Property Law Studies John Whealan (former Solicitor of the USPTO and staffer to the Senate Judiciary Committee) was in attendance and asked questions relating to the time it takes to complete a reexamination (especially inter partes) and the quality of reexamination with regard to the recent ramp up in filings.  The seminar was well received and built on a similar presentation made by Rob Sterne to the GWU students in 2009.

Prof. Sam Oddi, of Akron, will moderate a panel discussion on patentable subject matter and Bilski.  Panelists are Prof. Osenga, Prof. Carl Moy, Mike Dzwonczyk, and SKGF's Robert Greene Sterne.

To see the full conference agenda or to register click here.

• Update on progress of biosimilars legislation through the U.S. House
  and Senate
• Analysis of the provisions of the competing U.S. bills
• Comparison of the proposed biosimilars legislation to small molecule regulation under Hatch-Waxman
• Views of affected constituencies (biopharma companies, generics companies, health care providers, patients)
• Comparison of the proposed US regulatory scheme to those in other parts of the world (especially Europe and Japan)

• How innovative companies can overcome two major obstacles:
  • Create and protect technologies that are both functionally and economically feasible particularly in industries with a low profit margin like the biofuel industry
  • Navigate relevant technology patents that are issued or pending
• Explore steps that emerging biofuel and other cleantech companies must take in order to avoid the kind of patent problems that have plagued and ultimately destroyed many new innovative companies

In light of the Supreme Court's Quanta v. LG decision, is it possible to avoid patent exhaustion when licensing IP?  Mr. Lee will present on the topics of licensing and patenting approaches including the effect of covenants not to sue.   James J. Kulbaski of Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., will also be presenting on the issues of using a patent trust with respect to MPEG LA v Multimedia Patent Trust.

For more information including a full schedule of events and directions click here.

THE SEDONA CONFERENCE® "VOICES FROM THE DESERT" WEBINAR SERIES PRESENTS THE PATENT REFORM WEBINAR - WEDNESDAY, DECEMBER 16, 2009 AT 2:00 PM EASTERN

While generating less-widespread attention than other proposals before Congress, the pending patent reform legislation has produced huge debate and concern in the patent community. The faculty from the recent Tenth Annual Sedona Conference® on Patent Litigation wants to share its best thinking on three key areas in which fundamental changes have been proposed: (1) willfulness; (2) post-grant review and expanded inter partes reexamination; and (3) first to file.

Our annual conference on patent litigation (like our other regular season conferences) is strictly limited to 45 participants so we have decided to provide webinars on various issues discussed to bring the benefit of the collective wisdom generated to the broader Bench and Bar. We chose the topic of patent reform legislation to be the first topic from this year's patent litigation conference because some are of the opinion that a form of legislation may actually pass early in 2010, so now is the time for those interested to get up to speed on the potential changes that may come to both patent prosecution and patent litigation.

Thus, the webinar will address the following:

Agenda:

2:00 - 2:50 EST

*Proposed changes with regard to the law on willfulness;

*Proposed changes with regard to the law on post-grant review and expanded inter partes reexamination

*Proposed changes with regard to the law on invention date (elimination of the "first to file" rule)

2:50 - 3:00 EST Question-and-comment session

This webinar will be moderated by Richard G. Braman (Executive Director, The Sedona Conference®) and includes a distinguished panel featuring the Honorable Chief Judge Paul R. Michel (U.S. Court of Appeals for the Federal Circuit, Washington, DC), Maximilian A. Grant (Latham & Watkins, Washington, DC), Rachel Krevans (Morrison & Foerster, San Francisco, CA), and Robert G. Sterne (Sterne Kessler Goldstein & Fox, Washington, DC).

• Exploring methods for obtaining an order to pursue discovery in various jurisdictions
• Evaluating what forms of discovery are available in the jurisdiction in which you are litigating
  • civil law vs. common law
  • interrogation and cross examination
  • seizures vs. preservation of evidence
• Seeking discovery on the basis of a foreign pharmaceutical patent
  • working around unique issues that may arise when pursuing discovery of information only attainable from a non-U.S. office or employee
  • complying with various local and country-specific requirements when seeking discovery of information in various jurisdictions
• Becoming familiar with foreign discovery timetables
• Maintaining a reasonable discovery budget
• Determining whether or not evidence obtained in one country can be:
  • used to pursue discovery in another country
  • used as evidence in a parallel or separate but related suit in another country

To see the full conference agenda, click here.

The Conference will be held at LUISS (Libra Universita Instituto Science Sociale) Guido Carli- a private Social Sciences University in Rome.

• Establishing your witness as an expert skilled in the art
  • drawing attention to the expert’s experience developing and dealing with the type of product at issue
  • stressing the expert’s reputation in the industry as a well-respected leader
• Getting the witness to distinguish the inventive nature of the product by highlighting the non-obvious nature of the invention to one of ordinary skill in the art
• Exploring and dispelling the signifi cance of all prior art – demonstrating through the NDA record how the patentee overcame stumbling blocks to ultimately secure drug approval
• Anticipating the opposition’s cross examination by showing that the science underlying the patent is valid, unique and non-obvious

To learn more about the event, click here.

During this session, patent litigators experienced in representing both brand name and generic manufacturers will discuss proven strategies for preparing for your next paragraph IV case. Topics of discussion will include:

• Evaluating triggering events that ultimately effect the timing of the lawsuit
  • strength of patents – what patents to assert and what patents to challenge?
  •  discussing fi ling strategies – identifying and evaluating the criteria for deciding where to bring suit
• Multiple ANDA filers – dealing with and positioning yourself as one of several ANDA filers
• Witness and expert selection
  • identifying key points on which the opinion of an expert will be sought by both sides
  • locking up the right experts in advance of fi ling
• Scope of discovery
  • what to exclude, what to allow, what to ask for
  • at what point is a discovery request over burdensome?
• Summary Judgment
  • strategy considerations
  • selecting the right (and ripe) issues
• Markman Hearing and claim construction
  • assessing whether Markman hearings should take place before or after expert reports and discovery
  • arguing disputed claims before the judge – what to argue and what to save for trial
• Weighing the pros and cons of agreeing to a judge’s tutorial

To learn more about the conference, click here.

• How innovative companies can overcome two major obstacles:
  • Create and protect technologies that are both functionally and economically feasible particularly in industries with a low profit margin like the biofuel industry
  • Navigate relevant technology patents that are issued or pending
• Explore steps that emerging biofuel and other cleantech companies must take in order to avoid the kind of patent problems that have plagued and ultimately destroyed many new innovative companies

Patents provide owners with monopoly rights to exclude.  This provides an artificial barrier to competition.  How that barrier is constructed and maintained greatly defines a company's ability to protect its market share.  This talk will explore the steps that companies must take in order to develop a strategic patent portfolio and the benefits derived from such, including increased market revenue and share, increased brand recognition, and the potential for licensing revenue.

To learn more about the conference, click here.

To see the full conference schedule, click here and for more info on the presentation, click here.

1. Re-exam and Litigation
2. Obviousness
3. Inequitable Conduct
4. Injunctive Relief & Damages for Future Infringement
5. Reasonable Royalties
6. Process Forum: Local Rules Developments and Model CMO's
7. Extraordinary Relief
8. Patent Reform Legislation Update

To learn more about the meeting, click here.

To learn more about the meeting, click here.

• Extension of patent term under 35 U.S.C. § 156 and 37 CFR 1.710 – 1.791
• Exploring the viability of extension applications to:
  • basic and combination compounds; secondary patents
• Important benchmarks in the drug’s developmen tand patent timelines
• Eligibility for patent term extension
• Regulatory review period determinations
• How to calculate the patent term restored
  • respective roles of the FDA and the PTO in granting patent extensions
  • third-party challenges – “diligence”
• Patent term extensions outside the U.S.
• Examining patent term adjustment due to delays in prosecution before the USPTO
  • strategies for:
    • diligence in prosecution by the patent applicant
    • calculating the adjustment period
• Understanding the link between patent extensions and exclusivity
  • extensions obtained through FDA Pediatric Exclusivity and Orphan Drug Exclusivity
• Obtaining patent coverage for pharmaceuticals through the use of second-generation patents, e.g.,
  • maintaining patent position for second-generation products
  • approaches taken by pharmaceutical companies in obtaining second-generation patents
  • enforcement of second-generation patents
• Assessing the impact of the PTO Rule regarding elimination of continuation practice on pharmaceutical patent extensions

Patent reform, the new administration, evolving case law, and the current economic climate have converged on the biotech industry to create the perfect storm, catapulting biotech patent practitioners into murky waters surrounded by unknowns. This interactive session will help you to navigate the political system with an in-depth analysis of the evolving legal standards and changing players including:

• Evaluating the Tafas decision and the impact of the proposed PTO rules on the biotech sector
  • Predicting howTafas will eventually be resolved
  • Determining what the practical application of the new PTO rules will be after Tafas
• Analysis of proposed patent reform legislation and its impact on the industry
• Understanding how the courts are addressing the issue of patent reform in the absence of congressional action
• Discerning the priorities of the Obama administration and the impact on biotech
  • New PTO Commissioner
  • How will the administration help to promote innovation in biotech?
• Reconciling the needs of the biotech industry with the emerging new rules
• Regulatory and Statutory Reexamination Reforms
• Incorporating deferred patent prosecution
• Strategically preparing a long-term plan to account for further reform in opposition to biotech’s goals

To view the conference brochure and register for the event click here.

More and more infringement litigation defendants seek parallel patent reexaminations at the USPTO.  The USPTO ex parte and inter partes reexamination process is explained.  Understand the impact of reexamination on litigation strategy and tactics; cutting-edge issues including collateral estoppel and intervening rights; conflicts between reexamination and court findings, NTP v. RIM and eBay v. MercExchange; and motions for stay based on pending reexamination proceedings.

To learn more about the event, click here.

To learn more about the conference, click here.

 To learn more about the invite visit http://www.law.gmu.edu/events/hottopics/2009 or see the brochure.

To learn more about the conference, click here.

• What are the “value-creating” events/milestones during the drug development process?
• From an implementation perspective, what activities should be performed, and when, to achieve these milestones?
• How can a biopharma company best leverage these milestones in its efforts to raise capital to achieve the next clinical milestone?

To register for the event, click here.

 To learn more about the conference, click here.

• How innovative companies can overcome two major obstacles:
  • Create and protect technologies that are both functionally and economically feasible particularly in industries with a low profit margin like the biofuel industry
  • Navigate relevant technology patents that are issued or pending
• Explore steps that emerging biofuel and other cleantech companies must take in order to avoid the kind of patent problems that have plagued and ultimately destroyed many new innovative companies

To learn more about this panel presentation click here.

To view the conference brochure, click here.

•  What coaching is (and isn’t).
• What Coaching Certification Programs have to offer.
• How coaching has been used (if at all) at our firms.
• Coach Training.
• Getting Management Buy-in.
• Development of Career Coaching Materials.
• Coaching Examples - Those We Coach.

To learn more about the National Adult Education Professional Development Consortium, click here.

The webinar will cover:

• Background of the case and brief analysis of the proposed final rules: 78, 114, 75 & 265
• Analyzing the details, reasoning and nuances of Tafas v. Doll, including:
  • Distinguishing between substantive versus procedural rules
  • Explaining the conflict between Section 120 of the Patent Act and Final Rule 78 limiting continuations
  • Contrasting the court’s reasoning for holding Rule 78 invalid while upholding the rules regarding claims, ESDs, and RCEs  
  • Examining the criteria discussed for the lower court to consider upon remand  
•  Evaluating possible statutory reasons for why Rule 75 could also be under attack
•  What happens next and where do we go from here?

To learn more about the webinar, click here. 
To register for the event, click here.

• Taking advantage of Expired Patents 
• Leveraging the ideas found in International Patents
• Finding Licensing Opportunities of U.S. Patents
• Clearing Products and Designing Around Unexpired U.S. Patents
• Procuring Patents for Core Technologies
• Obtaining Patents for Revolutionary Ideas 
• Obtaining Patents for Evolutionary Ideas
• Using Special Provisions of the Patent Rules

 To learn more about the conference, click here.

Provided bleow is the article and PowerPoint presentation from the conference.

To learn more about the webinar, click here.

 To learn more about the conference, click here.

To learn more about the event, click here.

To learn more about this seminar, click here.

To learn more about the event, click here. 
To view the agenda, click here.

To learn more about the seminar, click here.

To learn more about this conference, click here.

 To view more information on the conference, click here.

• When does IP management become a critical stage for commercialization and investment?
• Challenges impacting the vaccine IP environment through private investment.
• What does it mean to both the investor and investee when engaging in partnerships?

With patents of profitable products set to expire, pharmaceutical companies are incorporating new delivery systems to existing products as an extension strategy. This session explores some of the issues to be aware of during this process.

• The Vanities: Dealing with rankings - Chambers, Supers, Best ofs – Maria Nanis (Dechert)
• Experience Databases: We know we did it, but who did what with whom, when, how and how much do we charge for it anyway? - Vickie Gray (Ober) & Nathan Darling (Van Ness Feldman)
• Client & Industry Service Teams: How they work and how to run them - Ellen Musante (Steptoe)
• RFPs / Proposals / Preferred Provider Surveys: Best practices - Mona Zeiberg (Morgan Lewis) & Suzette Bradbury (Venable)
• Business Plans: Process and Follow Ups  - Tim Delaney (WilmerHale) & Mary Kimber (Patton Boggs)
• Managing Up, Managing Down and Sideways all at the same time - Kelly Stuart (Morrison & Foerster)
• Research:  What's it all about? - Kimberly Bell (Nixon Peabody)
• Going Green: Great idea, how do you do it? - Tammy Mangan (Sterne Kessler)
• PR - How do I get above the fold? - Jonathan Groner (Jenner & Block) & Ellen Katkin (Gilbert Randolph)
• Building a Great Team - Mark Greene (Nixon Peabody)
• CRM Issues & Features - Don’t you just love them? Gail Hageman (Sutherland)
  

 To view the presentation click here.

• When does IP management become a critical stage for commercialization and investment?
• Challenges impacting the vaccine IP environment through private investment.
• What does it mean to both the investor and investee when engaging in partnerships?