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The Association of Corporate Counsel (ACC) is the world's largest organization serving the professional and business interests of attorneys who practice in the legal departments of corporations, associations, nonprofits and other private-sector organizations around the globe.

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Resource Listings

Program Materials

Putting Your Hands on Patent Prosecution: An Interactive Workshop

By Mollybeth Kocialski, Douglas Luftman, Ankur Shah, Gina Shishima, and Eric Sophir

Panelists are expected to address a number of patent prosecution issues that in-house counsel continue to struggle with, either when dealing with their own outside patent counsel or addressing these issues directly on their own. These issues include: strategies for filing a U.S.-based application or Patent Cooperation Treaty at the outset; proper claim construction; nuances for filing under the AIA and any changes they have seen in prosecution under the America Invents Act; and practical tips for foreign filing strategies, etc. Exercises in claim construction and foreign filing considerations (e.g., a road map to key countries, and why or why not a company should seek protection outside the United States in Europe, Asia, South America) are expected.

Program Materials

Managing Intellectual Property Portfolios and Enforcing IP Rights for Nonprofits and Small Organizations

By Brett Dakin, Janine Greenwood, Steven Mashal, and Kim Rosenfield

How do you keep track of intellectual property (IP) assets, decide what to educate staff on IP matters regarding infringement, and choose when to seek protections regarding copyright, trademark or patent protection? What can the non-specialist do in-house, and when do you need to go to outside counsel? How do you budget for IP matters? This program will focus on the operational IP legal function — not on the basics of what is a copyright or trademark. Attend this panel to discuss different models of IP management for small law departments and nonprofits, including managing international IP and enforcement of IP against members and volunteers.

Program Materials

Global Licensing Clinic: Negotiating IP Provisions in Contracts

By Gemma Dreher
Rudy Guyon
Mollybeth Kocialski
Michael Williams

Whether you call it a workshop, clinic, debate or something else, this program will be interactive. The program presents two negotiation scenarios. The first scenario will include a negotiation involving a software company and a vendor. The second scenario is similar but includes a product company and a vendor. Each scenario will take the audience through a role-play exercise of negotiation, focusing on the key IP provisions (indemnity, warranty, ownership, choice of law, etc.) of a contract, and will provide valuable insight from both the customer’s and vendor’s viewpoints as to the importance of and need for those particular provisions in a contract.

Articles

Overview of the EU Data Protection Directive

By Peter Blenkinsop, Partner, Drinker Biddle & Reath LLP

The European Union Directive 95/46/EC on the protection of individuals with regard to the processing of personal data and the free movement of such data was adopted on October 24, 1995 and entered into force on October 25, 1998. The Directive provides a regulatory framework for the use and disclosure of personal data in the EU. This lists the terms used in the Directive.

Program Materials

A New Ground Zero for Patent Litigation? The Unitary Patent Court and Its Future Implications

By Edward Kelly, Charles Larsen, Kevin Oliver, Neil Trueman

The European Unified Patent Court (UPC) – which centralizes patent litigation throughout most of the EU – is on track to go live in late 2016 or early 2017. The new UPC is expected to rival and potentially surpass US courts as the preferred venue for major patent disputes, as US companies will be able to obtain an EU-wide injunction via a single litigation, instead of having to litigate in each jurisdiction. This will drastically reduce costs and improve enforcement, but it won’t be easy. The new system and the changes in procedure and process are complex. Companies must assess multiple factors to decide in advance whether to participate or opt-out. This panel comprised of lawyers dually qualified in the US and UK will focus on how the UPC will impact IP filing and enforcement strategies of US companies, and answer questions such as: What strategic planning should US companies be doing now to prepare for the UPC?; What are the best practices to protect US companies’ patent portfolios in Europe?; What are the commercial advantages of opting-in or out of the UPC?; How will early UPC participants shape the new court system?; How do US companies decide whether to opt-in or opt-out?; How do US companies approach product clearance and FTO in Europe, particularly as applied in licensing and acquisitions?; What are the options for mitigating significant competitor patent risk before it is exacerbated by the UPC?

Program Materials

Protecting Your Client's IP

By Jennifer Adamy, Marc Lorelli, Stanton Weinstein

Learn to spot common issues in advertising, trademarks, licensing and other areas so that you leave empowered to respond accordingly.

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