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Intellectual Property Update for In-House Counsel

a Presentation by Jack Wheat, member, McBrayer PLLC

Live Presentation in Louisville at 500 West Jefferson Street, 4th Floor

Remote Presentation in Lexington at 201 East Main Street, 9th Floor

Please join us for the ACC-WI 2023 Annual Conference & Meeting of Members!  

This 1.5-day event provides 27-Sessions of CLE programming for you to choose from, including 2.0 hours of Ethics, and is specifically designed for you as an in-house attorney.  Our registration format allows you to customize your program schedule to fit your practice needs. Conference registration includes a one-night hotel stay (Early Bird Registration); the continental breakfast, luncheon and keynote speaker, and cocktail reception Thursday; the hot breakfast buffet on Friday; and a variety of networking events at the conference. All paid registrants enjoy free attendance at our Fall 3.0 Ethics Seminar.

Please join us for our first webinar of 2023 for this very timely topic: Federal Trade Commission Proposes Ban on Non-Competes: Now What?

Monday, January 23 | Noon - 1 p.m. CT | Webinar

On Thursday, January 5, 2023, the Federal Trade Commission (FTC) proposed a rule that would ban non-compete agreements and preempt all state laws that are inconsistent with the rule. If implemented as proposed, employers will be required to rescind all existing non-competes with current and former employees and independent contractors. Join Godfrey & Kahn attorneys for a discussion on:Details of the proposed rule and its impact in the employment and sale of business contexts
Potential alternatives to the proposed rule:

  • The FTC rulemaking process and potential legal challenges to the final rule
  • The impact to your business if the ban is implemented
  • The growing importance of tailored restrictive covenants and trade secret protections

presents

 

IPPulooza

 

a 3/4-Day Intellectual Property-issue CLE event

 

Wednesday, February 8, 2023

 

10:00 am - 5:00 pm + Reception

 

A 3/4-day, 5.5-CLE credits event devoted to Intellectual Property issues including 1 hour of technology credit PLUS 1 hour substance abuse credit.

We’ll have a reception (5:00-6:00) following the presentations.

 

Sponsors/Presenters:

Sean Doyle - Substance Abuse

Fish & Richardson

Baker & McKenzie

Womble Bond Dickinson

 

Program:

 

10:00-10:05  Introduction and logistics

 

10:05-11:05 Sean Doyle (Substance Abuse Credit)

It Is Not The Mountain We Conquer - Thriving over the long course of our legal careers

 

The practice of law can be difficult, tedious, and contentious. As a result, lawyers historically have had some of the highest rates of substance abuse, depression, job dissatisfaction, and a whole other parade of horribles. And yet, there are those among us who report that the practice of law makes their lives undeniably richer and more meaningful. If we are going to continue to do good work for our clients and thrive over the course of our long careers (and lives) it is helpful to know what these people are doing differently. In this program we will explore the threats to a lawyer’s well-being, the signs and symptoms of alcohol and substance abuse, and where to get help. However importantly, we will draw from the previously unpublished experiences of lawyers who are flourishing in the practice of law, and from the research in the psychology of well-being, so that we all can discover practical strategies to help ensure our practices contribute to the betterment of our lives.

 

John A. (“Sean”) Doyle is a poet and consulting psychologist and has been practicing law for thirty years.  He is currently general counsel for MCNC, a technology nonprofit providing broadband and cybersecurity to North Carolina’s schools, government and other community anchor institutions. A BarCAREs Board Member, Sean taught psychology at NC State for close to a decade, works with recovering addicts, army drill sergeants, Buddhist monks, lawyers, law firms and other groups on matters of meaning and resilience. Sean has also written widely on wellbeing topics in Psychology Today and other mediums and is the author of Mud and Dreams: Essays on falling more deeply in love with life.  For more, please see www.JohnSeanDoyle.com

 

11:05-11:15 BREAK

 

11:15-12:45 Fish & Richardson

Optimizing Your Company's IP Today for Effective Protection and Enforcement Tomorrow

 

Companies both big and small often find themselves ill-prepared when it comes to protecting and enforcing their IP in litigation resulting in unfavorable outcomes or ineffective remedies.  With an emphasis on patent and trade secret protection, Fish IP litigators Brian Livedalen and Adam Shartzer present a litigator’s perspective on practical steps companies can take now to optimize their IP enforcement potential for future litigation.  As to patents, the program will explore how to implement policies, such as patent marking, to maximize patent damages.  The program will also address how to navigate the ever-changing landscape of patent venue.  With respect to trade secrets, the program will focus on effective strategies for identifying, maintaining, and protecting trade secrets and will touch on best practices related to identifying trade secrets, employee hiring and departures, and measures to maintain secrets.

 

12:45-1:45 LUNCH

 

1:45-3:15 Baker & McKenzie

View from the trenches: real-life examples of recent cyber events and related cross-border data privacy issues

 

In this presentation, experienced cybersecurity practitioners from Baker McKenzie will discuss the multiple risks associated with cyber-incidents from a legal, reputational and shareholder value perspective and the critical need to coordinate a holistic response from the various functions within an organization (e.g., IT, Information Security, Legal, HR, PR, Compliance, Marketing).  The panelists will share examples of recent cyber incidents that they have guided and counseled clients through--including ransomware attacks, business email compromise, insider threats, and fund transfer fraud. We will discuss the mechanics of how these incidents unfolded, significant legal issues that arose, and lessons learned, all of which will be designed to empower attendees to prevent such incidents within their own organizations, avoid common pitfalls, and mitigate legal risks in the event such incidents occur.  Our panel will include a federal government representative who will provide views on government expectations and investigative resources, including breach reporting and investigation protocol, as well as the benefits of public-private industry collaboration.  The presentation will discuss both domestic and cross-border cybersecurity legal issues.

 

We will also discuss the current data privacy landscape in the aftermath of the Schrems II decision, and how companies are complying with the results of the decision and managing risk associated with cross-border data transfers. We will discuss important considerations arising from data privacy regimes in other foreign jurisdictions and how to reconcile the many competing legal obligations imposed in each country. 

 

Finally, we will provide an update on the data privacy impact on cross-border internal investigations and related considerations from the perspective of both external counsel and federal enforcement authorities.

 

This panel’s speakers will include Stephen Reynolds (Partner, Chicago – Cybersecurity) who received the distinction of being named one of the “Best Lawyers in America, 2021” in his area of practice.  Other Baker McKenzie attorneys from our cybersecurity, data privacy and government investigations practices will include Brian Whisler (Partner, Washington, DC and former federal prosecutor with the US Department of Justice) and Christina Messerschmidt (Associate, Chicago). We have also invited a federal prosecutor form the U.S. Attorney’s Office, Raleigh National Security Division to participate on the panel.

 

3:15-3:30 BREAK

 

3:30-5:00 Womble Bond Dickinson (Technology Credit)

Comprehensive Contract Protection of Your IP Rights – Mind the Gaps

 

This Panel will discuss best practices for contractually protecting IP assets, including software, databases, data more generally, a consultant’s tools of the trade, companies’ basic marketing materials and website, and licensed materials (whether covered by patents, copyrights or trademarks). We will also address the ambiguities and gaps we often see across industries, clients, and targets being acquired by clients. Takeaways will include strategies to paper up and avoid common pitfalls.

 

5:00-6:00 Cocktail Reception

 

Location:

Prestonwood Country Club

Cary, NC (www.prestonwood.com)

 

CLE:

Pending approval for 5.5 hours of NC CLE including 1 hour of substance abuse credit and 1 hour of technology credit.

 

Cost:

No cost for students, full-time law school faculty and staff, and ACC members and their non-lawyer colleagues.

$100 for ACC-eligible non-members.

$500 for members of RTAC-ACC sponsor firms other than presenting sponsor firms.

By credit card, send payment to rtac@acc.com through PayPal.

 

REGISTER HERE

 

Marvin Genzer
Ruth Hammer
rtacacc@gmail.com

ACC Houston CLE Webinar
Managing the Unmanageable in a Security Breach Response (Rising to the Challenge of the Rogue Insider)
January 31, 2023 | 12-1 PM | 1.00 HRS CREDIT CLE (TX)


The panel will describe a very unique breach matter involving an insider threat, specifically a hospital medical staff physician who abandoned his home and left behind several reams of unprotected Protected Health Information (PHI) and over 100 computer and hand-held devices.

ACC Houston IP Practice Group CLE
Problems in Privacy: Frequently Asked Questions and Other Considerations
Wednesday January 18, 2023
11:45 am–1:15 pm CST

Maggiano’s Little Italy
2019 Post Oak Blvd
Houston, TX 77056

Abstract: There is no one size fits all when developing a privacy compliance program. Yet, even as the field of data privacy evolves there are certain recurring questions regardless of the size of the organization, location, or industry. How do I determine my organization’s privacy risk? When does GDPR apply? Is a California privacy policy different from a California notice at collection? In this presentation we will explore these and other frequently asked questions and topics.

ACC Colorado
In-House Counsel Forum
Thursday, April 20, 2023

Join ACC Colorado for an afternoon of CLE education, networking and a hosted reception at the
Four Seasons Hotel Downtown Denver

REGISTER TO HOLD YOUR SPOT!

 

ACC Member Price
Member rate extended to paralegals and contract managers.
$45.00

Non-Member Price
$75.00
 

 

12:30 Doors Open & Registration
1:00 P.M. – 1:50 P.M. – 2 Sessions (1 CLE Credit)
2:00 P.M. – 2:50 P.M. – 2 Sessions (1 CLE Credit)
3:00 P.M. – 3:50 P.M. – 2 Sessions (1 CLE Credit)

4:15 P.M. – 5:15 P.M. – General Session
5:15 P.M. – 6:30 P.M. – Reception

1:00 PM – 1:50 PM – 2 Sessions

Ogletree

Cottonwood A: Leveraging Immigration Program Management in a Changing Business World
Business conditions, including labor market shortages, real estate prices, and the post-pandemic concerns, have caused employers to re-imagine their employment models. Some companies have been essentially forced into multi-jurisdictional situations to go where the talent is. Implementing and managing flexible work arrangements to remain competitive in a tight labor market is more important than ever. In this presentation, we will discuss using immigration benefits to respond to talent and labor demand and highlight recent federal enforcement activity in the area of immigration and employment eligibility verification (or Forms I-9). 
Presenters:

Ceridwen Koski, Shareholder, Ogletree Deakins 
Chris Thomas, Shareholder, Ogletree Deakins

Lauren Polk, Senior Corporate Counsel, Oracle

-OR-

Spencer

Cottonwood B: It Takes Two to Tango: Finding Alignment Between Business Objectives and Your Legal Department
Join Spencer Fane for an evaluation of what business leaders expect from their legal departments. In a recent survey of 100 GCs and law department heads, BRYTER found that only 12% believe ‘controlling legal spend’ is what the CEO or company’s board value most from the legal department. Instead, ‘supporting business objectives’ came top at 37%. This panel will respond to this intelligence and offer insights into how they work to balance the often-competing priorities of supporting business objectives and managing legal risks.
Presenters:
Kimberly Pryor, General Counsel, JBS USA Foods
Jon Watson, Partner, Spencer Fane

 

2:00 PM – 2:50 PM – 2 Sessions

Shook

Cottonwood A: What’s the Latest from the FTC and DOJ - Be in the Know
All signs point to even more antitrust enforcement in 2023. Shook Hardy & Bacon will provide an update on the FTC and DOJ’s priorities in 2023, with a particular emphasis on: (1) Non-Compete Provisions; (2) Information-Sharing; and (3) the Right to Repair. Non-competes are in the antitrust news because the FTC announced a proposed rule that would ban almost all non-competes. There has been uproar in response to this announcement, both on procedural grounds (that the FTC lacks authority to issue this rule) and substantive grounds (that this rule would make it difficult for companies to protect their legitimate business interests, such as protecting trade secrets). The focus of this discussion will be on what companies should do in light of the present uncertainty. Information-sharing is in the news because the DOJ recently withdrew policy statements providing for certain “safe harbors” for information sharing. We will talk about what this means for healthcare and other companies. Finally, we will talk about “the right to repair,” another government enforcement priority, which imposes uncertainty and obligations on many consumer goods companies. Additionally, we will also talk about other government enforcement priorities and what they mean for antitrust compliance.
Presenters:
Ryan Sandrock, Antitrust Co-Chair and Partner, Shook, Hardy & Bacon

Ian Papendick
 

-OR-

Kilpatrick

 

Cottonwood B: Protecting Your Company's IP in China: Manufacturers, Suppliers, and Competitors and the Pitfalls to Avoid
An unfortunate common occurrence in China is that individuals and other entities file patents on your company’s inventions. The entities may be competitors, manufacturers, opportunists, or even JV partners. The intention may be nefarious or simply the result of a misunderstanding and sometimes even a misguided attempt to help protect the company’s interests. In this presentation, we will discuss these issues and how to avoid or mitigate them.
Presenters:

Bobby Dickensheets, Director of IP and Legal, BOA
Charles Gray, Shanghai Office Managing Partner and Denver Office Partner, Kilpatrick Townsend 
Clark Weight, Partner, Kilpatrick Townsen & Stockton LLP   


3:00 PM – 3:50 PM – 2 Sessions

Perkins
Cottonwood A: Public Company Update

Join Perkins Coie for an update relevant to all publicly traded companies and those considering an IPO. Hear about the recent flurry of SEC rulemakings relating to ESG, cyber security and executive compensation and learn best practice trends on SEC disclosure and corporate governance topics.
Presenters:
Jason Day, Partner & Firmwide Corporate Co-Chair, Perkins Coie

Jonathan Schulman, Partner, Perkins Coie

Eric Gunning, Deputy General Counsel & Secretary, Allegion

 

-OR-


Merchant

 

Cottonwood B: Emerging Technologies in AI and Web3
Explore the evolution of the Internet with blockchain and artificial intelligence. Blockchain technology has reinvigorated digital art in the form of non-fungible tokens, or NFTs. Cryptocurrencies are using blockchain technology to send currency without the use of banks using smart contracts. Artificial intelligence is implementing shortcuts to everyday tasks and is used to create images out of digital memory. This presentation will provide an overview of these emerging technologies and the intellectual property issues facing companies daily.
Presenter:
Will Schultz, Partner, Merchant & Gould

 

 


BAR SPONSORED BY

DISCO
4:15 PM – 5:15 PM – General Session

So, You Want to Become CLO of Your Company?

You’re a vital member of your company’s legal team. You’re challenged by the work, inspired by the company’s mission, and you have your sights set on advancing within your organization.

  • What will it take to become the Chief Legal Officer of your company? 
  • Once you move into the CLO role, how do you succeed with this broad set of responsibilities?

Join this In House Counsel Forum General Session panel of prominent Colorado C-Suite Leaders in an open discussion of their experiences serving as and working alongside successful Chief Legal Officers.

 Panelists

Jacki Cooper Melmed, Chief Legal Officer, UCHealth

Jacki Cooper Melmed currently serves as Chief Legal Officer for UCHealth. Before joining UCHealth, Ms. Cooper Melmed served as Chief Legal Counsel to Governors Jared Polis and John Hickenlooper. Prior to working for state government, Ms. Cooper Melmed practiced law at Shoemaker Ghiselli + Schwartz and Hogan & Hartson. Ms. Cooper Melmed serves on the Board of Breakthrough, Colorado, and in June 2021, she was appointed to the Scientific and Cultural Facilities Board. Ms. Cooper Melmed is an avid hiker and skier and enjoys reading, cooking, travel, and spending time with her husband and, when allowed, two adult sons.
 

Bret Richmond, General Counsel, Forgen

Bret Richmond is a family man, General Counsel and coach. As the Executive Vice President and General Counsel of Forgen, Bret is a member of the executive team and is responsible for Forgen’s legal and risk management functions. With in-house legal experience in construction (Bechtel, Weifield and Forgen), aerospace (Space Systems/Loral), and renewable energy (SolarCity/Tesla), Bret is currently in his second General Counsel position. While the primary objective of his role as General Counsel is to provide excellent legal services to his internal and external clients in support of the business goals and objectives he has a passion for guiding people to develop and maintain a strong family life over the demands of their career. In his personal life, Bret is married to Sharon, and they have two young daughters. Outside of family time, Bret enjoys mountain biking, skiing and exploring the mountains of Colorado.

 Bob Chapman, Chief People Officer, Trilon

Bob has over 20 years of experience in the human resources profession across several industries and has been the Chief People Officer of Trilon since August of 2022. With a passion for strategic human resources, Bob has a deep understanding of cultural stewardship, enterprise talent management, executive development, and organizational effectiveness. Outside of work, Bob has a passion for the outdoors, skiing, playing hockey, creating music, and spending time with his four kids.

Moderator

Sarah Burrows, Senior Lead Counsel, Cruise

Sarah Burrows is Lead Counsel at Cruise, a GM subsidiary focusing on autonomous vehicles, where she focuses on new product innovation and strategic transactions.  Previously, Sarah focused on intellectual property and complex transactions at Knobbe Martens Olson & Bear, HP, and Cognizant.  Sarah worked as a software developer prior to attending law school and is a trusted advisor in the intersection of law and technology.  Sarah grew up in Kentucky and moved to Colorado in 2012.

 


5:15 PM – 6:30 PM - Networking Reception

 


Is Cybersquatting Still a Thing?  UDRP Best Practices in 2023

Protecting their company’s trademarks in the ever-changing domain name space is typically high on the list of in-house counsel’s to do list. In order to do that, they should become familiar with UDRP proceedings as another tool to obtain infringing domains registered by third parties. This webinar will cover updates to the UDRP, best practices, and strategies for filing UDRP actions. The webinar will also include a review of the various UDRP providers and what to consider when choosing one.

Use the red Register button to RSVP.  The Zoom link is shown below, and will also be provided with your completed registration.

 

https://accinhouse.zoom.us/j/93058860214

Being sued for patent infringement can strike fear into the heart of the most seasoned in-house counsel. But some patent owners seek to resolve issues of alleged infringement outside of litigation, and this typically starts with a demand letter. Initially published December 2, 2022; republished March 30, 2023.

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