Intellectual Property

Many in-house legal teams struggle with the vast quantities of paperwork and electronic data that needs to be managed and stored. Lawyers need to understand what information assets they have and how this is classified, retained, and managed over its lifecycle.

 In this program, our panellists will discuss their experiences with implementing document retention policies, how to ensure your policy complies with applicable laws, best practices to help you create more efficient document and data retention processes and what can go wrong when you don’t have a policy.

Panellists:

• Tiana Van Dyk, Senior Director Client Services and Document Review, Epiq (Moderator)
• Lindsay Holland, In-house Counsel and Corporate Secretary, British Columbia Investment Management Corporation
• Patricia Osoko, Senior Advisor, Simplex Legal LLP
• Julie Colgan, Vice President, Global Business Transformation Solutions, Epiq

This event is proudly sponsored by EPIQ

Please join us for the ACC-WI 2022 Annual Conference & Meeting of Members!  

This 1.5 day event provides 22- hours of CLE programming for you to choose from, which includes 1.0 hour 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 one hotel room ( Early Bird Registration) continental breakfast during Thursday morning check-in, luncheon and Keynote Speaker on Thursday, cocktail reception Thursday evening and a hot breakfast on Friday. You may also join us for a variety of networking events at the conference. All paid registrants enjoy free attendance at our Fall 3.0 Ethics Seminar.

The health and safety of our members, sponsors, staff, and guests (“all attendees”) at our annual conference is of the utmost importance to the ACC-WI.

To help ensure a safe environment for our annual conference, ACC-WI is requiring all attendees either be fully vaccinated against COVID-19 or have a negative COVID-19 test 48 hours prior to the event. Your attendance at our annual conference certifies that you are in compliance with these requirements. We will be following all CDC recommendations in place at the time of the conference.

We are a profession subject to ethical obligations. As such, we expect all attendees will respect and abide by these requirements for their own safety and the safety of other attendees.

This roundtable will explore the Trademark Modernization Act (“TMA”), related regulations, and other U.S. Patent and Trademark Office (“USPTO”) programs that offer new tools for brand owners to challenge bad-faith trademark filings.  Most significantly, the TMA creates two new ex parte procedures: expungement, which allows for full or partial cancellation of registrations because the mark has never been used for the subject goods or services; and re-examination, which allows for full or partial cancellation of registrations because the mark was not used for the subject goods or services on or before the relevant date.  These new procedures offer the possibility of cancellation faster and at lower cost than through traditional TTAB cancellation petitions.  The TMA also codifies the letter of protest procedure, a long-standing mechanism allowing third parties to raise issues with pending applications.

In tandem with the TMA, the USPTO has initiated an anti-fraud strategy, coupling the TMA’s new ex parte procedures with enforcement efforts that include post-registration audits, show cause orders, and the issuance of sanctions.

With a significant increase in trademark filings, brand owners have experienced delays in examination of their applications and greater need for their own enforcement activities.  Along with other efforts by the USPTO, the procedures discussed in this roundtable are expected to help combat and mitigate the impact of fraudulent filings.

AGENDA:

• 9:00 a.m. to 10:00 a.m. - Session I, Baker & Hostetler LLP

• 10:00 a.m. to 10:30 a.m. - BREAK

• 10:30 a.m. to 11:30 a.m. - Session II, Greenberg Traurig, LLP

• 11:30 a.m. to 12:00 p.m. - BREAK

• 12:00 p.m. to 1:00 p.m. - Session III, Womble Bond Dickinson (US) LLP

Session I – Extraterritorial Reach of United States Law in U.S. and Non-U.S. Patent Litigation

Join Partner Stephanie Lodise, Ph.D. of BakerHostetler and J. Eric Sumner of TEVA Pharmaceuticals as they give a summary of 35 USC 271(g), and how it’s used in US patent prosecution and litigation. Additionally, they will present a summary of how 28 USC 1782 has been used to obtain U.S. discovery in non-U.S. contested proceedings.

Session II – When Your Social Life Goes South: Best Practices for Protecting Your Brand in the World of Handle Hijacking

From hashtags to reposts, modern advertising is dominated by all things social media. While this medium provides unparalleled opportunities for brand owners to directly engage consumers, it also presents competitors and brand pirates with new ways to infringe or otherwise hijack legitimate brands.

Since the outbreak of the COVID-19 pandemic in 2020, brands have reasonably ramped up efforts to expand e-commerce verticals and connect with consumers via social media. Simultaneously, brand pirates have rapidly worked to expand their own efforts to commit online piracy. Such piracy increasingly involves brand hijackers hacking into a brand owner’s social media account or otherwise targeting brand owners’ legitimate social media accounts through nefarious means. Whether via hacking or by creating knock-off accounts and handles, pirates remain creative in the strategies they deploy to unlawfully commandeer the goodwill associated with legitimate brands.

To this end, it is more important than ever for brand owners to arm themselves with awareness of this growing trend and to understand strategies they themselves can proactively deploy to mitigate the threat and better enforce their brands.

This presentation will offer an overview of the current brand hijacking landscape, the technologies used by these brand pirates, the trends and emerging legal strategies for proactive mitigation to these threats.

Session III – Recent Developments in Trade Secret Law: May Three Keep a Secret if Two of Them Aren’t Dead?

As set forth in Poor Richard’s Almanac, Benjamin Franklin stated, "Three may keep a secret, if two of them are dead."  But how do secrets work in the real world context of an in-house lawyer trying to legally protect the trade secrets of his or her client in 2022?  When is something secret?  Who owns a secret?  When might a non-disclosure agreement defeat a claim of misappropriation of a secret?  What measures should you take to protect a secret?  Do you have any recourse if your competitor stole your client’s secret but has not yet launched its product?  We will answer these questions and more in the view of recent trade secret decisions in the Third Circuit and beyond.

Register below.  The Zoom link will be provided with your completed registration, and is also shown below.

https://accinhouse.zoom.us/j/91619306798

In this virtual seminar, you will learn:

• What is a non-fungible token (NFT) and what is a metaverse? 
• How are businesses monetizing their IP as NFTs and other digital assets?
• Who is taking advantage of the NFT boom?
• Why should I care? 

We will provide a high-level primer on NFTs and the metaverse, so that you can easily talk the talk, and issue spot.  More importantly, we will focus on how everyday companies, not in the tech space, can take advantage of the NFT boom, and generate additional revenue streams with very little investment. 

We will also provide a quick overview of what some of your competitors are doing in this space – from gaming/hospitality to real estate.  Lastly, we will provide best practices for protecting and enforcing your rights in the metaverse and beyond. 

February Virtual Platinum CLE: "It's a Bird, It’s a Plane, It’s IP”?  presented by Platinum Sponsor,  Boyle Fredrickson. 
Learn how to use your x-ray vision to uncover hidden  IP. It lurks where you least expect it and can cause you untold harm...

Join Boyle Fredrickson attorneys as they discuss situations  that arise that may not appear to involve IP. They will present real world examples of different types of IP that may surprise you as being protectable rights that need to be respected.  Gain an understanding of how to spot and address these  types of IP issues. 

What are the most important things in-house counsel need to know to protect their clients’ intellectual property portfolio in 2022? In this session, we will look at developments at the USPTO, including electronic issuance of patents and trademarks registrations, the impact of the Trademark Modernization Act and the slowdown in processing times; anticounterfeiting resources and remedies to protect your brand; and metrics you can use to monitor the performance of your IP portfolio and measure the effectiveness of your outside counsel.

Join ACC Northeast and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP for a virtual panel discussion on navigating your next steps after receiving a patent infringement demand letter. Patent infringement demand letters often originate from so-called "patent trolls" on fishing expeditions looking for a quick settlement, or these demand letters can be much more serious.

Finnegan attorneys, Cory Bell and Linda Thayer, along with our in-house panelist, Benjamin Brown, Chief IP Counsel and Assistant General Counsel of Onto Innovation will discuss next steps and considerations after receiving a demand letter and the importance of these considerations and subsequent actions for in-house counsel at both private and public companies.

Topics to be discussed include:

• How to assess the risk;
• Should you get a non-infringement opinion from patent counsel?
• Should it be written or oral?
• Is an inter partes review (IPR) at the Patent Trial & Appeal Board (PTAB) appropriate?
• Do you have sufficient facts for a Declaratory Judgement action?

Register below.  The dial-in address will be sent within 24 hours of the event.