8:55 Welcome and Introductions
9:00 Identifying and Benchmarking Intellectual Property to Find Licensing Opportunities
Susan E. McBee, McBee Moore & Vanik IP LLC, Frederick, MD
Chester G. "C.G." Moore, McBee Moore & Vanik IP LLC, Frederick, MD
This session examines and discusses the patent landscape of some hot technology areas and compares the quality of different patent portfolios in those areas. Listen and learn useful metrics for analyzing and comparing — benchmarking — those patent portfolios, as well as identifying the most valuable IP, spotting trends over time and determining technology gaps.
10:00 Break
10:10 Breakout Session:
U.S. Trademark Updates and Review
Mary S. Mathew, Dentons, New York, NY
Christian Palmieri, A+E Networks, New York, NY
Receive an overview of the most significant updates in trademark law from 2020.
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OR
U.S. Patent Law Updates and Review
Lance A. Lawson, Burr & Forman LLP, Charlotte
Richard T. Matthews, Williams Mullen, Raleigh
Review the most significant updates in patent law from 2020.
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11:10 Break
11:20 How to Make a Peanut Butter and Jelly Sandwich (or a Complex Research and Development Collaboration Agreement) Without Creating a Mess‡
Darrell A. Fruth, Smith Anderson Blount Dorsett Mitchell & Jernigan LLP, Raleigh
Megan C. Lambert, Smith Anderson Blount Dorsett Mitchell & Jernigan LLP, Raleigh
Sometimes creating innovative products and services requires research and development using another company's technology. This presentation offers practical advice on assigning ownership of arising intellectual property, licensing and protecting background technology, and incorporating third-party contributions. The presenter draws from his personal experience with helping innovators and entrepreneurs in life sciences, agtech, cleantech and software, and also offers best practices that apply to technology collaborations more broadly.
12:20 Lunch Break
12:50 Ethical Considerations in Advising Clients: The Impact of Brunetti in the Era of Renewed Focus on Social Justice*
Megan M. Carpenter, University of New Hampshire, Concord, NH
John R. Sommer, Stussy Inc., Irvine, CA
How should attorneys effectively and ethically represent their clients after Brunetti and in an era of renewed focus on social justice? Is the USPTO's new "widely-used commonplace words" doctrine valid as to disparaging marks or at all marks? During this session, find out the answers to these questions and more.
1:50 Break
2:00 Breakout Session:
Intellectual Property and Enforcement Strategies in China
Robert J. "Bob" Koch (retired), Milbank LLP, Washington, DC
Dive into a discussion of intellectual property as it relates to enforcement strategies in China.
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OR
Privacy Pitfalls and Best Practices: Privacy Law Primer for IP Attorneys
Angela P. Doughty, Ward and Smith PA, New Bern
Are you thinking about privacy laws when you work with clients on intellectual property and technology agreements? The potential liabilities clients could face for the collection, manipulation, storage and distribution of data make it important for intellectual property attorneys to have a general understanding of the recent developments in the U.S. (and international) privacy laws and how these new laws are impacting best practices for document drafting and counsel. This session offers intellectual property attorneys a primer on how privacy law can be inadvertently triggered and what we need to be asking and thinking about when drafting, reviewing and negotiating agreements to support and protect our clients.
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3:00 Break
3:10 Leveraging Technology and Social Media Marketing for Intellectual Property Attorneys in North Carolina‡
Ticora E. Davis, The Creator's Law Firm, Charlotte
Gain insight on leveraging technology and social media marketing for intellectual property attorneys in North Carolina.
4:10 Adjourn
* Indicates portion providing Ethics/Professional Responsibility credit
‡ Indicates portion providing Technology Training credit
Thank you for joining us for 2021 Intellectual Property Law Section Program.
The theme of this year's Intellectual Property Law Section CLE, practical guidance, aims to equip you with the diverse knowledge and useful insight to successfully navigate each of these aspects.
Daniel I. "Dan" Becker, Olive Law Group PLLC, Cary
Dan is a registered patent attorney and former United States Patent and Trademark Office (USPTO) patent examiner with over six years of intellectual property experience. He has worked with a wide range of diverse subject matter, ranging in complexity from wireless communications and electrical power grid backup systems to beach games and automotive performance equipment. He has also handled subject matters including patents, trademarks, trade secrets, and licensing agreements.
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Megan M. Carpenter is dean of the University of New Hampshire School of Law in Concord, NH. Dean Carpenter is an internationally known expert in intellectual property, with particular interests in entrepreneurship, branding, and the arts.
Prior to joining UNH Law, Dean Carpenter was founder and co-director of the Center for Law and Intellectual Property at Texas A&M University School of Law, where she also served as Professor of Law and Faculty Director of three intellectual property and entrepreneurship-related clinical programs. Dean Carpenter also practiced law at Kirkpatrick & Lockhart (now K&L Gates), where she represented clients on a variety of intellectual property and technology-related issues.
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Angela P. Doughty is an IP and Privacy attorney at Ward and Smith PA in New Bern. She also serves as the firm's Director of Legal Innovation. She is a North Carolina State Bar Board Specialist in Trademark Law and a Certified Information Privacy Professional- United States (CIPP/US).
Angela oversees several initiatives to optimize and increase the efficiency of the firm's legal services. In addition to adopting and executing practices, such as Legal Lean Sigma, Angela is responsible for moving the firm through the implementation of process improvement, design methodologies, and innovative technology.
In her IP practice, Angela routinely counsels and assists clients with identifying, protecting, enforcing, and managing their U.S. and international IP rights; trademark and service mark selection, clearance, and registration; opposition and cancellation proceedings before the U.S. Patent and Trademark Office; Internet and domain law issues; software development and licensing transactions; and negotiating the acquisition, licensing, and transfer of intellectual property rights. She has extensive experience with strategic planning and management of IP portfolios, including IP audits to assist clients with the identification of intellectual property assets and the related risks and opportunities.
Angela earned her B.S., summa cum laude, in Business Management - Logisitics and Operations from North Carolina State University, her J.D., from Campbell University Norman Adrian Wiggins School of Law and her M.B.A., from Campbell University Lundy-Fetterman School of Business.
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Ticora E. Davis, The Creator's Law Firm, Charlotte
Ticora is an attorney, author, and speaker, is recognized as one of the most prominent voices advocating for more holistic, inclusive, and ethical legal representation for Black women and creatives of color.
The founder and CEO of The Creator's Law Firm , Ticora helps experts and entrepreneurs protect their smarts through a suite of business law and consulting services. With a client portfolio that reads like a VIP list of some of the world's most successful Black brands, the firm is guided by a diverse team of female legal juggernauts and boasts an impressive 98.5% success rate in trademark registrations.
Ticora's inherent ability to seamlessly blend her knowledge and passion has garnered her the opportunity to work with stellar brands like VH1, Black Enterprise, and Facebook. She's been awarded numerous prestigious honors, including Who's Who of Black Charlotte and Business North Carolina's Legal Elite, and routinely travels nationally as a motivational speaker and panelist.
Darrell A. Fruth is a Partner at Smith Anderson Blount Dorsett Mitchell & Jernigan LLP in Raleigh. He helps innovative companies develop and commercialize new technologies. He regularly assists clients in life science, ag-tech, and clean-tech on complex national and international licensing, distribution and research collaboration agreements. He helps software clients navigate open source issues, distribute video games and develop software platforms.
Darrell also provides guidance on intellectual property issues in strategic commercial transactions such as joint ventures and mergers and acquisitions.
Prior to joining Smith Anderson in 2018, Darrell practiced at law firms in San Francisco and Raleigh.
Darrell earned his B.S. in Environmental Engineering Science from Massachusetts Institute of Technology (MIT), M.S. in Environmental Engineering from the University of California at Berkeley and his J.D. from Yale Law School.
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Robert J. "Bob" Koch is a retired partner who until 2017 was the head of the Intellectual Property Group of Milbank, Tweed, Hadley & McCloy LLP in Washington DC.
Mr. Koch is recognized as one of the nation's leading biotech and chemical patent attorneys and is known for his leadership in a number of the landmark cases in the field. He practiced for 43 years and lead litigation teams in all complex Intellectual Property matters including patents, trademarks, trade secrets, unfair competition and copyright. In addition to litigation in district courts, the ITC and Federal Circuit, Mr. Koch focused on global IP strategies and dispute resolution for his multinational, foreign and domestic clients.
Mr. Koch's representations ranged from start-up biotech companies to major U.S. and European chemical and pharmaceutical houses and included important pioneering biotechnology breakthroughs, practical consumer medical devices, classic blockbuster drugs and chemical engineering technologies. His hands-on IP experience also included patent preparation and prosecution, opinions, merger and acquisition due diligence, portfolio management, pharmaceutical patent term extensions, counseling, licensing, arbitration, mediation in all areas of technology and expert witnessing in international and domestic IP disputes.
Retiring after years of full-time successful litigation and critical client counseling, Mr. Koch can now pursue research and counseling regarding all matters of intellectual property dispute resolution, arbitration, mediation, patent and copyright reform and technology strategies for corporate, startup and venture capital managers.
Megan C. Lambert, Smith Anderson Blount Dorsett Mitchell & Jernigan LLP, Raleigh
Megan Lambert assists a broad range of companies in the Life Sciences and AgTech industries in developing and commercializing their intellectual property assets, including through domestic and international corporate partnering, patent and technology licensing, research and development collaborations, clinical trials, manufacturing and supply chain arrangements, distribution and other strategic commercial transactions.
Prior to joining Smith Anderson, Megan was an associate attorney in the Research Triangle Park office of an international law firm.
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Lance A Lawson is a Partner at Burr & Forman LLP in Charlotte. He is a member of the firm's Intellectual Property practice group. A licensed Professional Engineer with an advanced degree in engineering, Lance is a first-chair litigator with 25 years of experience obtaining outstanding results for his technology clients. He focuses on patent infringement and other intellectual property litigation including trademarks, trade dress, copyrights, and trade secrets, as well as commercial disputes involving technology and licensing.
Lance has represented companies in intellectual property disputes before the International Trade Commission, Patent Trial and Appeal Board, in U.S. district courts throughout the country, and in appeals to the Federal Circuit and other Courts of Appeal. He also has extensive experience in strategic planning concerning patent and trademark procurement and portfolio management, including acquisition, maintenance, and licensing of U.S. and foreign patent and trademark assets. Lance served over four years on the Executive Committee at his previous law firm before it merged with Burr Forman.
Lance has leveraged his experience as a licensed professional engineer to advise clients in intellectual property disputes in diverse technologies, including medical devices, mobile phones, air-to-ground communications, Wi-Fi, night vision devices, computer software and disc drives, electric automobiles, navigation systems, lithium batteries, light-emitting diodes (LEDs), cancer screening systems, pharmaceuticals, breathable films, and non-woven fabrics. In addition to his many speaking engagements on intellectual property issues, Lance is a guest lecturer on leadership and international security issues for Senior Executives courses at the Harvard Kennedy School at Harvard University. For his legal work and involvement in his community, Lance recently was the recipient of the North Carolina Bar Association's Citizen Lawyer Award.
Prior to pursuing law, Lance served nine years on active duty as an engineer officer with the United States Army Corps of Engineers, including three years as chief of engineering and design, and one year commanding in combat an engineer unit in both Iraq and Saudi Arabia during Operations Desert Shield and Desert Storm. Lance later served as a JAG attorney at the rank of Lieutenant Colonel in the United States Army Reserves, while performing duties as the general counsel to several military units in the Southeast. During his time in the U.S. military, Lance was awarded the Master Parachutist Badge, the U.S. Army Ranger Tab, and the Bronze Star for actions in combat.
Lance earned his B.S., with honors, from the United States Military Academy at West Point, his M.S. from Stanford University and his J.D., cum laude, from the University of Notre Dame Law School.
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Mary S. Mathew is a member of Dentons' Intellectual Property and Technology practice in New York, NY. She has advised clients on protecting and enforcing their intellectual property rights for more than 15 years.
In this digital age and global economy, trademarks have become more valuable than ever as a way of branding one's products or services. Along with copyrights, they are continually facing ever new challenges, particularly in the social media, telecommunications, entertainment and venture technology fields. Mary provides legal and practical advice to numerous clients in these industries, among others, including researching selected trademarks to assess availability and risks; handling all aspects of the often-lengthy registration process across multiple jurisdictions; enforcing copyright and trademark rights, including negotiating with third parties on domain name disputes, infringements and inter partes proceedings; managing working relationships with relevant business managers; conducting IP due diligence in connection with secured transactions; and consulting on creative ways to increase the value of an IP portfolio.
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Richard T. "Rick" Matthews is a Partner at Williams Mullen in Raleigh. He concentrates his practice on intellectual property matters, including patent, trademark, copyright, trade secret, licensing and related litigation. He has represented companies in intellectual property disputes in over 40 states as a first-chair trial attorney and in bet-the-company litigation. He has extensive experience handling every aspect of litigation through trial and appeal. His cases have spanned federal courts across the country and before the Patent Trial and Board (PTAB), International Trade Commission (ITC), Trademark Trial and Appeal Board (TTAB), Fourth Circuit, Sixth Circuit, Federal Circuit and Supreme Court.
While Rick has been practicing patent law since 2003, he is also certified by the North Carolina State Bar Board of Legal Specialization as a Specialist in Trademark Law. Rick has been recognized by Chambers USA for Intellectual Property Law (2019). He has also been named among North Carolina's "Legal Elite" by Business North Carolina (2014-present); listed in The Best Lawyers in America© for Trademark Law and Patent Law (2017-present); listed in North Carolina Super Lawyers for Intellectual Property Law (2011-2016, 2022); and named among the Top 40 Lawyers Under 40 in Intellectual Property for North Carolina by the American Society of Legal Advocates. He is licensed to practice law in North Carolina, Virginia and the District of Columbia, and he is registered to practice before the U.S. Patent and Trademark Office (USPTO).
Rick earned his B.S. in chemistry, with a focus in biochemistry, from the University of North Carolina at Chapel Hill, J.D. from the Campbell University Norman Adrian Wiggins School of Law and a Masters of Law degree in intellectual property law from the George Washington University Law School. He clerked in the ITC's Office of Unfair Import Investigation, focusing on Section 337 patent cases. In addition, he interned at the U.S. Court of Federal Claims for the Honorable Judge Susan G. Braden.
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Susan E. McBee, McBee Moore & Vanik IP LLC, Frederick, MD
Susan is a registered patent attorney, and is recognized by Chambers and Partners USA as a leader in the field of intellectual property law. Susan is experienced in patent and trademark portfolio management for large Fortune 500 companies engaged in chemical, biotechnology, pharmaceutical, neutraceutical, and engineering fields, including agricultural chemistry, polymer chemistry, fermentation and extraction of proteins, food additives and processes, small molecule chemistry, genetic engineering, biotechnology, medical devices, metallurgy, packaging materials, electronic materials and associated methods of manufacture and use.
Susan's prior career experience includes owning and operating a patent search company and working as a patent examiner at the USPTO in the field of polymer chemistry/light sensitive materials.
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Chester G. "C.G." Moore Ph.D is a registered patent attorney and a member of McBee Moore & Vanik IP LLC's Intellectual Property Practice in Frederick, MD. C.G. concentrates his practice in the fields of biotechnology and chemistry, with a particular emphasis on molecular and cellular biology, small molecule chemistry, medical devices, agricultural chemistry, and food additives.
C.G. gained significant research experience in the life sciences through his work as a research assistant at the Oregon Health Sciences University and later at the Massachusetts General Hospital. He also acquired first-hand experience with the biotechnology industry while working with the New England Organ Bank and the Transplant Resource Center of Maryland.
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Christian T. Palmieri is Vice President, Intellectual Property Counsel, for Legal & Business Affairs at A+E Networks in New York. He is a key advisor to senior executives around the globe on all Intellectual Property and Information Society matters, including Litigation and Consumer Products, as well as on Employment, Compliance, Cyber Security/Anti-Piracy matters, for A+E Networks® (encompassing A&E®, Lifetime®, HISTORY®, LMN®, and FYI™ networks, VICE™, A+E Digital™, A+E Studios®, A&E Indie Films® and A+E Ventures). He advised on matters of corporate strategy during a period of tremendous global expansion, including AETN's investment in Vice Media, launch of AETN's Asian and European HQ and other global ventures. Christian has been appointed to the AETN Global Content Anti-Piracy Task Force and works on implementation of anti-piracy efforts across multiple distribution platforms. Christian is directly responsible for AETN receiving two nominations and winning a World Trademark Review Industry Award for Sports, Entertainment & Media IP Team of the Year.
Christian's work history includes leading and managing in fast-paced, high-growth companies, and previously was involved in fashion, marketing and branding in the US and internationally.
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Andrew T. "Andy" Prokopetz is currently senior counsel at Cotton Incorporated. Formerly, he was Division IP Counsel for Bayer CropScience LP. He possesses over twenty years of legal experience that include strategic intellectual property analyses in Small Molecule and Biotech areas. His expertise includes drafting and negotiating contracts, evaluating risk factors for businesses, and strategic planning for developing and protecting global intellectual property as well as high-level analysis of patent portfolios and complex litigation issues to guide companies in their strategic business planning.
Andy received his J.D. degree from North Carolina Central University (evening) and a M.S. degree in Chemistry from the University of North Carolina at Chapel Hill. His hobbies are cycling and cooking.
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Erica B.E. Rogers is an intellectual property attorney with Ward and Smith PA in Raleigh. She assists individuals, small businesses, and large corporations with a wide array of intellectual property matters. Her practice focuses on trademark selection and clearance, trademark prosecution and registration, and trademark portfolio management. She also routinely engages in resolving trademark disputes, including drafting cease and desist letters, negotiating coexistence agreements, providing subject matter expertise for litigation in federal court, and handling cases before the Trademark Trial and Appeal Board (TTAB).
Erica assists with copyright matters, often in the form of counseling clients on ownership, acquisition, protection, and enforcement. She resolves internet and domain law issues and develops terms of use and privacy policies for websites and mobile applications. She understands the personal, financial, and meaningful effort clients invest in their intellectual property, and her background and work reflect this understanding.
Erica's focus in intellectual property law extends to assisting with transactional, licensing, and various business matters in multiple industries, including matters in the hemp and CBD industries. She is available to assist hemp breeders, growers, processors, manufacturers, distributors, retailers, and other market participants with brand protection for hemp and hemp-derived marks, Federal, state, and local legal and regulatory compliance matters, and agreements within the industry.
Erica leads the firm's Name, Image, and Likeness Practice Group. Many individuals license commercial use of their name, image, and likeness ("NIL") to companies, and more recently, individual collegiate athletes have been able to do so. The NIL Practice Group primarily assists businesses who work with these athletes to promote products or services, in addition to assisting NIL collectives, marketing agencies, software platform providers, and financial advisors. Erica stays aware of the changing laws and regulations in this space, which complement her already-developed skills in negotiating and drafting license agreements.
Erica earned her B.A., magna cum laude, in Spanish from Meredith College, her B.M., magna cum laude, in Piano Performance from Meredith College and her J.D. from the University of New Hampshire Franklin Pierce School of Law.
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John R. Sommer is Chief Administration Officer & General Counsel at Stussy, Inc. in Irvine, CA. His areas of expertise are alternative dispute resolution, business/commercial litigation, copyright/trademark and patent law. He has 20 plus years of trademark/copyright and patent experience. Mr. Sommer is a member of the Federal Bar Association.
John received his A.B. degree, cum laude , from Indiana University in 1979 and his J.D. degree from UCLA Law School in 1982.