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2021 Intellectual Property Law Section Program

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


Description

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.

Contributors

  • Daniel I. "Dan" Becker

    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.

    Click here for more information about Dan.

  • Megan M. Carpenter

    Megan M. Carpenter, University of New Hampshire, Concord, NH

    Megan is dean of the University of New Hampshire School of Law. 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.

    Click here for more information about Megan.

  • Angela P. Doughty

    Angela P. Doughty, Ward and Smith PA, New Bern

    Angela is a North Carolina State Bar Board Specialist in Trademark Law and a Certified Information Privacy Professional- United States (CIPP/US) who also serves as the firm's Director of Legal Innovation.

    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.

    Click here for more information about Angela.

  • Ticora E. Davis

    Ticora E. Davis, The Creator's Law Firm, Charlotte

    Click here for more information about Ticora.

  • Darrell A. Fruth

    Darrell A. Fruth, Smith Anderson Blount Dorsett Mitchell & Jernigan LLP, Raleigh

    Darrell 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.

    Click here for more information about Darrell.

  • Robert J. "Bob" Koch

    Robert J. "Bob" Koch (retired), Milbank LLP, Washington, DC

  • Megan C. Lambert

    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.

    Click here for more information about Megan.

  • Lance A. Lawson

    Lance A. Lawson, Burr & Forman LLP, Charlotte

    Lance serves as the Managing Partner of the firm's Charlotte office, and is a member of the firm's Intellectual Property practice group. A licensed Professional Engineer, Lance focuses his practice on patent infringement and other intellectual property litigation including trademarks, trade dress, copyrights, and trade secrets, as well as commercial disputes involving technology.

    Before entering private practice, Lance was a federal law clerk for the Honorable Robert D. Potter of the United States District Court for the Western District of North Carolina. In addition, he was the Chairman of the committee that promulgated the first set of Local Patent Rules for the Western District of North Carolina in 2010-2011 and currently is on a committee revising the Local Patent Rules for the Eastern District of North Carolina. Also, after serving as the Managing Editor and co-author for a weekly patent law update and Federal Circuit Annual Review for over eight years, Lance currently serves on the Intellectual Property Editorial Advisory Board for Law360s nationally-published IP newsletter.

    Click here for more information about Lance.

  • Mary S. Mathew

    Mary S. Mathew, Dentons, New York, NY

    Mary is a member of Dentons' Intellectual Property and Technology practice. 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.

    Click here for more information about Mary.

  • Richard T. "Rick" Matthews

    Richard T. "Rick" Matthews, Williams Mullen, Raleigh

    Rick Matthews 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.

    Click here for more information about Rick.

  • Susan E. McBee

    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.

    Click here for more information about Susan.

  • Chester G. "C.G." Moore

    Chester G. "C.G." Moore, McBee Moore & Vanik IP LLC, Frederick, MD

    C.G. Moore, Ph.D. is a registered patent attorney and a member of our firm's Intellectual Property Practice. 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.

    Click here for more information about C.G.

  • Christian Palmieri

    Christian Palmieri, A+E Networks, New York, NY

    Click here for more information about Christian.

  • Andrew T. "Andy" Prokopetz

    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.

    Click here for more information about Andy.

  • Erica B. E. Rogers

    Erica B. E. Rogers, Ward and Smith PA, Raleigh

    Erica 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.

    Prior to joining Ward and Smith, P.A., Erica received her J.D. from The University of New Hampshire School of Law's Franklin Pierce Intellectual Property law program in 2016, a top-10 intellectual property program in the United States, where she was an associate editor of the IDEA: The Journal of the Franklin Pierce Center for Intellectual Property. While in law school, she interned with Sony Music Entertainment's Legal Affairs Department in New York, NY and completed the U.S. Patent and Trademark Office Law School Trademark Clinic Certification.

    Click here for more information about Erica.

  • John R. Sommer

    John R. Sommer, Stussy Inc., Irvine, CA

April 29, 2021
Thu 8:55 AM EDT

Duration 7H 15M

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