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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.

10:03      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.

10:49      Break

10:59      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.

12:13      Lunch Break

12:43      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.

1:42        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.

2:46        Break

2:56        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.

3:55        Adjourn

* Indicates portion providing Ethics/Professional Responsibility credit
‡ Indicates portion providing Technology Training credit


Thank you

Thank you for joining us for 2021 Intellectual Property Law Section Program.

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 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.

    Click here for more information about Megan.

  • Ticora E. Davis

    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

    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 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

    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.

  • Mary S. Mathew

    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.

    Click here for more information about Mary.

  • 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 Ph.D

    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.

    Click here for more information about C.G.

  • Christian T. Palmieri

    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.

    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 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.

September 15, 2021
Wed 8:55 AM EDT

Duration 7H 0M

This live web event has ended.

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