Join us for the early arrivals CLE reception! The reception is open to all current Intellectual Property Law Section members and speakers of the section CLE! We hope to see you there! Includes heavy appetizers and alcoholic/non-alcoholic drinks.
9:00 Artificial Intelligence: Patent Inventorship and Copyright Authorship Considerations in the U.S.
Maryna K. Gipsov, USPTO (Office of Policy and International Affairs), Virginia Nalini Mummalaneni, USPTO (Office of Patent Legal Administration), Virginia
Artificial Intelligence is at the forefront of today's policy discussions in the United States and other parts of the world. It raises complex questions at the intersection of intellectual property law and technology, including questions on patent inventorship and copyright authorship. Our guest speakers from the U.S. Patent and Trademark Office, Nalini Mummalaneni and Maryna Gipsov, provide a brief summary of recent developments in this area.
10:00 Break
10:10 Pro Bono Ethics Panel: Fostering Inclusive Innovation Through Intellectual Property Assistance*
Arthur J. "Art" DeBaugh, Ward and Smith PA, Raleigh Jennifer R. Knight, Clements Bernard Walker PLLC, Charlotte Shawna Cannon Lemon, Stanek Lemon Crouse + Meeks PA, Raleigh Lisa L. Mueller, Casimir Jones SC, Raleigh
As intellectual property attorneys, we know that intellectual property protection is critical to inventors and entrepreneurs. In this session, we review the demographic disparities along the innovation pipeline. (For example, inventors who obtain patents and/or entrepreneurs who secure venture capital do not represent the general demographics with respect to gender, race, ethnicity or economic status.) We also discuss the wide range of IP pro bono programs that are impacting these disparities.
11:10 Break
11:20 Enablement Panel: USPTO 2024 Guidance and Where Are We Now?
Jeff W. Childers, Casimir Jones SC, Raleigh Daniel E. "Dan" Kolker, USPTO (Technology Center 1600), Virginia Jeffrey S. "Jeff" Lundgren, USPTO (Technology Center 1600), Virginia Jacob "Jake" Moore, Moderna, Massachusetts/Cary Michael Penn, BlueRock Therapeutics, Massachusetts/Raleigh-Durham
The USPTO published Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. on January 10, 2024. The expert panel discusses the impact of Amgen and the guidance document, and shares insights on navigating a path forward for drafting patent applications.
12:20 Intellectual Property Law Section Annual Meeting
Julia A. Kim, Casimir Jones SC, Raleigh, 2023-2024 Section Chair, presiding
12:35 Lunch Break
1:20 Trademark and Patent Litigation Year in Review
Lance A. Lawson, Burr & Forman LLP, Charlotte Richard T. "Rick" Matthews, Williams Mullen, Raleigh
This session reviews the most significant trademark and patent litigation cases over the past year.
2:50 Break
3:00 Emerging Copyright Issues Within the Videogame Space
Jay Choi, Epic Games Inc., Cary Darrell A. Fruth, Smith Anderson Blount Dorsett Mitchell & Jernigan LLP, Raleigh
The three-dimensional modeling technology that drives videogames is also on the leading edge of emerging new copyright issues that will help shape Web 3.0 and the metaverse. How will users monetize the content they create? What about content created using artificial intelligence? This session focuses on broad issues from the perspective of practitioners with deep experience licensing technology used to create realistic experiences within games and in many other applications.
3:30 Break
3:40 Ethical and Responsible Use of AI in Practice Management*
Catherine Sanders Reach, North Carolina Bar Association, Cary
Generative artificial intelligence is not a new concept for lawyers, who have been applying some forms of it for a while. However, the recent emergence of many low-cost and accessible tools that can offer various benefits in a short time has changed the landscape. But before lawyers can take advantage of these AI assistants, they need to be aware of the ethical and practical implications. How can they ensure that using generative AI (GAI) for client work is secure and appropriate? The existing rules, as well as the proposed NC State Bar ethics opinion, provide some guidance and some best practices. In this session, we discuss what you need to consider when using GAI in your practice.
During this program, explore some of the trending topics and current issues — including artificial intelligence as it relates to inventorship, copyright authorship, and practice management; inclusive innovation; enablement; recent trademark and patent litigation cases; and videogame copyright issues.
Contributors
James H. "Jim" Alstrum-Acevedo
James H. "Jim" Alstrum-Acevedo is the Supervisory Patent Examiner and Attorney Advisor at the United States Patent & Trademark Office (USPTO) in Virginia.
As a Supervisory Patent Examiner (SPE), Jim is responsible for leading and training a team of patent examiners with various backgrounds in biology, chemistry, and chemical engineering, and many of whom also have a law degree. His art unit (1654) examines small peptides (less than 100 amino acids, e.g. insulin and cyclosporine), blood factors (e.g. Factor VIII), albumin, methods of making and using these peptides.
As an attorney advisor detailee at the USPTO's Office of Policy & International Affairs, Jim supports the IP Attaché Program. In this role, his duties include legal research and writing regarding various international IP issues.
Jim earned his B.S., double majoring in Chemistry and Spanish, from Illinois State University, Ph.D. in Chemistry from the University of North Carolina at Chapel Hill and his J.D., with an Intellectual Property focus, from The George Washington University Law School.
Jeff W. Childers is a Shareholder at Casimir Jones SC in Raleigh. He has more than 15 years of experience preparing and prosecuting U.S and foreign patent applications in pharmaceuticals, specialty chemicals, molecular diagnostics, biosensors, textiles, material sciences, medical devices, and related areas. He also provides clients with due diligence analyses, including patentability, freedom-to-operate, and infringement/non-infringement opinions; provides guidance and counseling on the intellectual property aspects of licensing and business transactions; and provides strategic advice and management of patent portfolios.
Jeff also has significant experience with university technology transfer, including serving as in-house patent counsel with Johns Hopkins Technology Transfer and completing an externship with the University of North Carolina Office of Technology Development.
Jeff earned his B.S. in Chemistry from West Virginia Wesleyan College, Ph.D. in Chemistry from Duke University and his J.D., with honors, from the University of North Carolina School of Law.
Jay Choi is Lead Counsel - Unreal Engine at Epic Games Inc. in Cary.
Jay earned his B.S.E in Electrical and Computer Engineering from Duke University and his J.D. from the University of Southern California Gould School of Law.
Arthur J. "Art" DeBaugh is a Trademark & Intellectual Property Attorney with Ward and Smith PA in Raleigh. He is a North Carolina State Bar certified specialist in Trademark Law who has extensive experience assisting clients in developing brand strategies and protecting their trademarks. He provides trademark clearance, registration, and maintenance services, as well as assists clients with their infringement and anti-counterfeiting efforts, licensing and marketing arrangements, contract drafting, confidentiality issues, and franchising issues. In addition, he advises on copyright matters, marketing, advertising, and promotions law issues, software licenses, and internet and domain name issues.
Art was Chief Counsel - Intellectual Property at Sara Lee Corporation in Winston Salem from 1992-2004, where he was responsible for a global trademark portfolio of over 20,000 marks in the apparel/textile, food and beverage, and household consumer goods industries, as well as a patent portfolio of over 800 subsisting patents.
Amongst other associations and involvement, Art has served on the Pro Bono Committee, the Famous & Well-Known Marks Committee, and the Trademark Administrators Committee of the International Trademark Association and the Intellectual Property Section Council and the CLE Advisory Committee of the North Carolina Bar Association.
Art earned his B.A. in English from the University of North Carolina at Chapel Hill and his J.D. from the University of North Carolina School of Law.
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.
Maryna K. Gipsov is Attorney-Advisor (Copyright) in the Office of Policy and International Affairs at the United States Patent and Trademark Office (USPTO) in Virginia. She works on various copyright policy matters both domestically and internationally.
Prior to this role, Maryna worked as a Trademark Examining Attorney at the USPTO for over four years.
Over 14 years of her professional career, many projects Maryna worked on involved interaction and collaboration with various stakeholders, including U.S. government agencies, foreign governments, trade associations, non-profit organizations, academic institutions, tech companies, creative industries, small businesses, and entrepreneurs. She worked in various capacities in the intellectual property field, including at the Recording Industry Association of America, U.S. Copyright Office, Smithsonian Folkways Recordings, Center for the Protection of Intellectual Property at George Mason University, and a boutique intellectual property law firm in D.C.
Maryna graduated from an art school in Ukraine and law school in both Ukraine and the United States. She got her LL.M. degree in Intellectual Property Law from the George Washington University Law School.
David J. Grant is a Shareholder and Patent Attorney with Stanek Lemon Crouse + Meeks PA in Raleigh. He manages patent prosecution in various domains including software, communications, semiconductors, electrical engineering, mechanical technology, medical devices, and emerging technologies such as artificial intelligence and machine learning. His expertise extends to securing patents for a wide array of healthcare innovations, including digital imaging systems, wearable health monitoring devices, computer-assisted surgical tools, and consumer healthcare technologies such as mobile health applications, electronic personal care devices, and interactive patient care systems.
In his practice, David provides counseling, licensing, and due diligence, supporting clients from startups to large corporations in developing strong patent portfolios both domestically and internationally. His approach involves a deep dive into each client's business and technology to devise patent strategies aligned with their unique commercial objectives. His commitment to excellence is evident in his tailored counsel and unwavering dedication to protecting innovation.
David earned his B.A., summa cum laude, in Electrical Engineering from North Carolina State University. While working on his undergraduate degree, he worked as an engineering co-op for a Fortune 250 power generation and supply company. He earned his J.D. from the University of North Carolina School of Law, where he served on the board of the Intellectual Property Association.
Jennifer R. Knight is of Counsel with Clements Bernard Walker PLLC in Charlotte. He has extensive experience in patent application drafting and prosecution, patent portfolio management, and preparing patentability, validity, and infringement opinions. She also has a strong transactional background. She has negotiated license agreements, joint development agreements, and master research agreements with universities as well as agreements for the purchase of patent rights.
Jennifer advises clients on the need for and risks of confidentiality agreements when working with third parties and ensures agreements have an appropriate scope. Representative arts include packaging, catalysis, process flow sheets, separations technologies, unit operations, small molecules, fibers, polymers, plasticizers, shrink film, carboxylic acids, and anhydrides, and track and trace technology.
Jennifer earned her B.S. in Chemcial Engineering from the University of Tennessee Knoxville, Ph.D. in Chemical Engineering from the University of Massachusetts Amherst and her J.D. from the University of Tennessee Knoxville.
Daniel E. "Dan" Kolker is a Supervisory Patent Examiner at the USPTO (Technology Center 1600) in Virginia. He joined the USPTO in 2004. He served as a patent examiner for seven years, and primarily examined applications in the neurobiology area. In 2012, he was promoted to Supervisory Patent Examiner (SPE). He supervises art unit 1644, which primarily focuses on antibodies and immunology.
Dan routinely works to ensure patent examiners receive appropriate guidance in the standards of patentability, particularly with respect to subject matter eligibility under 35 USC 101, written description and enablement under 35 USC 112(a) and nonstatutory double patenting. He oversees 14 patent examiners, and routinely interacts with examiners from across technology center 1600, as well as patent practitioners.
Dan earned his B.A. in Psychology from Vassar College and his Ph.D. in Neuroscience from Northwestern University.
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.
Shawna Cannon Lemon a Co-Managing Shareholder at Stanek Lemon Crouse + Meeks PA in Raleigh. She serves as an outside patent counsel to pharmaceutical, biotechnology, and medical device management teams and universities where she engages in the formulation and implementation of global patent strategies.
In addition to drafting and prosecuting patent applications, Shawna assists clients with intellectual property due diligence, partnering negotiations, licensing, and opinion work and she provides trademark assistance. She is also an angel investor and venture fund investor and uses her experience to assist her clients.
Shawna has co-authored publications in scientific journals and speaks with various audiences regarding patent law topics. Before her legal career, she worked in pharmaceutical market development at Merck & Co., Inc.
Shawna earned her B.S. in Biology from Wofford College, Ph.D. in Biomedical Sciences/Pharmacology from The University of South Carolina and her J.D. from The University of North Carolina School of Law.
Jeffrey S. "Jeff" Lundgren is with the USPTO (Technology Center 1600) in Virginia.
Richard T. "Rick" Matthews
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.
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.
Lisa L. Mueller is a Partner at Casimir Jones SC in Raleigh. For over 25 years, she has provided strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology and chemistry sectors. She brings an in-depth knowledge and extensive experience to her work advising clients on the global patent protection, freedom to operate and validity of blockbuster drugs they aim to produce and distribute.
With a background in chemistry and biology, Lisa provides advice on the full spectrum of global intellectual property portfolio management including patent prosecution, opposition and other post-grant proceedings, and diverse regulatory matters in the following areas: small molecules and biologics, drug delivery and drug preparation methods, diagnostics and personalized medicine, physical and materials sciences, food science and nutrition, renewable/green chemistry, polymer chemistry and Agricultural, ornamental, vegetable and tree breeding and development (including plant patents and plant variety protection).
Since 2001, Lisa has worked closely with in-house legal departments of global pharmaceutical firms regarding their patent development and enforcement strategies. In this partnership, she provides training to new in-house counsel and meets with scientists and other business development to anticipate and resolve a wide array of problems including navigation of U.S. Food and Drug Administration approval.
A thought leader on pharmaceutical and biopharmaceutical patent law, Lisa speaks frequently to legal and industry groups, and publishes widely. She was the author of an award-winning blog, BRIC Wall, which provides unique insights on patent law developments in the life sciences industry in Brazil, Russia, India and China. She is currently the author of the blog, BRICS & Beyond which provides unique insights on patent law developments in the life sciences industry not only in Brazil, Russia, India and China but in other countries outside of the United States.
Lisa earned her B.S. in Chemistry and Biology and J.D. from Valparaiso University School of Law.
Nalini Mummalaneni is a Senior Legal Advisor in the Office of Patent Legal Administration at the United States Patent and Trademark Office (USPTO) in Virginia. The Office of Patent Legal Administration assists in the development and administration of U.S. patent law, advises the USPTO on patent examination policy, and formulates new regulations, policies, and procedures regarding patents. Nalini is involved in the development of policy in areas like subject matter eligibility under Section 101, artificial intelligence (AI), disclosure requirements under Section 112, and assignments.
Nalini earned her B.S. in Electrical Engineering from Nagarjuna University, India, Master's in Computer Science from the University of Texas at Dallas and her J.D. from The George Washington University Law School.
Michael "Mike" Penn
Michael "Mike" Penn is Vice President, Intellectual Property at BlueRock Therapeutics in Massachusetts/Raleigh-Durham, a clinical-stage wholly owned subsidiary of Bayer with a focus on stem cell therapeutics to treat disease in the areas of neurology, ophthalmology, cardiology, and immunology.
Mike has over 30 years of experience in the biotech, pharmaceutical industry, and diagnostics industries, where he spent nearly a decade as a bench scientist and eventually made the change to a career in intellectual property law where he has worked for large and small innovator companies.
Mike earned his B.A. in Biology from St. Mary's College of Maryland, M.S. in Biotechnology from The Johns Hopkins University and his J.D. from The George Washington University Law School.
Catherine Sanders Reach is Director for the Center for Practice Management at the North Carolina Bar Association, providing practice technology and management assistance to lawyers and legal professionals. Formerly she was Director, Law Practice Management and Technology for the Chicago Bar Association and the Director at the American Bar Association's Legal Technology Resource Center.
Prior to her work at the NCBA, CBA and ABA she worked in library and information science environments for a number of years, working at Ross and Hardies as a librarian. She received a master's degree in Library and Information Studies from the University of Alabama, Tuscaloosa in 1997.
Catherine's professional activities include articles published in Law Practice magazine, Law Technology News and GPSolo Magazine, as well as numerous other publications. She has given presentations on the use of technology in law firms for national bar conferences, state and local bar associations and organizations such as the National Association of Bar Council and the Association of American Law Schools. In 2011 she was selected to be one of the inaugural Fastcase 50, celebrating fifty innovators, techies, visionaries, and leaders in the field of law and in 2013 became a Fellow of the College of Law Practice Management. She served on the ABA TECHSHOW Board from 2007-2009, 2014-2016 and is co-vice chair in 2019.
Eric F. Wagner is the Director - Legal Affairs in the Office for Translation and Commercialization at Duke University in Durham. As a registered patent attorney, his responsibilities include the preparing and prosecuting of patent applications, assisting OTC staff regarding patent and licensing matters, as well as the management of intellectual assets owned by Duke University.
Eric has over nine years experience in patent law, most recently as an associate at a major Intellectual Property law firm in the Research Triangle Park where he focused on all aspects of biotechnology patent prosecution and related areas of practice. He also worked for the Kimberly-Clark Corporation, where he helped establish an intellectual asset (IA) management group which was responsible for the internal review, assessment, and management of corporate intellectual assets. He was also responsible for the coordination and management of corporate and sector R&D; technology and IA programs to ensure sector business plans aligned with the overall corporate strategy.
Eric earned his B.S. in Biochemistry from Purdue University and his J.D. from Suffolk University. In addition, he holds a Ph.D. in Immunology from Brown University, where his thesis research focused on the study of human B cell growth and development as well as the biology of AIDS-associated B cell lymphomas and the role of Interleukin-10 in human placental immunity. He is the co-author of over seven peer-reviewed journal articles.
Sarah Wesley Wheaton is an Associate at Dechert LLP in Charlotte, where she is a member the firm's global private equity group. She advises private equity funds, institutional investors, and other strategic acquirers in connection with mergers and acquisitions, asset purchases and dispositions, corporate financing transactions, co-investments strategic collaboration, and general corporate matters. Leveraging a background in intellectual property law, she brings a diverse perspective when helping clients navigate emerging trends and regulations on a local and global scale.
In the strategic investor and private equity space, Sarah has experience on both buy and sell-side transactions across various sectors, including software and new technologies, infrastructure, distribution and manufacturing, natural gas and regulation markets. She has a particular focus on private equity healthcare and life sciences, having advised on deals involving physician services, autism services, vision services, behavioral health, fertility clinics, pharmacies home health and care, ambulatory surgery centers, telehealth and telemedicine, and health technology.
Sarah earend her B.A.in Communications, History and and Cinema from the University of North Carolina at Chapel Hill and her J.D. from Wake Forest University School of Law.
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March 22, 2024
Fri 8:25 AM EDT
North Carolina Bar Center8000 Weston Parkway
Cary, NC 27511
919.677.0561