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SLW Institute Global IP Conference Materials

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Click the links below to download the presentation materials from the SLW Institute Global IP Conference. 

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Day 1 - April 10, 2018

Track I: Global IP Strategies

Session 1: Top Five IP Interactions with GDPR

Are you losing sleep over the upcoming General Data Protection Regulation (GDPR) to be enacted on May 25 by the EU?  In this presentation, we’ll explore what in-house and outside counsel need to know about privacy and data security, and their impact on trade secrets, IP registrations and your inventors.

Session 2: FBI Case Files: Protecting Your Critical Information

Critical information can look different in every organization. We will discuss threats to the various forms of critical information, such as economic espionage, and common ways this information is stolen. Using case examples, we will look at the importance of detecting and responding to potential or actual loss of critical information. We will also provide ideas for enhancing IP protection risk assessment and posture.

Session 3: Taking Your Brand Beyond U.S. Borders

Despite recent global issues, cross-border trade continues to grow. While globalization has benefited multinationals, it has also positively affected the fortunes of small and medium-sized businesses. Now, more than ever, companies require a global protection strategy for their trademarks. This presentation will examine international trademark filing strategies, as well as common pitfalls in trademark practice,  and country-by-country tips.

Session 4: Patent Assignment Considerations within the U.S. and Under the PCT

In recent years there has been an upward trend in issues with assignment of rights contracts in patent law. There have been cases where an assignment to an employer was not considered valid when relying on an underlying employment agreement. Additional issues have arisen when an assignment from the employee/inventor did not actually occur when the employment agreement was not in compliance with the Supreme Court case of Stanford University v. Roche Molecular Systems, Inc. Further issues include attempting to use US-based employment agreements as assignment documents outside of the US. We will explore how to overcome these issues and issues with improperly executed or incomplete assignment documents where rights are not transferred to the Applicant prior to a PCT Application being filed.

Track II: European Patent Practices

Session 1: Differences and Parallels in Computer Implemented Inventions (CII) at the EPO and the USPTO, Post-Alice

Under the European Patent Convention (EPC), for a computer-implemented invention to be patentable, a technical problem must be solved in a novel and non-obvious manner. For this presentation, we will discuss the schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers. We will also review the approaches used by U.S. patent examiners and the US courts, as well as provide practical solutions and tips for drafting EPO compliant application.

Session 2: Medical Technology and Medical Methods: Patentability Requirements at the EPO

With the rapid advancements in high-tech medical solutions and the push towards personalized medicine, the IP landscape in Europe is changing drastically. Over the past 20 years, medical technologies have been the leading category in new EPO patent applications, but under Article 53, medical methods that are directed to surgery, therapy or diagnosis are not patentable. For some inventions in medical technology, it is not easy to determine whether they encompass a medical method and at times it is impossible to draft an application on a device without relating to the method. In this presentation, we will explore this these obstacles and the additional requirements needed for medical inventions to be deemed patentable

Session 3: Subject Matter Basis at the EPO: Avoiding Invalid Priority Claims and Added Subject Matter Rejections

The EPO has a notoriously strict approach when considering the basis for priority and amendments. These strict standards can lead to denial of priority claims and ultimately loss of rights. Allowability of amendments is also critical since an unallowable extension of the subject-matter can later become a ground of revocation as in the infamous “inescapable trap”. This presentation will provide practical tips on how to avoid pitfalls when filing a European patent application based on U.S. priority applications. We will also show how to draft a patent application to pave the way towards allowable amendments.

Session 4: Updates & News from the EPO & Introduction to Oral Proceedings

In this session, our EPO examiners will discuss the latest news and updates including new structures, fees, the European Patent Convention and recent improvements.  John Collins will also give a an overview on the oral proceedings mock-trial that will take place in Session 5.

Track III: Strategic IP Management

Session 1: The Role of Artificial Intelligence in Docketing Your IP

When it comes to high-volume prosecution, having a quality patent docketing system at is essential. Over the last several years, there have been major developments in automating IP docketing to increase accuracy and efficiency while to reducing costs. In this presentation, we will explore a case study on the evolution of IP docketing and provide tips to tackle key docketing issues.

Session 2: Tackling Invention Disclosures

A common challenge for many companies is determining how to make the patent process part of the company culture and efficiently capture the company’s innovation. An effective invention disclosure program is the first step of the process. If you have properly prepared invention disclosures, key inventive features are far less likely to get missed and the patent application drafting process will be faster and less expensive. Join this presentation to learn the key steps and tips on running an effective invention disclosure and patenting program.

Session 3: Streamlining Legal Operations: Onboarding, Workflow & Workload

Over the last decade, there has been a rapid growth in the role of legal operations within corporations and law firms. Legal operation teams are being strategically assembled to bring greater innovation and efficiencies, allowing attorneys to spend more time on practicing law. Along with overseeing budgets and staffing, legal operation managers are also being relied upon for knowledge management, facilitating globalization efforts, and integrating new workflow technologies. This presentation will bring together in-house and outside counsel to discuss these evolving changes and provide suggestions for widespread adoption.

Session 4: Improving Patent Filing Procedures & Systems

The introduction of electronic filing systems has improved the speed and transparency of filing documents with many patent offices around the world. However, due to the rapidly increasing trend of electronic filing, investment in associated applications and user accounts has become a necessity. For this presentation, U.S. and foreign office filers and the former Deputy Director of the USPTO will discuss problems solved by electronic filing systems and the demand to stay ahead of the curve that these systems create for law firms and IT departments.

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Day 2 - April 11, 2018

Advanced PCT Training

Advanced PCT Training with WIPO Consultant, Carl Oppedahl

Training session on advanced PCT topics led by WIPO Consultant, Carl Oppedahl. Carl will discuss recent developments in PCT rules, strategies for international filings, procedural safeguards and tips for filing demands and amendments under the PCT.