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SLW Institute Global IP

About

This two-day complimentary conference will cover a variety of topics including PCT training, building an IP strategy in an international market, overcoming country specific prosecution requirements, and the impacts of changes in patent law. 

Day one of the Global IP Conference will include multiple sessions focused on global strategy, international filing and docketing procedures, and practices specific to the EPO. On day two, Carl Oppedahl, WIPO PCT consultant, will lead training on advanced PCT topics.

When:  Tuesday April 10 - Wednesday April 11, 2018  |  9:00 AM - 4:30 PM
Registration begins at 8:00 AM

Where:  Embassy Suites by Hilton Minneapolis Downtown  |  12 South 6th St, Minneapolis, MN 55402

Day 1

Tuesday, April 10, 2018  |  9:00 AM - 4:30 PM with networking reception to follow. 

On day one of the Global IP Conference, we will bring together EPO examiners, attorneys, legal professionals, and patent owners to discuss the latest IP developments in today’s rapidly changing environment. Three concurrent tracks will explore these changes and provide tips for global IP strategies, European patent practices, and strategic IP management. 

5 ½ hours of CLE credit will be applied for in CA, MN &TX

   Track I: Global IP Strategies

This track is dedicated to all things strategy. We will discuss hot-button topics and provide critical information to help you get the most out of your intellectual property portfolio.

Who Should Attend:
•   IP Attorneys
•   Patent and Trademark Owners

Sessions Include:

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.

Speaker: Liz Fortier and Mark Stignani

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.

Speaker: Shena Crowe

Despite recent global issues, cross-border trade continues to grow. While globalization has benefitted 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.

Speaker: Pamela Huff

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.

Speakers: David Black and Bradley Scheer

   Track II: European Patent Practices

Join European patent examiners and practitioners in this collaborative program discussing EPO proceedings and subject matter eligibility, and comparing them to USPTO subject matter requirements, post-Alice.

Who Should Attend:
•   IP Attorneys
•   Patent Owners

Sessions Include: 

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.

Speakers: John Collins & Piers Blewett

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

Speaker: Astrid Young

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.

Speakers: Nathalie Babtiste, Bryn Williams, and Chris Gabriel

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.

Speakers: Alexander Gardiner and John Collins

The bulk of the examination process of obtaining European patent applications is conducted in writing. However, if the Examining Division has not been convinced to allow the application after one or more rounds of the written procedure, they may summon the applicant to an Oral Proceeding to discuss the matter. Although there is no obligation to attend, Oral proceedings can sometimes provide a good opportunity to overcome objections and explore the allowability of various amendments with the Examining Division. In this session, we will conduct a mock oral proceeding of an EPO case, including interactive participation from the audience.

Speakers:  Alexander Gardiner, Chris Gabriel, Astrid Young, Nathalie Babtiste, John Collins, and Bryn Williams

   Track III: Strategic IP Management

Recently, substantial changes in the global economic environment and advances in technology have resulted in a massive overhaul of IP law and the surrounding culture. Industry experts will provide examples and advice on implementing strategies and new, streamlined methods to strengthen your practice in this changing environment.

Who Should Attend:
•   Docketing & Paralegal Professionals
•   Patent Managers
•   Legal Operations
•   IP Attorneys

Sessions Include:

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.

Speakers: Milena Higgins and Zhakalazky Carrion

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.

Speakers: Liz Fortier and Peter Rebuffoni

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.

Speakers: Mary O'Malley and Tim Christman

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.

Speakers: Russ Slifer, Mary O'Malley, and Peter Rebuffoni

Day 2

Wednesday April 11, 2018  |  9:00 AM - 4:30 PM

Day two will be a complimentary all-day 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.  

6 hours of CLE credit will be applied for in CA, MN & TX

   Advanced PCT Training

Who Should Attend:
•   Attorneys
•   Paralegals
•   Others involved in global IP strategy

Topics Include:
•   Procedural safeguards
•   Strategies for entry into the US Nation Phase and By-pass Continuation Practice
•   Changes to the international and PCT Regulations

Schedule
8:00 AM – 9:00 AM:  Registration
9:00 AM – 10:15 AM:  Part I: Advanced PCT Training
10:15 AM – 10:30 AM:  Break
10:30 AM – 12:00 PM:  Part II: Advanced PCT Training
12:00 PM – 1:00 PM:  Lunch
1:00 PM – 2:15 PM:  Part III: Advanced PCT Training
2:15 PM – 2:30 PM:  Break
2:30 PM – 4:30 PM:  Part IV: Advanced PCT Training

Speakers
Albert_Fortier copy 2

Attaché to the United States
European Patent Office

Picture1

Senior Examiner/Directorate Advisor
European Patent Office

astrid

Examiner
European Patent Office

Scheer_Brad Scheer

Senior Attorney
Schwegman Lundberg & Woessner

Williams_Bryn Williams

UK Principal
Schwegman Lundberg & Woessner

carl_Carl Oppedahl

WIPO Consultant & Partner
Oppedahl Patent Law Firm

Picture1

Chris Gabriel

Examiner
European Patent Office

Black_Bryn Williams copy

Principal
Schwegman Lundberg & Woessner

Collins_John Collina

UK Principal
Schwegman Lundberg & Woessner

Fortier2_Liz Fortier

General Counsel
Lucid, LLC

Stignani_Mark Stignani

Analytics Chair & Firm Compliance Officer
Schwegman Lundberg & Woessner

Mary O'Malley3

Program Patent Manager
eBay

Higgins

VP of Operations & Director of Artificial Intelligence
Black Hills IP

Nathalie Babtiste

European Patent Attorney
Schwegman Lundberg & Woessner

Huff_Pamela Huff

Trademark Principal
Schwegman Lundberg & Woessner

Rebuffoni_Peter Rebuffoni

Legal Process Manager
Schwegman Lundberg & Woessner

Blewett_Piers Blewett

Principal
Schwegman Lundberg & Woessner

Russ_Russ Slifer

Former USPTO Deputy Director & Principal
Schwegman Lundberg & Woessner

LogoforSpeakers_Fortier copy 4

Special Agent
FBI Minneapolis

Christman_Tim Christman

Principal
Schwegman Lundberg & Woessner

Carrion_Z Carrion

Docketing Manager
Schwegman Lundberg & Woessner

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Contact Tara McMillen at tmcmillen@slwip.com with questions. 

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About   |   Day 1   |    Day 2   |    Speakers

This two-day complimentary conference will cover a variety of topics including PCT training, building an IP strategy in an international market, overcoming country specific prosecution requirements, and the impacts of changes in patent law. 

Day one of the Global IP Conference will include multiple sessions focused on global strategy, international filing and docketing procedures, and practices specific to the EPO. On day two, Carl Oppedahl, WIPO PCT consultant, will lead training on advanced PCT topics.

When:  Tuesday April 10 - Wednesday April 11, 2018  |  9:00 AM - 4:30 PM
Registration begins at 8:00 AM

Where:  Embassy Suites by Hilton Minneapolis Downtown  |  12 South 6th St, Minneapolis, MN 55402