AIPLA has presented the following programs in 2009:
CLE INFO: AIPLA only requests CLE credit for the live version of these Online Programs. Please note that CLE on recorded programming is limited. Each state is different and some states do not recognize “self-study” since it is not a live program. You will need to contact your state bar(s) for specific rules.
1. Practicing Before the USPTO in Today’s Market
Wednesday, January 14, 2009: 12:30 - 1:30 pm EST
This program addressed the following topics:
· the anticipated operation of the annual practitioner maintenance fee
· information about FDIC coverage of fiduciary accounts
· ethical implications for closing law firms
· implications of bankruptcy on the USPTO deposit account
· compliance with the USPTO Conduct Code and new disciplinary procedures and processes.
Presented by:
Harry Moatz
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2. Advising Clients on Procuring and Using Insurance to Address Intellectual Property Lawsuits
Wednesday, February 4, 2009: 12:30 - 2:00 pm EST
A number of new policies directly cover a range of intellectual property lawsuits in forms of insurance styled as multimedia/internet/cyberspace policies. Many insurance brokers may not appreciate their benefits or be familiar with their provisions. Absent, procurement of such coverage existing Commercial General Liability programs may respond to a number of intellectual property claims, especially those addressing copyright and trade dress or the amorphous claims for “slogan” infringement. Coverage under such policies may not be limited to the enumerated intellectual property lawsuits. Other causes of action for unfair competition, interference or related claims asserted in complaints or counterclaims may trigger a defense funding the entire litigation. These and other dynamic aspects of the interaction between insurance and intellectual property claims was focused on during this seminar.
Presented by:
Kim Cauthorn
David Gauntlett
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3. Due Diligence and Indemnity Clauses
Wednesday, March 4, 2009: 12:30 - 2:00 PM Eastern
A “patent indemnity” clause, just like a general warranty, serves to allocate risks between purchaser and seller. A successful suit by an inventor or patent proprietor can have significant economic consequences for the buyer of a product. This program focuses on comprehensive consideration of the risks that must be allocated and provides information for careful drafting of a patent indemnity article.
Due diligence is of critical importance in any investment, merger, or acquisition decision as intellectual property is often a company’s single most valuable assert. This program also provides insight into performing due diligence on intellectual property aspects and reporting findings in a meaningful manner.
Presented By:
Alan Kasper, Sughrue Mion, PLLC
Charles Calkins, Kilpatrick Stockton
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4. Recoveries in IP Litigation - Hotspots and Trends in Copyright, Trademark, and Patent Damages
Wednesday April 1, 2009: 12:30 - 2:30 PM Eastern
This session will overview damages in copyright cases, monetary awards under the Lanham Act, patent damages and related new developments. The speakers will discuss how to gather and present evidence of damages; the effects of a willfulness finding on monetary award for infringement or false designation claims; working with experts in establishing or defending against damages claims and the court’s application of the Lanham Act’s statutory damage provisions for claims of cyber squatting and counterfeiting.
Presented By:
Michael Keyes
Robert Payne
Marc Reiner
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5. Initial Considerations in Seeking Trademark Protection
Wednesday May 6, 2009
This online seminar offers a preview of a couple of topics from, "The First Annual Trademark Boot Camp" occurring on June 17, 2009, in Alexandria, VA. This online program will provide insights from two very experienced attorneys for identifying marks for registration and preparing trademark applications and will be particularly beneficial to new or infrequent trademark practitioners.
Topics include:
• Trademark Selection And Screening;
• Establishing Rights In A Trademark; and
• Limitations On Acceptable Trademarks.
Presented By:
Michael Ballard
Richard Gilmore
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6. Tips and Strategies for Using the Patent Prosecution Highway
Wednesday June 3, 2009
This online seminar will present an overview of the Patent Prosecution Highway initiatives currently underway between the patent offices of the United States and other participating countries, including the EPO, Canada, Japan, Korea, Australia, and others. The speakers will discuss a brief history of the Patent Prosecution Highway and current options under this initiative for accelerated patent prosecution procedures. The speakers will also provide tips and strategies for harnessing the speed of the Patent Prosecution Highway in your practice.
Presented By:
Nick Godici
Esther Kepplinger
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7. "Shall We Dance?": Confidentiality, Ethical Obligations and IP-Related Aspects of the Opening Stages of M&A Activity
Wednesday July 1, 2009
When IP lawyers look at other people's businesses with an eye toward buying a company or a division or a group of patents, lawyers frequently face conflicting obligations that raise ethical and operational dilemmas. Lawyers often work subject to confidentiality agreements, a.k.a. a Non-Disclosure Agreements (NDAs), that may present difficult choices between ethical duties and client benefits. The speakers designed this program to help lawyers avoid common pitfalls in evaluations under NDA’s and compliance with various obligations. The program aims to help lawyers tap dance gracefully around conflicting obligations under multiple NDAs, liens and out-licenses, IP coverage of existing and nearly developed products, an d other clearance issues. NDA's commonly form an integral part of the strategic consideration in early stages of a business combination (or M&A) situation. NDA’s facilitate exploratory discussions and preliminary due diligence. On the other hand, NDA's can place lawyers and their clients in situations of conflicting obligations. This program will discuss provisions typically included in NDAs and how they may surprise you.
Presented By:
Jerry Fellows
Andrew Lowes
Stanton Weinstein
Jeffrey Wolfson
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8. Updates and Strategies for PCT Searching and Searching Authorities
Wednesday August 5, 2009
This seminar will explore the insights of two very experienced outside counsel on recent developments and trends in PCT searching options and strategies, including topics such as:
- A comparison of the available ISA options for U.S. applicants on the basis of cost, timeliness, quality, and subject matter capability, including supporting statistical data;
- Strategic analysis of when to select a particular one of the ISAs.
- Helpful hints on how to best make use of the ISR and Written Opinion.
- An introduction to and explanation of the new optional Supplementary International Search (SIS); and
- A detailed examination of SIS procedures and an analysis of the impact and benefits of the SIS
Presented By:
Jay Erstling
Samson Helfgott
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9. Subject Matter Eligibility-The Changing Landscape
Wednesday September 2, 2009
This 90-minute program will include the following topics:
- Part I: Expansion of subject matter eligibility from about 1980 to 2005. Overview of SCOTUS cases including Chakrabarty and Diehr, as well as leading CAFC cases including Alappat and State Street Bank.
- Part II: Contraction of subject matter eligibility over the past few years. In depth discussion of recent relevant cases including SCOTUS statements in LabCorp. v. Metabolite and AT&T v. Microsoft. In addition, we will review CAFC cases leading to the current Machine-or-Transformation test announced in Bilski. Cases to be discussed will include In re Nuijten, In re Comiskey, In re Bilski, Classen Immunotherapies, Inc. v. Biogen IDEC, Ariad Pharmaceutical v. Eli Lilly, and Prometheus Lab v. Mayo Collaborative. This Part II will also consider the fallout from the CAFC’s opinion in Bilski. Here, we will consider U.S. district court cases as well as BPAI Cases.
- Part III of the program will provide an overview of international perspectives, and
- Part IV will cover practice points suggested by the presenters. Q&A will also be provided.
Presented By:
Michael Stein
Warrene Woessner
10. Implications of In Re Bose Corporation Decision
September 16, 2009
On August 31, the Federal Circuit issued its much anticipated decision in In Re Bose Corporation, reversing cancellation of the WAVE mark by the Trademark Trial and Appeal Board on the ground of fraud. AIPLA is pleased to provide a seminar with two very experienced trademark practitioners discussing the ramifications and practical pointers in light of this decision. Susan Hightower is the Senior Associate with Pirkey Barber who argued AIPLA’s amicus brief during oral argument In Re Bose Corporation. Linda McLeod, a former Administrative Trademark Judge at the TTAB, is a Partner with Finnegan.
Presented By:
Susan Hightower
Linda McLeod
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11. Continuation and RCE Practice: Present and Future Tips
October 21, 2009
In the USPTO once examination has been closed by the Examiner (i.e. either allowed or finally rejected), there are still various options available for continuing prosecution. These options include a request for continued examination (“RCE”) and a continuing application. There are three types of continuing applications: continuation applications, divisional applications, and continuation-in-part applications (CIPs). We will explore when you should take advantage of these options to continue prosecution and how you can use them to best serve the needs of your client. With the threat of changes to RCE and continuing application practice we will also explore what you should be considering.
Presented By:
George Wheeler
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12. Patent Prosectution Tips From a Litigator's Point of View
November 4, 2009
Today, more than ever, it is important to avoid pitfalls in U.S. patent application drafting and prosecution that devalue the subsequently issuing U.S. patent. In this program, Tom Irving and Robert Sloss, two seasoned patent litigators, will identify some of those pitfalls to avoid in patent prosecution. They will also discuss how decisions made in patent prosecution can adversely affect subsequent litigation, and will offer suggestions on how prosecutors can make the lives of litigators easier.
Presented By:
Thomas Irving
Robert Sloss
13. Ethical Issues with Email and Other Electronic Communications
December 2, 2009
Technology has made communicating with prospective clients, clients, opposing counsel, and the public easier than ever. Social networking sites, for example, allow lawyers to communicate with "friends" and the public. Blogs allow for discussion. E-mail, text, and other forms of electronic communication abound, and new avenues are being created and used by lawyers every day. This seminar analyzes the ethical issues that arise from technology, including issues relating to conflicts of interest, confidentiality, privilege loss, and other issues.
Presented By:
David Hricik
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