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A Unique New Program!

The AIPLA 2013 Mid-Winter Institute was a huge success
with the largest attendance in many years — 618 attendees, including guests! 
The speaker papers and presentations are available to attendees, who will also receive a DVD of the papers, presentations and any recordings in the next few weeks. We hope you enjoyed the new programming for the meeting.
If you did not fill out an evaluation form on-site, please take a moment to fill them out online:

Wednesday Session Handouts

CONCURRENT TRACKS 2:00 – 5:00 pm

TRACK 1 • Are You Ready? Strategies and Pitfalls under the America Invents Act

Grand Ballroom A-E, 2nd level

Moderator: Denise M. Kettelberger, Special Counsel, Faegre Baker Daniels, Minneapolis, MN (Bio)

Hear about the impending changes under the First-Inventorto-File provisions of the America Invents Act (AIA), examine the impact of the new fee schedule on fi ling strategies, and learn practical tips and strategies for making transitions to the new system. Take an in-depth look at practice under the new Patent Trial and Appeal Board (PTAB), the various post grant proceedings available under the AIA, and strategies for adapting to the changes that follow from these new options.

First-Inventor-to-File and Prior Art

Ready or Not, Here it Comes: Transitioning to First- Inventor-to-File and Understanding Prior Art under the AIA

When do you file? Obviously an early filing date is good, but if the invention is in development, it is a moving target. Learn about filing under the new system and the traps to avoid, the new 102, and strategies for showing derivation to remove a reference as prior art. Also hear about Third Party Submissions and how to draft them so the examiner will pay attention.

Alan J. Kasper, Partner, Sughrue Mion, PLLC, Washington, DC (Bio, Paper)

Practical Strategies under the New First-Inventor-to-File System from a Corporate Perspective

From a corporate perspective, what strategies can be used to get applications fi led quickly? How might internal processes need to change? What are the advantages and disadvantages to publishing first?  These issues will be discussed, along with the impact of the new fee schedule on fi ling strategies. Hear about record keeping, including how to prepare for a derivation defense. Thoughts on Third Party Submissions will also be provided.

Kevin H. Rhodes, Chief Intellectual Property Counsel, 3M, St. Paul, MN (Bio, Slides)

Managing the Impact of the New First-Inventor-to-File System on Private Practice

How does the move to a First-Inventor-to-File system impact private practice? How do you operate under a transitional dual system? Learn how to manage inhouse counsel expectations, understand the heightened awareness of malpractice issues, and obtain a private practice perspective on the impact of the new fee schedule on patent fi ling strategies.

Carol A. Marmo, Member, Eckert Seamans Cherin & Mellott, LLC, Pittsburgh, PA (Bio, Slides)

Post-Grant Proceedings

Are You Ready to Practice Before the New PTAB?

Discuss the different post grant proceedings available under the AIA, as well as the differences between litigation in the courts and the PTAB. This session will also address practice before the Patent Trial and Appeal Board (PTAB), best practices for preparing petitions and replying to them, what evidence is required, the ins and outs of motion practice, taking testimony and handling confidential information.

Bryan K. Wheelock, Principal, Harness Dickey & Pierce, PLC, Clayton, MO (Bio, Paper)

Advantages and Disadvantages of Post Grant Proceedings for Patent Owners

From the patent owner perspective, explore the pros and cons of the different post grant proceedings available under the AIA, including Post-Grant Review, Inter Partes Examination, and Supplemental Examination. Hear about the proposed fee schedule, filing requirements, the proposed procedures and complexity of practice before the PTAB, as well as estoppel issues.

David M. Weirich, Associate General Counsel, Oral Care, Hair Care and Beautronics, The Procter & Gamble Company, Cincinnati, OH (Bio, Paper, Slides)

Advantages and Disadvantages of Post Grant Proceedings for Patent Challengers

From a patent challenger perspective, learn the pros and cons of the different post grant proceedings available under the AIA, including Post-Grant Review, Inter Partes Examination, and Supplemental Examination. Hear about the proposed fee schedule, filing requirements, the proposed procedures and complexity of practice before the PTAB, as well as estoppel issues.

Philip S. Johnson, Chief Patent Counsel, Johnson & Johnson, New Brunswick, NJ  (Bio, Paper, Slides)


TRACK 2 • Intellectual Property Essentials for Business Leaders

Florida Ballroom IV-VI, 2nd level

Moderator: Phillip W. Barnett, Managing Director, Phil Barnett, LLC, Tampa, FL (Bio, PaperPaper - Primer)

Did you ever think “what exactly is Intellectual Property?”  Everyone says it is at the center of today’s world-wide economy. But, what are the essentials that a business leader must know to understand how their own, and their competitors’, intellectual property works? Experts from leading companies, universities and law fi rms will explain the basics of intellectual property necessary for a business leader to understand and utilize a company’s intellectual property assets.

The Crucial Role of IP in Our Knowledge-Based Economy

The Story on Copyrights

Learn the basics of copyrights, including: what copyrights protect and what rights a copyright owner has, how copyrights are obtained and whether a copyright registration is required and why, how long copyrights last, and the geographic scope of copyrights. This session will also address copyright ownership issues, including “work for hire” considerations, what constitutes copyright infringement, and the fair use exception to copyright infringement.

Kevin Tottis, Law Offices of Kevin Tottis, Chicago, IL (Bio, Paper, Slides)

Trademarks and Protecting Your Brand

This session will focus on basics of trademarks, including: what trademarks protect, types of trademarks, how long trademarks last, and what rights and obligations a trademark owner has, including differences between common law and federally registered trademarks and between US and foreign trademarks. Learn how trademarks are obtained and maintained, and the steps in the trademark prosecution process, including postregistration proceedings. Finally, learn how to enforce trademarks, remedies, and possible defenses.

Jeremy Kaufman, Vice President of Intellectual Property Trademarks, Fox Group Legal, Los Angeles, CA

Paul D. McGrady Jr., Winston & Strawn, LLP, Chicago, IL (Bio)

Patents: The Essentials of a Vital Asset

Learn what a patent is and what it protects, the types of patents (utility, design, and plant), anatomy of a patent, and how to read the patent document. Hear about the patent prosecution process, post-issue maintenance, and statutory bars to acquiring patent protection. The speakers will also discuss patent enforcement, including various forums for litigating patents (e.g., Federal Court, International Trade Commission), the importance of patent claims and prosecution history, how infringement is defined, and geographic scope of US patents and international rights.

Randi L. Karpinia, Sr. Patent Operations Counsel, Motorola Solutions, Inc., Ft. Lauderdale, FL (Bio, Paper)

Scott J. Pivnick, Alston & Bird, LLP, Washington, DC (Bio, Slides)

Keeping the Family Jewels Safe—Trade Secrets, the What, When, How, and Why

What is considered a trade secret? How can I protect my most valuable trade secrets in this age of cybertheft? Learn the basics of trade secrets, including how trade secrets are defi ned, how they are best protected against theft by both trusted insiders and outside computer hackers.

Andrew Ubel, Deputy General Counsel–Chief Intellectual Property Counsel, Valspar Corporation, St. Paul, MN (Bio, Paper)

How Do the Different Kinds of IP Work Together to Protect My Business?

What are the overlaps and differences between the various types of IP? How do you determine which type(s) of IP protection may be right for your product? This session will compare and contrast trade secrets, patents, copyrights, design patents, and trade dress.

Valerie McDevitt, Assistant VP, Patents & Licensing, University of South Florida, Tampa, FL (Bio)

To License or Not to License? That is the Question

Learn the basics behind licensing of patents, trademarks, copyrights and trade secrets, the role the licensing practice can play in increasing business revenue, and cross-licensing in settling infringement suits.

Wendy Zimbone, Assistant Director, Office of Technology Licensing, University of Florida, Gainesville, FL (Bio, Paper)



 We look forward to seeing you May 1-3 in Seattle, WA for the 2013 Spring Meeting!