Fundamentals of IP & 20th Annual Rocky Mountain IP Institute Bundle
IP Institute | June 2-3, 2022
After two virtual years, the Rocky Mountain Intellectual Property Institute is back at the Westin – Westminster. Attend the premier forum for bringing together intellectual property professionals from across the US and beyond. Covering the spectrum of the IP practice, hear updates from national and international IP and tech law experts.
- Choose from four tracks: Patents/Patent Litigation, Trademarks/Copyrights, Licensing, and Transactional/E-Commerce
- Learn from IP and tech experts from across the country, Kathi Vidal, Director of the United States Patent and Trademark Office
- Catch up with old friends, expand your network, and rub shoulders with some of the brightest minds in IP and technology law
IP Fundamentals | June 1, 2022
Dig into the nuts and bolts, or get a refresher on patent, trademark/copyright, and licensing. The basics, taught by best-in-class instructors.
Hotel Information
Westin Westminster Hotel, 10600 Westminster Blvd. Westminster, CO 80020
CBA-CLE has reserved a block of rooms for attendees. Room rates start at 179.00 plus applicable taxes and fees. To receive the group room rate, please indicate that you are a guest of the Colorado Bar CLE IP Institute when you make your reservation.
Based on availability, rooms are being held at the conference rate until May 20, 2022.
Reservations will be accepted over the phone or online at https://www.marriott.com/event-reservations/reservation-link.mi?id=1644623555133&key=GRP&app=resvlink
All reservations will require a credit card guarantee, and a deposit equal to one night of lodging is due at time of booking. The balance is due at check-in. Reservations cancelled after May 18, 2022 will forfeit the deposit equal to one night’s room and tax.
Cancellations: If you are unable to attend, please notify CBA-CLE by May 24, 2022, and we will gladly refund your tuition in full or apply your tuition to the webinar or home study. Cancellations after May 24, 2022, will be refunded less a $150 cancellation fee.
Home studies will be available approximately 2-3 weeks following the live program.
For your own safety, the safety of others, and in an effort to provide everyone with the most rewarding in-person meeting and event experiences possible, we request that you attend a CBA, DBA, or CLE meeting or event only if you have been fully vaccinated. Mask wearing is up to personal preference and comfort level. Masks may be required in some clinic settings. Please be cognizant and understanding of others’ preferences and courteous to all attendees.
Depending on CDC and/or state or local health guidelines, a rise in COVID-19 cases, or other circumstances that may threaten the well-being of our attendees, CBA-CLE reserves the right to convert to a fully virtual event.
If disability accommodations or special assistance are needed, please contact us at [email protected]. Requests must be made at least two weeks prior to the scheduled program.
The program will be submitted for CLE accreditation in Colorado. If you need to seek accreditation in another state, please review the process and requirements for that individual state. CBA-CLE staff can provide a Uniform Certificate of Attendance, and it is the attendee’s responsibility to complete the accreditation outside of Colorado.
Thank you to our 2022 Sponsors!
Presenting
Cooley LLP
Holland & Hart LLP
Kilpatrick Townsend & Stockton, LLP
King & Spalding LLP
Merchant & Gould P.C.
Perkins Coie LLP
Platinum
Arnold & Porter, LLP
Baker Botts, LLP
Bird & Bird
Dorsey & Whitney
Faegre Drinker Biddle & Reath LLP
Greenberg Traurig
MDD Forensic Accountants
Murgitroyd
Setter Roche Smith & Shellenberger LLP
Sheridan Ross P.C.
WilmerHale
Young Conaway Stargatt & Taylor, LLP
Gold
Armstrong Teasdale LLP
Black Hills IP
EIP US LLP
Lewis Roco
Kutak Rock
Polsinelli
Seed Intellectual Property Law Group LLP
Smart & Biggar LLP
Silver
CBA-CLE Books
Haynes and Boone, LLP
PatPro, Inc.
TT Consultants LLC
Bronze
Brownstein Hyatt Farber Schreck LLP
Snowmass Tourism
Fundamentals
Wednesday, June 1, 2022
9:00 am
Registration and Refreshments
9:40 am
Welcome Remarks
Presented by Mollybeth (Molly) R. Kocialski, Esq., Director, Rocky Mountain Regional Office, United States Patent and Trademark Office (invited)
9:45 – 10:55 am
Basics of Claims Drafting and Prosecution, and Patent Application Drafting
- Increased importance of performing good “prior art” searches
- Patentable subject matter (In Re Bilski and 2019 Patent Eligibility Guidance)
- Drafting the specification and claims
- Overview of the patent prosecution process
- Disclosure obligations and IDS management
- Examiner interview
- Accelerated prosecution
- Related applications and genealogy issues
Presented by Mollybeth (Molly) R. Kocialski, Esq., Director, Rocky Mountain Regional Office, United States Patent and Trademark Office (invited), Chirag Patel, Esq., Holzer Patel Drennan, and Monica Shin, United States Patent and Trademark Office
11:00 am – 12:15 pm
Basics of Trademark Protection and Policing
- Trademark function and types of marks
- Trademark clearance obligations, methods and strategies
- Acquisition of trademark rights through use and registration
- Overview of the trademark registration process
- Maintaining registration rights
- Enforcing trademark rights
Presented by H. Michael (Mike) Drumm, Esq., Drumm Law LLC and Charlene M. Krogh, Esq., Dorsey & Whitney LLP
12:15 – 1:30 pm
Lunch on your own
1:30 – 3:00 pm
Anatomy of Technology Licenses
- Defining the scope of the license – usage, territory, time and updates
- Royalties – different structures and audits
- Warranties in licensing – implied and express
- Protecting the exchange of confidential information – employee issues and trade secrets
- Remedies on breach – financial liability and specific performance
- Indemnity – scope of obligation, exclusions, mechanics, remedies/triggers
- Limitation of liability – forms liability and failure of essential purpose
Presented by Victoria L. Donovan, Esq., and Heather Tilley, Esq., Kutak Rock LLP
3:00-3:10 pm
Networking and Refreshment Break
3:10 – 4:00 pm
Copyright Law
- What is copyright?
- The copyright registration system
- Licensing and the exploitation of copyrights
- Copyright infringement and fair use
Presented by Shirin Chahal, Esq., Howard O. Bernstein, P.C., and David (Dave) Ratner Esq., Creative Law Network LLC
IP Institute
Day 1 - Thursday, June 2, 2022
7:45 – 9:15 am
Continental Breakfast
Sponsored by Sheridan Ross P.C.
8:45 – 9:00 am
Welcoming Remarks
Extended by Nathaniel T. Trelease, Esq., Program Chair, WebCredenza, Inc.
9:00 – 9:50 am
The United States, China, IP: The New Cold War?
Presented by Mark Cohen, Esq., Berkeley Law, Andrei Iancu, Esq., Irell & Manella LLP, Hon. Randall Rader, The Rader Group PLLC, and Terry Rea, Esq., Crowell & Moring LLP
9:50 – 10:05 am
Networking Break
Sponsored by Murgitroyd
10:05 – 10:55 am
Breakout Sessions
Track A: Patents & Patent Litigation
PTAB Update
Everything you need to know about what happened in the last year.
Presented by Hon. Melissa Haapala, Vice Chief Administrative Patent Judge, United States Patent and Trademark Office (invited), Kourtney Mueller Merrill, Esq., Perkins Coie LLP, and Michael Dulin, Esq., Polsinelli PC
Track B: Trademarks/Copyrights
Trademark Updates
Everything you need to know about what happened in the last year.
Presented by David Bernstein, Esq., Debevoise & Plimpton, LLP
Track C: Licensing
What IP Lawyers Need to Know About Criminal Law
- When to refer and how to work with law enforcement
- Computer hacking, espionage, trade secret theft
- Ethical considerations in making criminal referrals to law enforcement
- Prohibition on threatening criminal or prosecution for purposes of leverage in civil discussions
- Candor and related professional responsibility requirements
Presented by Anna Edgar, Esq., US Attorney's Office, Bryan Fields, Esq., US Attorney's Office, and John Walsh Esq., WilmerHale
Track D: Transactional/E-Commerce
CDA 2.0: How Litigation and Product Developments Impact Your Section 230 Protection
Learn about Section 230 trends in:
- Civil litigation, including lawsuits targeting social media and ad tech
- Product counseling, including how technological integrations can undermine platform defenses
- Regulatory scrutiny, including bipartisan interest in narrowing Section 230 protections
Presented by Stephanie Abrutyn, Esq., Grid, and Kathleen (Katie) McCarthy, Esq., King & Spalding LLP
11:00 – 11:50 am
Breakout Sessions
Track A: Patents & Patent Litigation
2021 Patent Law Update
Everything you need to know about what happened in the last year.
Presented by Mark Lemley, Esq., Stanford Law School
Track B: Trademarks/Copyrights
Copyright Updates
Everything you need to know about what happened in the last year.
Presented by Evan Rothstein, Esq., Arnold & Porter, LLP
Track C: Licensing
Licensing Update
Everything you need to know about what happened in the last year.
Presented by Jeff Dodd, Esq., Hunton Andrews Kurth, LLP
Track D: Transactional/E-Commerce
What Software Am I?
- A review of the different methods software can be delivered
- A summary of the key features for Downloadable Software
- A summary of the key features for Software as a Service
- A discussion of the big 3 terms of any software licensing – Warranty, Indemnification, and Limitation of Liability.
Presented by Bob Bowman, Esq., Catalyst Law Group, LLP, and Lisa Bowser, Esq., Cognizant
11:55 am – 1:25 pm
Luncheon Sponsored by Kilpatrick Townsend & Stockton, LLP
(Lunch is included with your registration. Please indicate on the registration form if you plan to attend.)
12:35 - 1:25 pm
NFTs: What Are They and Why Should We Care?
Presented by Megan Bannigan, Esq., Debevoise & Plimpton, LLP and Tobias Weas, Esq., Associate General Counsel, Brewers Collective
1:30 – 2:20 pm
Breakout Sessions
Track A: Patents & Patent Litigation
How To Get Your Patent Case Assigned to the Right Examiner
- How TRP changed the process?
- How CPC Routing works?
- What lawyers can do to route to AUs?
Presented by Thomas D. Franklin, Esq. Kilpatrick Townsend & Stockton LLP, David Le, Esq., United States Patent and Trademark Office (invited), and Jerry Lorengo, Esq., United States Patent and Trademark Office
Track B: Trademarks/Copyrights
NFTs Are Here to Stay
- NFTs Explained: What are NFTs and NFT platforms, what can they represent, how to get them and use them
- Overview of legal considerations – regulatory/securities and intellectual property
- Discussion of recent NFT projects and players, examples and current cases law and regulatory guidance
Presented by Catherine Lake, Esq., Dorsey & Whitney LLP, and Tiffany J. Smith, Esq., WilmerHale
Track C: Licensing
2022 Data Privacy & Security Update
Everything you need to know about what happened in the last year.
Presented by David Navetta, Esq., Cooley LLP
Track D: Transactional/E-Commerce
Managing Your IP Portfolio: The In-House Perspective
- Making the Go/No go decision on a filing, patent vs. trade secret
- Trademarks and branding strategies
- Deciding when and where to file (patent or trademark)
- How do you make the kill decision on old IP or unenforceable IP
- Managing outside counsel versus in house options and non-counsel contractors (i.e. translation and filing services)
Presented by Mark Bales, Esq., Deputy General Counsel, SomaLogic, Jessica Meyers, Esq., Microsoft, and Hathaway Pease Russell, Esq., Foley Hoag LLP
2:20 – 2:40 pm
Networking Break
Sponsored by WilmerHale
2:40 – 3:30 pm
Breakout Sessions
Track A: Patents & Patent Litigation
PTO Technology Center Director – Trends – Business Methods, Crypto, Biosciences
- Trends in examination
- Upcoming changes to examination
- When applicants should call TC directors
Presented by Jerry Lorengo, Esq. and Nestor Ramirez, Esq. United States Patent and Trademark Office (invited)
Moderated by Wayne Stacy, Esq., Berkeley Center for Law & Technology
Track B: Trademarks/Copyrights
IP and College Athletes: Monetizing Your Way
- NIL compensation in college sports: what is it and how did we get here?
- Using IP to build an athlete’s brand
- Winners and losers in the monetization game
- The future of NIL compensation and college sports
Presented by Amy Kramer, Esq., Greenberg Traurig LLP, and Ryan D. Levy, Esq., Patterson Intellectual Property Law, P.C.
Track C: Licensing
NFTs and Web3: A Deeper Dive
- Critical Intellectual Property considerations concerning NFTs
- Considerations for Decentralized Autonomous Organizations (DAOs)
- Community Ownership considerations
Presented by David Rodman, Esq., The Rodman Law Group LLC
Track D: Transactional/E-Commerce
Diversity & Intellectual Property Practice, Why It’s Important
- Initiative in IP practitioner space around EDI
- EDI in the inventor space
- Why EDI is important?
Presented by Philip G. Hampton, II, Esq., Polsinelli PC, Joe Moonjely, Esq., BASF, and Shanta Zimmer, MD, University of Colorado, Anschutz
Moderated by Mollybeth (Molly) R. Kocialski, Esq., Director, Rocky Mountain Regional Office, United States Patent and Trademark Office (invited)
Submitted for 1 EDI Credit
3:35 – 4:25 pm
Breakout Sessions
Track A: Patents & Patent Litigation
AI & Blockchain – How It Might Be Implemented in Agencies
- History of AI/Blockchain at USPTO/EPO
- Potential additional uses for AI/Blockchain at USPTO/EPO
- Current usage
Presented by Jerry Ma, Esq., United States Patent and Trademark Office (invited), Steven MacKenzie, Esq., Koch Industries, and Nelson Yang, MA,, United States Patent and Trademark Office (invited)
Track B: Trademarks/Copyrights
Soft IP Issues Surrounding Compositions and Sound Recordings
Presented by David Rosenberg, Esq., Twitch, and Kenneth Steinthal, Esq., King & Spalding, LLP
Track C: Licensing
Trade Secret Update
Everything you need to know about what happened in the last year.
Presented by James Pooley, Esq., James Pooley PLC
Track D: Transactional/E-Commerce
The CPA: Colorado’s Answer to Evolving Privacy Concerns
- Hot button privacy issues
- Colorado’s step toward addressing privacy concerns
- Key issues for public comment and rulemaking
Presented by Stevie DeGroff, Esq., Office of the Attorney General, Deborah Howitt, Esq., Dorsey & Whitney, LLP, and Jill M. Szewczyk, Esq., Office of the Attorney General
4:25 pm – 5:25 pm
IP Institute Wine Tasting Reception Sponsored by Cooley LLP
Take this time to network with distinguished faculty and colleagues. Included in your registration!
(Please note on the registration form if you plan to attend the wine tasting reception.)
5:30 – 7:30 pm
IP After-Hours Sponsored by King & Spalding, LLP
The fun continues offsite. Join Mike and Molly in the Westin hotel lobby at 5:25p for a short walk to Dave and Busters!
Day 2 - Friday, June 3, 2022
7:45 – 8:50 am
ChIPs Breakfast
Sponsored by King & Spalding, LLP
(Chiefs in Intellectual Property: www.chipsnetwork.org)
Attend and further the ChIPS mission of advancing and connecting women in technology, law and government, and learn about the ChIPs Colorado Chapter. SPACE IS LIMITED. Sign up early!
Featuring remarks by Kathi Vidal, Esq., Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (invited)
Solo/Small Firm Breakfast
Attend and discuss common problems and solutions with your solo, small firm colleagues. SPACE IS LIMITED. Sign up early!
Continental Breakfast
Sponsored By Baker Botts LLP
Continental Breakfast is included with your registration
9:00 – 9:10 am
Welcome Back Remarks
Extended by Nathaniel T. Trelease, Esq., Program Chair, WebCredenza, Inc.
CBA Leadership Remarks
9:10 – 10:00 am
A New Day at the USPTO: Now What?
Presented by Kathi Vidal, Esq., Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (invited)
Moderated by Sirena Rolfe, Tempus Hood Inc.
10:00 – 10:15 am
Networking Break
Sponsored by Dorsey & Whitney LLP
10:15 – 11:05 am
Breakout Sessions
Track A: Patents & Patent Litigation
Relationship Between IDS and Inequitable Conduct – The World We Live In and Should It Change?
- Current state of IDS requirements/usage/costs
- Current state of inequitable conduct in litigation
- Proposals for changing IDS requirements
Presented by Sarah Guske, Esq., Baker Botts, LLP, and Sandra Nowak, Esq., 3M
Track B: Trademarks/Copyrights
Trademark Modernization Act
- Overview of expanded letters of protest
- Ex parte expungement rules and statistics
- Ex parte examination, rules and statistics
Presented by Marc Levy, Esq., Seed IP, Amanda Marston, Esq., Holland & Hart LLP, and Hon. Mark Thurmon, Deputy Chief, United States Patent and Trademark Office, Trademark Trial and Appeal Board (invited)
Track C: Licensing
Data Protection in M&A
- Due Diligence – evaluating data assets, privacy and security policies and compliance
- Key acquisition agreement provisions
- Optimizing post-closing integration
Presented by Dustin Berger, Esq., Armstrong Teasdale LLP, and Camila Tobón, Esq., Shook, Hardy & Bacon L.L.P.
Track D: In-House
Current Issues in Cloud Computing
Presented by Peter Kinsella, Esq., Perkins Coie LLP
11:10 am – 12:00 pm
Breakout Sessions
Track A: Patents & Patent Litigation
The Future of Claims Drafting
- Anticipating the possible futures of statutory subject matter
- Anticipating the differences between the PTO and District Court treatment of 112 issues
- Anticipating missing prior art--the differences between PTO searches and litigation searches
Presented by Charlene Liu, Ph.D., Esq., Haynes and Boone, LLP, and Tarik Nabi, Ph.D., Esq., Merchant & Gould P.C.
Moderated by Kathleen Ott, Esq., Faegre Drinker Biddle & Reath LLP
Track B: Trademarks/Copyrights
IP After Death: Marvel, Reclaiming and Bequeathing IP
- The Congressional and legal landscape on terminating copyright transfers after death
- Marvel vs. the artists – a high-profile case study
- Is termination of your transfer valid? Anticipated outcomes and what you really need to know
Presented by Jared Briant, Esq., Faegre Drinker Biddle & Reath LLP, and Airina Rodrigues, Esq., Brownstein Hyatt Farber Schreck, LLP
Track C: Licensing
Incident Response Planning
Cybersecurity is a constant threat and all organizations need to have the right plans in place. Join us for this session to learn more about:
- Creating a cybersecurity incident response plan
- Understanding how to prepare your organization and where to start
- Identifying the key stakeholders and third parties
Presented by Christian Lee, Esq., Cooley LLP and Dan Nelson, Esq., CIPP/US, Digital Silence, Ltd.
Track D: In-House
Quick Hits:
Taxation of Online Sales (25 min)
- Nexus considerations for remote online sellers
- Sales taxability of software and similar services
- Options to fix potential indirect tax exposure and future compliance
Presented by Jay Forester, Esq., SALT Senior Manager, Plante Moran
SEC & Board Cybersecurity Updates (25 min)
- Evolving SEC disclosure rules and enforcement actions on cybersecurity for public companies and those considering an IPO
- Cybersecurity preparation in connection with an IPO, SPAC or M&A exit
- Board fiduciary duties relating to cybersecurity oversight
Presented by Jason Day, Esq., Perkins Coie LLP
12:05 – 1:10 pm
Luncheon Sponsored by Holland & Hart, LLP
(Lunch is included with your registration. Please indicate on the registration form if you plan to attend.)
12:20 – 1:10 pm
Ethics: Conflicts with Clients, Part 1
Presented by David Hricik, JD, Mercer University School of Law
Submitted for 1 Ethics Credit
1:15 – 2:05 pm
Breakout Sessions
Track A: Patents & Patent Litigation
Patent Litigation Venue Reform – Who Should Be Leading the Change: Congress or the Courts?
We've been talking about venue shopping and patent cases for twenty years. Has anything changed with prior reforms? Should we be looking at further reforms?
- Is venue shopping skewing patent litigation?
- Is the problem venue shopping or judge shopping?
- Should we also be talking about courts that are hostile to patent suits?
Presented by Jonas Anderson, Esq., American University, Honorable Kathleen O’Malley, Former Judge, United States Court of Appeals for Federal Circuit, and Brad Watts, Esq., Minority Chief Counsel of the Senate Judiciary Committee Subcommittee on Intellectual Property
Moderated by Lee Johnston, Esq., Haynes and Boone LLP
Track B: Trademarks/Copyrights
2022 Internet Law Year in Review
Everything you need to know about what happened in the last year.
Presented by Ian Ballon Esq., Greenberg Traurig, LLP
Track C: Licensing
AI – Privacy, Discrimination, and Ethics
- Ethical and accuracy considerations in building AI training sets
- Best practices for evaluating potential biases and inaccuracies with third-party AI tools
- Liability issues arising from misuse of AI tools
Presented by Vanessa Otero, Esq ., Ad Fontes Media and Lee Tiedrich, Esq., Duke Law
Submitted for 1 Ethics Credit
Track D: In-House
“Contract Technologies” & UPL
- What’s Market in commercial contracts
- Automating negotiation of NDAs
- UPL issues
Presented by Susan McGahan, Esq., AT&T, Thomas Spahn, Esq., McGuire Woods LLP, and Matt Spohn, Esq., Red Canary
Moderated by Ryan Arney, Esq., Nodal Law, LLC
Submitted for 1 Ethics Credit
2:10 – 3:00 pm
Breakout Sessions
Track A: Patents & Patent Litigation
Litigation – Enablement/Written Description Defenses and Attacks
- Evolving challenges to functional claiming
- Increasing enablement, written description, and indefiniteness challenges in the technology space
- Strategies for developing section 112 defenses in discovery
Presented by R. David Donoghue, Esq., Holland & Knight LLP, and Abby Parsons, Esq., King & Spalding LLP
Moderated by Benjamin S. Fernandez, Esq., WilmerHale
Track B: Trademarks/Copyrights
The Ubiquity of IP in an Omnimedia World
- What do tattoos, political campaigns and swear words have in common?
- How do you protect your IP when you go viral in a meme?
- What IP issues have arisen as a result of the rise of distance learning?
Presented by Alain Godement, Esq., Murgitroyd and Jessie L. Pellant, Esq., StudioIP
Track C: Licensing
Quick Hits: Just Enough to Be Dangerous
Family Law (25 minutes)
Presented by Alice Mansfield, Esq., Mansfield Family Law
DUI (25 minutes)
Presented by Joshua R. Landy, Esq., Ridley McGreevy & Winocur, P.C.
Track D: In-House
Foreign Corrupt Practices Act
Presented by John C. Anderson, Esq., Holland & Hart LLP, Seth DuCharme, Esq., Bracewell, and David Pitluck, Esq., Business & Securities Fraud Section, US Attorney's Office
3:00 – 3:30 pm
BEER Tasting Sponsored by Merchant & Gould, P.C.
Voir Dire Beer®
Infringement IPA®
Attorney Ale®
Lawyer’s Lager®
3:30 – 4:20 pm
Ethics: Conflicts Between Lawyers and Their Clients, Part 2
Presented by Thomas Spahn, Esq., McGuireWoods, LLP, and H. Michael (Mike) Drumm, Esq., Drumm Law LLC
Submitted for 1 Ethics Credit
Location Information
Westin Westminster Hotel
10600 Westminster Blvd
Westminster, CO 80020
Get directions
10600 Westminster Blvd
Westminster, CO 80020
Registration Fees
| Non Member | $1066.00 |
| CBA Member | $800.00 |
| CBA Intellectual Property Law Section Member | $640.00 |
| Copyright Society of the USA Member | $640.00 |
| ABA Intellectual Property Section Member | $640.00 |
| CLE BASIC Pass Holder | $496.00 |
| New Lawyer Edge Member | $400.00 |
| Public Service/Government | $400.00 |
| Paralegal/Legal Suppot Staff | $400.00 |
| Active Military | $400.00 |
| Public Service/Government (CBA Member) | $400.00 |
| CLE ELITE Pass Holder | $362.00 |
| Student currently enrolled in Law School | $211.00 |
- General Credits: 20.00
- Ethics Credits: 3.00
- EDI Credits: 1.00
To join the CBA or add a Section to your membership click