Fundamentals of IP and 19th Annual Rocky Mountain IP & Technology Law Institute- Virtual
Co-sponsored by the Intellectual Property Law Section of the Colorado Bar Association, Stanford Law School, Stanford Program in Law, Science and Technology, the Copyright Society of the USA, and the ABA Section of Intellectual Property Law, and in cooperation with the Rocky Mountain Regional Office of the U.S. Patent and Trademark Office
Fundamentals | June 2, 2021
Dig into the nuts and bolts, or get a refresher with patent, trademark/copyright, and licensing basics, taught by best-in-class instructors. Register for the day on its own or bundle with the institute curriculum. The premier forum for bringing together intellectual property professionals from across the US and beyond. Hear updates from our faculty of national and international IP and tech law experts from across the spectrum of the IP practice.
Institute | June 3 & 4, 2021
Not just another endless series of Zoom meetings, our dynamic online conference is refreshingly engaging with online discussions, real-time speaker interface, and interactive networking events — all from the comfort and convenience from your home or office.
- Choose your own track: Patents/Patent Litigation, Trademarks/Copyrights, Licensing, and Transactional/E-Commerce
- Learn from Colorado’s premier IP and tech experts from across the country such as Circuit Judge Raymond Chen and Colorado Attorney Phil Weiser
- Network with other IP professionals at interactive virtual social events
If special accommodations 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.
SPECIAL THANKS TO OUR 2021 SPONSORS
Presenting
Cooley LLP
Holland & Hart LLP
Kilpatrick Townsend & Stockton, LLP
King & Spalding
Merchant & Gould P.C.
Perkins Coie
Polsinelli
Platinum
Arnold & Porter
Baker Botts
Goodwin
Greenberg Traurig, LLP
inventorship
Murgitroyd
Setter Roche Smith & Shellenberger LLP
Sheridan Ross PC
WilmerHale
Gold
Armstrong Teasdale LLP
Dorsey & Whitney LLP
EIP US LLP
Faegre Drinker
Haynes and Boone, LLP
KUTAK ROCK LLP
Seed Intellectual Property Law Group LLP
Sherman & Howard, L.L.C.
Smart & Biggar
Young Conaway Stargatt & Taylor, LLP
Silver
Baker Tilly
CBA-CLE Books
CBA-CLE Pass
PatPro, Inc.
Bronze
Brownstein Hyatt
MDD Forensic Accountants
J A Kemp
Thomson Reuters
TT Consultants
Sponsorship opportunities with exciting benefits are still available; contact Melissa Higham at [email protected]
Fundamentals Agenda
9:30 - 9:35 am
Welcoming Remarks
Presented by Mollybeth (Molly) R. Kocialski, Esq., Director, Rocky Mountain Regional Office, U.S. Patent and Trademark Office, Denver, CO
9:35 am – 10:50 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, U.S. Patent and Trademark Office, Denver, CO, and Matthew Avery, Esq., Baker Botts LLP, San Francisco, CA
10:50 - 11:05 am
Break
11:05 am – 12:20 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 Mike Drumm, Esq., Drumm Law LLC, Denver, CO, and Dana P. Jozefczyk, Esq., Associate General Counsel, US Olympic & Paralympic Committee, Colorado Springs, CO
12:20 pm – 1:10 pm
Lunch Break
1:10 pm – 2:40 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., Kutak Rock LLP, Denver, CO and Matt McKinney, Esq., Koenig, Oelsner, Taylor, Schoenfeld & Gaddis PC, Denver, CO
2:40 pm -2:55 pm
Break
2:55 pm – 3:45 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., The Law Offices of Daniel T. Goodwin, Broomfield, CO, and Dave Ratner Esq., Creative Law Network, Denver, CO
3:45 pm
Adjourn
IP Institute Agenda
Wednesday, June 2, 2021
4:00-5:30 pm
Wine Tasting with Blanchard Family Wines
Sponsored by Cooley, Holland & Hart, Kilpatrick Townsend, King & Spalding, Merchant & Gould, Perkins Coie and Polsinelli
Kick off your IP Odyssey with a virtual wine tasting, led by Colorado’s Blanchard Family Wines. Whether you are a seasoned oenophile or rarely dabble in wine, you will enjoy a casual tasting of Sonoma County wines, and learn to listen to your own palate.
Our virtual networking lounge is the perfect place to catch up with old friends and meet new ones. Sit in small groups, visit 1:1, or table hop around the room. Be sure to sign in ahead of time, and upload your photo, contact info and socials to maximize your networking.
Thursday, June 3, 2021
8:45-9:00 am
Welcome and Introduction
Presented by Nathaniel Trelease, Esq., WebCredenza, Inc., Program Chair
9:00-9:50 am
Fireside Chat with Hon. Raymond Chen, United States Court of Appeals, Federal Circuit
Presented by Hon. Raymond T. Chen, United States Court of Appeals, Federal Circuit
Moderated by Lauren Dreyer, Esq., Baker Botts, LLP, and Wayne Stacy, Esq., Executive Director, Berkeley Center for Law & Technology
9:50-10:05 am
Stretch Break
10:05-10:55 am
Breakout Sessions
Track A: Patents/Patent Litigation
Patent Law Update
A review of patent law hot topics from the last year.
Presented by Mark Lemley Esq., Stanford University Law School
Track B: Trademarks/Copyrights
What is your Intent? Bona Fide Intent to Use
A discussion of best practices for showing bona fide intent, based on case studies. Determine when your intent is bona fide, and when less can be more.
Presented by Amy Kramer, Esq., Greenberg Traurig, LLP; and Hon. Mark Thurmon, Deputy Chief Administrative Trademark Judge, Trademark Trial and Appeal Board
Track C: Licensing
SEP Licensing in the Automotive Sector
- Review of emerging issues in mobility space
- 5G battles in autonomous vehicle space
- Updates on key cases and litigation around the world
Presented by Richard Vary, Esq., Bird & Bird
Track D: Transactional/E-Commerce
Commercial Drafting for Privacy and Information Security: Balancing Data-Rights with Regulatory Compliance
Presented by Chuck Schwab and Kelsey Velemirovich, Catalyst Law Group
11:00-11:50 am
Breakout Sessions
Track A: Patents/Patent Litigation
Patent Prosecution Update
Update of Patent and Trade Office Case Law.
Presented by Karam Saab, Esq., Kilpatrick Townsend, LLP; and Michele Washington, Esq., Snell & Wilmer, LLP
Track B: Trademarks/Copyrights
2020 Trademark Update
A review of trademark hot topics from the last year.
Presented by David Bernstein, Esq. Debevoise & Plimpton, LLP
Track C: Licensing
Data Localization – Cross-Border Data Transfer in a Post-Schrems II World
- Update on Schrems II developments
- Using model clauses
- Transfer impact assessments
Presented by Liz Harding, Esq., Polsinelli, P.C.; and Patrick Van Eecke, Esq., Cooley LLP
Track D: Transactional/E-Commerce
Data Breach – A War Game
- Scenario-based breach response exercise
- Multi-disciplinary perspective
- Audience participation and decision-making
Presented by Erin Locker, Esq., Koenig, Oelsner, Taylor, Schoenfeld & Gaddis PC; and David Navetta, Esq., Cooley, LLP
11:50am -12:10 pm
Lunch Break (Grab your lunch)
12:10-12:20 pm
Remarks from CBA Leadership
12:20 – 1:10 pm
Ethics Potpourri
Presented by David Hricik, J.D., Mercer University School of Law
Submitted for 1 Ethics Credit
1:10 – 1:30 pm
Networking Break
Connect with colleagues and expand your professional circle in our virtual
networking lounge where you can join a table or couch via video for small-group or 1:1 conversations. Pop in for a few minutes or stay a while.
1:30-2:20 pm
Breakout Sessions
Track A: Patents/Patent Litigation
PTAB Update
Presented by Ethan Bell, Esq., Faegre Drinker Biddle, LLP, Lori Gordon, Esq., King & Spalding, LLP, and Kirstin Stoll-DeBell, Esq., Faegre Drinker Biddle, LLP
Track B: Trademarks/Copyrights
Trademark Bullies: Taking Enforcement Too Far
- The Difference Between Bullying and Enforcement
- Recent Examples of Bullying Practices
- Best Practices for Dealing with Trademark Bullies
Presented by Stephen J. Horace. Esq., Michael Best & Friedrich LLP; Ryan Levy, Esq., Patterson Intellectual Property Law, PC; and Chad Nitta, Esq., Kutak Rock, LLP
Track C: Licensing
Telehealth Pre and Post Public Health Emergency
- Telehealth Pre and Post COVID-19
- Regulatory requirements, including technology requirements
- Reimbursement criteria
- Risk factors
Presented by Joelle Wilson, Esq., Polsinelli PC
Track D: Transactional/E-Commerce
M&A: Understanding the IP Value Drivers & Executing the Deal
- Bridging Deal Objectives & IP Assets
- Optimizing Resources Across the Transaction Lifecycle
- Tips For Addressing Key IP Issues
Presented by Elizabeth (E.B.) McCusker, Esq., McKesson Corporation and Hao Wang, Esq., Holland & Hart LLP
2:20-2:40 pm
Networking Break
Connect with colleagues and expand your professional circle in our virtual
networking lounge where you can join a table or couch via video for small-group or 1:1 conversations. Pop in for a few minutes or stay a while.
2:40-3:30 pm
Breakout Sessions
Track A: Patents/Patent Litigation
IP in China
What you need to know for today, what you should plan for tomorrow.
Presented by Ken Chang, Esq., Adsero IP, LLP, Amy Hsiao, Esq., Adsero IP, LLP, and Elaine Wu, Esq., United States Patent and Trademark Office
Track B: Trademarks/Copyrights
Behind the Curtain: How Does the PTO’s Trademark System Work?
- The 1’s and 0s behind the TESS and TSDR System
- More than just a name
- Practical uses of the trademark data
Presented by Mike Drumm, Esq., Drumm Law, LLC; and TBD, United States Patent and Trademark Office
Track C: Licensing
Patent Updates for a Non-Patent Practitioners
- Updates on Oracle v. Google and software
- Landscape of international SEP / FRAND enforcement and rate setting
- Other patent-focused issues you should be thinking about!
Presented by Gene Bernard, Esq., Kilpatrick, Townsend, & Stockton, LLP; and David Donoghue, Esq., Holland & Knight, LLP
Track D: Transactional/E-Commerce
IP Licensing – Innovation, Monetization and Protection
- Initial considerations in forming an IP license
- Ownership strategies
- Fee structuring
- Enforcement activities
Presented by Andy Whitehead, Esq., Armstrong Teasdale, LLP
3:35–4:25 pm
Breakout Sessions
Track A: Patents/Patent Litigation
Techniques for Drafting Patent Applications to Defend against 101
- Claim drafting techniques
- Specification drafting techniques
Presented by Gina Cornelio, Esq., Dorsey & Whitney, LLP; and Roderick O’Dorisio, Esq., , Perkins Coie, LLP
Track B: Trademarks/Copyrights
Quick Hit Duo (25 minutes each)
Ornamental Trademarks
- What makes a mark ornamental?
- How to avoid an ornamental refusal
Presented by Taryn Elliott Esq., Polsinelli; and Brent Johnson, Esq., Berg Hill Greenleaf Ruscitti, LLP
Concurrent Use Registrations
- When to use a concurrent use registration
- What are the consequences if you don’t
Presented by Andrea LaFrance, Esq., Brownstein Hyatt Farber Schreck, LLP; and Airina Rodrigues, Esq. Brownstein Hyatt Farber Schreck, LLP
Track C: Licensing
Navigating the Evolving Deidentification and Anonymization Landscape: Perspectives from Three Privacy Professionals
Every business is holding onto some kind of data, and most are looking to unlock untapped value in it. However, not all data uses are equally feasible based on how the existing legal landscape overlaps with available technical solutions, and the definition of what is covered as “personal information” under various privacy laws is ever-growing. Because of these complexities, there is heightened focus on concepts such as anonymization and deidentification. This session will provide different perspectives from three privacy experts on how to navigate these issues, enabling legal professionals to more effectively navigate the data landscape.
Presented by Dr. Khaled El Emam, Replica Analytics, Mike Hintze, Esq., Hintze Law, PLLC, and Lindsey Schultz, Esq., Visa
Track D: Transactional/E-Commerce
Cloud Atlas 2: How the Pandemic Has Changed Cloud Contracts
- How License Agreements Have Changed
- Revising Force Majeure, Impossibility and Impracticability Now That We Know They Can Happen
- How Supply Contracts Have Changed Post-Pandemic
- How Employee Handbooks Have Changed Now That Your Workforce Expects to Work From Anywhere
Presented by Peter Kinsella, Esq., Perkins Coie LLP
4:30-6:00 pm
Virtual Broadway
Sponsored by Arnold & Porter, Baker Botts Goodwin, Greenberg Traurig, inventorship, Murgitroyd, Setter Roche, and Sheridan Ross
Grab your favorite beverage and join your colleagues in the virtual networking lounge for a live performance from Virtual Broadway. We’ll enjoy some classic songs, receive tips and tricks to improve our own virtual performance from a Hamilton cast member, and engage in lively Q&A with Broadway performers.
Our virtual networking lounge is the perfect place to catch up with old friends and meet new ones. Sit in small groups, visit 1:1, or table hop around the room. Be sure to sign in ahead of time, and upload your photo, contact info and socials to maximize your networking.
Friday, June 4, 2021
7:45 - 8:30 am
ChIPs Breakfast: Female Firsts with Chief Judge Barbara M. Lynn
As her firm’s first female associate, first female partner, and first woman to hold position of the Chief Judge of the Northern District of Texas, Chief Judge Barbara M. Lynn will share her experiences as a woman in the Texas legal system.
Moderated by Shelley Mixon, Esq., Agilent Technologies Inc.
8:40-8:45 am
Welcome Back Remarks
Presented by Nathaniel Trelease, Esq., WebCredenza, Inc.
8:45 – 9:35 am
Regulation of Social Media
- State of our economy and creating opportunities for innovation
- Protection and restoration of competition to the marketplace
- Future of antitrust enforcement and competition policy
Featuring Representative Joe Neguse, Esq., U.S. House of Representatives, Colorado’s 2nd Congressional District; and Phil Weiser, Esq., Colorado Attorney General
Moderated by Diane Hazel, Esq., First Assistant Attorney General, Colorado Office of the Attorney General
9:45-10:35 am
Contract Law After the Pandemic: How to Draft for Disruption
- How the pandemic has stressed “boilerplate” provisions in contracts
- How to think anew about force majeure and related doctrines
- Hear from the in-house in technology, retail, and entertainment
Presented by Anna Kadyshevich, Esq., Vice President & Senior Counsel, Legal Affairs, HBO, Joel Rogers, Esq., Associate General Counsel, Home Depot and Andrea Till, Esq., Broadcom
Moderated by Stephanie Abrutyn, Esq., former SVP and Chief Counsel, Litigation and Public Policy, WarnerMedia
10:35-10:45 am
Stretch Break
10:45-11:35 am
Breakout Sessions
Track A: Patents/ Patent Litigation
After Final Practice: Minimizing the Churn
- Interview options
- Preparing the record
- Appeal options
- RCE options/further filings
Presented by Victoria Augustine, United States Patent and Trademark Office; and Michael Wagner, Esq., Merchant & Gould, LLP
Track B: Trademarks/ Copyrights
Wanted Dead or Alive: When Trademarks Aren’t Really Dead
- When is a trademark dead
- When is a trademark alive when it appears otherwise
Presented by Stephen Lee, Esq., Target Corporation; and Marc Levy, Esq., Seed Intellectual Property Law Firm, LLP
Track C: Licensing
2021 Licensing Update
Hot topics from the last year in licensing law.
Presented by Jeff Dodd, Esq., Hunton Andrews Kurth, LLP
Track D: Transactional/E-Commerce
Future of Work
- IP Issues
- Security
- Remote Work
- COVID-19
Presented by Chris Allyn, Esq., Boeing and Jeppesen; Miko Brown, Esq., AirBNB; Victoria Donovan, Esq. Kutak Rock LLP
11:40 am-12:30 pm
Breakout Sessions
Track A: Patents/Patent Litigation
Freedom-to-Operate Opinions: Best Practices and Key Considerations
- Current state of the law
- Opinion risks
- Opinion rewards
Presented by Paul Cha, Esq., Sheridan Ross, LLP; and Phil Harris, Esq., Holland & Hart, LLP
Track B: Trademarks/Copyrights
Fireside Chat with Trademark Commissioner
Everything new and important at the PTO.
Presented by Commissioner David Gooder, United States Patent and Trademark Office; Moderated by Megan Bannigan, Esq., Debevoise & Plimpton, LLP
Track C: Licensing
2021 Trade Secret Update
Update on hot topics in trade secret law
Presented by James Pooley, Esq., James Pooley, PLC
Track D: Transactional /E-Commerce
Diversity & Inclusion Roundtable
- Building effective teams
- Creating inclusive culture
- ROI win with diversity
Presented by Mollybeth Kocialski, Director, Rocky Mountain Regional Office U.S. Patent and Trademark Office, Denver, CO and Lucky Vidmar, Esq., Associate General Counsel, Head of IP Litigation, Microsoft, Redmond, WA
Moderated by: Anthony Licata, Esq., Taft Stettinius & Hollister LLP, Chicago, IL
12:30-1:40 pm
Lunch and Learn: IP Litigation After the Pandemic: View from the Bench
Presented by Hon. Barbara Lynn, Chief Judge, U.S. District Court for the Northern District of Texas; Hon. Leonard P. Stark, Chief Judge, US District Court for the District of Delaware; and Hon. James Donato, U.S. District Court for the Northern District of California
1:45-2:35 pm
Breakout Sessions
Track A: Patents/Patent Litigation
Hidden Traps: Can you still Comfortably rely on Grace Periods in the US?
- Difference between pre- and post-AIA law
- Risks to delay
- Best practices to minimize risk
Presented by Ben Fernandez, Esq., Wilmer Hale, LLP; Robert Merges, J.D., LL.M., J.S.D., UC Berkeley School of Law; and Brian Olion, Esq., Wilmer Hale, LLP
Track B: Trademarks/Copyrights
2020 Copyright Update
Update on Copyright hot topics.
Presented by Evan Rothstein, Esq., Arnold & Porter, LLP and Molly Van Houweling, J.D., UC Berkeley School of Law
Track C: Licensing
2021 Privacy Update
- The California Privacy Rights Act of 2020 and other proposed state and federal privacy legislation.
- Biometric and facial recognition litigation updates.
- Federal Trade Commission enforcement action updates.
- Other recent developments
Presented by Deborah Shinbein Howitt, Esq., Dorsey & Whitney LLP, Beth Magnuson, Senior Legal Editor, Privacy & Data Security, Thomson Reuters, and Camila Tobón, Esq., Davis Graham & Stubbs
Track D: Transactional/E-Commerce
IP Hygiene in a WFH World
- Re-thinking your practices to fit WFH
- The good, the bad, the ugly: best practices for a remote workforce
- How to best protect innovation, patentable inventions, trade secrets, and copyrights outside the physical workplace
Presented by Jared Briant, Esq., Faegre Drinker and Leslie Hayden, MAYCOM
2:40-3:30 pm
Breakout Sessions
Track A: Patents/Patent Litigation
From Coast to Coast: Patent Litigation Trends in Popular Jurisdictions
Patent litigation developments from California, Colorado, Delaware, and Texas.
Presented by Sara Guske, Esq., Baker Botts, LLP and Lee Johnston, Esq., Haynes & Boone, LLP
Track B: Trademarks/Copyrights
Sports & Dying Trademarks: A Snapshot in Time
- Status of the registered Washington Red****s® trademarks
- Other professional sports team names in jeopardy of being cancelled (either by third parties or via voluntary abandonments).
- Collegiate and high school sports team names and what the future may hold for such marks.
Presented by Leigh Augustine, Esq., EIP US, LLP and Charlene Krogh, Esq., Dorsey & Whitney, LLP
Track C: Licensing
2021 Internet Law Update
- Data portability, screen scraping and AI - the changing legal landscape
- Copyright fair use after Google v. Oracle and other important cases
- Privilege issues in cybersecurity investigations - how "standard practices" for many companies can create problems in litigation
- Linking law revisited, including 2020 and 2021 decisions on embedded links used in social media
- Analyzing CCPA litigation 18 months after it commenced – what companies can and should do to avoid or defeat CCPA claims
- Platform liability - The DMCA, CDA and other moderation rules under attack - and how that is impacting case law and strategy
- Antitrust and platform liability in the era of Techlash
- TCPA and lawful mobile marketing law update after the Supreme Court's decision in Facebook v. Duguid
- Important new Terms of Use, mobile and online contract formation, privacy policy and arbitration cases and enforceability trends, including mass arbitration
- New developments in data privacy and cybersecurity class action litigation
- Litigating from home - how federal court litigation is changing as a result of the Pandemic and what that means for companies
Presented by Ian Ballon, Esq., Greenberg Traurig, LLP
Track D: Transactional/E-Commerce
Legal Processes
- AI
- Automation
- Contract Management
Presented by Eric Lentell, Esq., FitBit; and Matt Spohn, Esq., Red Canary
3:35-4:25
Ethics After the Pandemic
This program will address ethics issues facing lawyers practicing during and after the pandemic, including: core duties, such as communication, competence and diligence; confidentiality issues (especially involving technology use) when practicing remotely and at home; unauthorized practice of law and multijurisdictional practice issues; special ethics challenges in pandemic - driven practice areas (such as trust and estates, and bankruptcy) and processes (such as remote depositions and mediations); maintaining professionalism while serving clients. To include discussion of rules Rule 1.2, 1.4, 1.3, 1.6, 1.7, 1.14, 1.16, 5.1, 5.3, and 5.5
Presented by Tom Spahn, Esq., McGuire Woods, LLP
Submitted for 1 Ethics Credit
4:25-4:30 pm
Closing Remarks
Registration Fees
| Non Member | $637.00 |
| CBA Member | $478.00 |
| ABA Intellectual Property Section Member | $382.00 |
| CBA Intellectual Property Law Section Member | $382.00 |
| Copyright Society of the USA Member | $382.00 |
| CLE BASIC Pass Holder | $318.00 |
| CLE ELITE Pass Holder | $239.00 |
| Paralegal/Legal Support Staff | $239.00 |
| New Lawyer Edge Member | $239.00 |
| Student Currently Enrolled in Law School | $99.00 |
| Exhibitor Staff Non Member | $0.00 |
| Exhibitor Staff CBA Member | $0.00 |
- General Credits: 21.00
- Ethics Credits: 2.00
- EDI Credits:
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