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.


Cooley LLP
Holland & Hart LLP
Kilpatrick Townsend & Stockton, LLP
King & Spalding
Merchant & Gould P.C.
Perkins Coie

Arnold & Porter
Baker Botts
Greenberg Traurig, LLP
Setter Roche Smith & Shellenberger LLP
Sheridan Ross PC

Armstrong Teasdale LLP
Dorsey & Whitney LLP
Faegre Drinker
Haynes and Boone, LLP
Seed Intellectual Property Law Group LLP
Sherman & Howard, L.L.C.
Smart & Biggar
Young Conaway Stargatt & Taylor, LLP

Baker Tilly
PatPro, Inc.

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
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
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
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