SECTION OF INTELLECTUAL PROPERTY LAW

19th Annual Intellectual Property Law Conference APRIL 1-2, 2004 International Trade Center at the Ronald Reagan Federal Building Washington, DC

... What IP Lawyers Need to Know

in cooperation with the ABA Section of Science and Technology Law

Program Schedule

Registration and Check-in

I) Bench and Bar Panel Discussion: Patent Litigation Hot Topics And Practical Tips
A panel of experienced trial and appellate judges and lawyers will address a variety of hot topics in intellectual property law. In addition, the panel will provide important tips on trial and appellate practice.

Administrative Remarks: Monique Morneault, Wallenstein Wagner & Rockey, Ltd., Chicago, IL. Co-Chair, 19th Annual Intellectual Property Law Conference.

Welcome Remarks: E. Anthony Figg, Rothwell, Figg, Ernst & Manbeck, PC, Washington, DC. Vice-Chair, ABA Section of Intellectual Property Law.

Moderator: Charles H. De La Garza, Fulbright & Jaworski LLP, Austin, TX

Panelists:
Hon. Randall R. Rader U.S. Court of Appeals for the Federal Circuit, Washington, DC

Hon. T.S. Ellis, III, U.S. District Court for the Eastern District of Virginia, Alexandria, VA

Robert L. Baechtold, Fitzpatrick, Cella, Harper & Scinto, New York, NY

James J. Elacqua, Dewey Ballantine LLP, East Palo Alto, CA

Richard L. Stanley, Howrey Simon Arnold & White, LLP, Houston, TX

William A. Streff, Jr., Kirkland & Ellis LLP, Chicago, IL

II) Trademark Litigation- Where Do We Go From Here?
This panel will address topics and strategies relevant to all facets of litigation in the trademark and unfair competition arena in both traditional and digital media, with a particular focus on significant court decisions of the last year.

Administrative Remarks: Amy J. Benjamin, Darby & Darby, New York, NY. Co-Chair,19th Annual Intellectual Property Law Conference.

Welcome Remarks: Robert W. Sacoff, Pattishall, McAuliffe, Newbury, Hilliard and Geraldson, Chicago, IL. Chair, ABA Section of Intellectual Property Law.

Moderator: Carrie A. Hanlon, Wiggin & Dana LLP, Stamford, CT

Speakers:
No turning back the clock: the significance of laches in Pro-Football, Inc. v Harjo
Robert L. Raskopf, White & Case LLP, New York, NY

Measuring damages in trademark infringement and related claims in light of recent court decisions
Todd Schoettelkotte, FTI Consulting, Inc., Houston, TX

Trademark fear and loathing on the Internet: the UDRP and cybersquatting in 2004
W. Scott Creasman, Powell, Goldstein, Frazer & Murphy, LLP, Atlanta, GA

Victor/Victoria and the Supremes: scanty support for radical dilution ruling piques trademark pundits
David A. Kessler, Greenberg Traurig, LLP, McLean, VA

Implementing an Economical and Effective Trademark Enforcement Program
Lawrence R. Robins, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Cambridge, MA

TTAB Proceedings: Through the Looking Glass and What One Commentator Found There
J. David Mayberry, Kilpatrick Stockton LLP, Washington, DC

III) Open Source: From Software to Genetics

Co-sponsored by the ABA Section of Science & Technology Law

The recent market share success of the open source Linux operating system has made open source software a viable alternative to traditional proprietary software. As this model comes into the mainstream it is essential for IP lawyers to understand the fundamental legal issues raised by the open source process. Session I will address these questions, and delve into the terms of the five most frequently used open source software licenses. Session II will explore the application of open source principles to genetics research. Genetic research poses new challenges for intellectual property law as lawyers attempt to balance the desire of scientists for a free and open exchange of research results with the private sector requirements for property rights that reward investment.

Administrative and Welcome Remarks:
Heather D. Rafter, Digidesign, Daly City, CA. Chair, ABA Section of Science & Technology Law.

Open source software licenses
Moderator: Heather D. Rafter

Speakers:
Heather J. Meeker, Tomlinson Zisko LLP, Palo Alto, CA.

Mark Webbink, Senior VP- General Counsel, Red Hat Software, Raleigh, NC

Daniel Ravicher, Senior Counsel, Free Software Foundation, New York, NY

W. Sam Byassee, Maupin Taylor, P.A., Research Triangle Park, NC

Randall Boe, Executive Vice President and General Counsel, AOL, Dulles, VA

The application of open source principles to genetics research
Moderator: Professor Anna Mastroianni, University of Washington School of Law, Seattle, WA

Speakers:
Claire T. Driscoll, Director, Technology Transfer Office, National Human Genome Research Institute, National Institutes of Health, Bethesda, MD

Professor Arti K. Rai, Duke University Law School, Durham, NC

Werten F.W. Bellamy, Jr., Lewis & Munday, PC, Washington, DC

Facilitator: Bryan J. Sinclair, Dechert LLP, Palo Alto, CA

Speakers:
Brian Napper, Global Director of IP Practice, Deloitte & Touche, New York, NY

John W. Ryan, Dechert LLP, Washington, DC

Catherine M. Cotell, Ph.D., Vice President for University Outreach for In-Q-Tel, Arlington, VA

Stephen Bloor, Patent Counsel, U.S. Army Research Laboratory, Adelphi, MD

Guest Speaker: Hon. Lamar Smith (R-TX), Chair, Subcommittee on Courts, the Internet and Intellectual Property Rights of the U.S. House of Representatives Judiciary Committee

Co-sponsored by Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

1:45 - 5:00 p.m.

(there will be a 15-minute break near the halfway point of all afternoon sessions)

I) Patents Are A Worldwide Business- International Patent Issues
As business tends to be globalized, we address patent coverage outside of the United States in order to protect our clients. The program will address three aspects of Internation al Practice. The first relates to the very successful Patent Cooperation Treaty (PCT). Recent changes have gone into effect making it easier, cheaper, and more useful to use PCT for foreign filing your applications. We will discuss the changes, the U.S. rules involved, and strategies for making effective use of PCT filing. The second part of the program will address how to prepare a patent application in a most effective way for global filing in order to reduce the costs and try to achieve a "universal" patent application useful for all countries. The final aspect of the program will address problems that are unique in EPO practice, filing in Japan, and handling Canadian applications. It will address areas that always give difficulty to U.S. practitioners and will clarify and facilitate an understanding of these three areas in connection with patent filing and prosecution.

Moderator: Samson Helfgott, KMZ Rosenman, New York, NY

PCT changes- this is the way to go for your client!

Speakers: Recent PCT changes and what is still ahead
Louis Maassel, Counsultant, Legal Division, World Intellectual Property Organization, Bowie, MD

U.S. implementation of PCT changes
Carol Bidwell, Supervisor, Office of PCT Legal Administration, U.S. Patent & Trademark Office, Alexandria, VA

Strategies for handling PCT cases with new changes
Chen Wang, Senior Counsel, E.I. du Pont de Nemours and Company, Wilmington, DE

PCT filing-an essential business strategy tool
T. David Reed, Senior Patent Advisor, Global Patent Services, The Procter & Gamble Company, Cincinnati, OH

Preparing a global patent application

Speaker:
Samson Helfgott, KMZ Rosenman, New York, NY

Tips and traps in foreign prosecution

Speakers:
EPO- claiming problems- inescapable traps
Soren Giver, European Patent Attorney, IP Manager, Awapatent AB, Sweden

Japan-how to draft effective Japanese patent applications
Shinji Kato, Patent Attorney, PROSPEC Patent Firm, Tokyo, Japan. Japan Patent Attorney Association Patent Committee.

Canada- is it really different from U.S. practice?
Dino P. Clarizio, Dimock Stratton Clarizio LLP, Toronto, ON, Canada

II) Madrid Protocol: The First Six Months- Boom or Bust?
Moderator: Karin Segall, Darby & Darby, New York, NY

Speakers:
A European perspective on Madrid Protocol: what will happen after the EU joins?
Andreas Renck, Partner, Lovells, Alicante, Spain

In-house filing strategies under Madrid
Lucy Nichols, Global Director, IPR Brand Protection, Nokia Corporation, Espoo, Finland

Evaluation of the Madrid Protocol now that the U.S. has joined
Suzanne Stoll, Washington Coordinator, World Intellectual Property Organization, Washington, DC

Madrid Protocol: the USPTO's perspective
Deborah S. Cohn, Group Director for the Trademark Law Offices, U.S. Patent & Trademark Office, Arlington, VA

III) The Intersection of Antitrust and IP
The first half of this session will be available via ABA-CLE Teleconference from 1:45-3:15 p.m.

Balancing competition with intellectual property rights: proposals from the DOJ and FTC
Moderator: M. Howard Morse, Drinker Biddle & Reath LLP, Washington, DC

Speakers:
Robert P. Taylor, Howrey Simon Arnold & White, LLP, Menlo Park, CA

Susan Stark DeSanti, Deputy General Counsel for Policy, Federal Trade Commission, Washington, DC

Frances E. Marshall, Special Counsel for Intellectual Property, Antitrust Division, U.S. Department of Justice, Washington, DC

Q. Todd Dickinson, Howrey Simon Arnold & White, LLP, Washington, DC (former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office)

Specific issues in managing IP and competition law

Moderator: Robert P. Taylor, Howrey Simon Arnold & White, LLP, Menlo Park, CA

Speakers:
Settlement of patent litigation
Susan A. Creighton, Director, Bureau of Competition, Federal Trade Commission, Washington, DC

Refusals to license in the EU
Mauritz J.F.M. Dolmans, Cleary, Gottlieb, Steen & Hamilton, Brussels, Belgium

Patent and copyright misuse
Jeffery B. Fromm, Drinker Biddle & Reath LLP, Breckenridge, CO (formerly Senior Managing Counsel for
Intellectual Property, Hewlett-Packard Company)

Standard setting involving intellectual property rights
M. Howard Morse

Facilitator: Susan Barbieri Montgomery, Foley Hoag, LLP, Boston, MA

Speakers:
Dean F. Hanley, Foley Hoag, LLP, Boston, MA

Susan E. McHale-McGahan, Intellectual Property Law Department, AT&T Corporation, Bedminster, NJ

Facilitator: William C. Rowland, Burns, Doane, Swecker & Mathis, LLP, Alexandria, VA

Speakers:
Current Technology and Latest Electronic Filing Developments
Edmund Crump, U.S. Patent & Trademark Office, Alexandria, VA

E-filing Demonstration
Carl Oppedahl, Oppedahl & Larson LLP, Dillon, CO

In these days of GATT and TRIPs, with a Starbucks on every corner of London, it's easy to underestimate the legal and cultural differences between the US and Europe. Many US companies still don't realize that the "ordinary" exercise and protection of their IP rights can violate European competition (antitrust) laws and expose them to massive fines - even if they are far smaller players than Microsoft. Then there are the on-the-ground challenges of negotiating across barriers of law, language and business culture. This panel explains the major changes to EU competition rules for technology agreements that will come into force on May 1, 2004, and gives an in-house perspective on doing deals in Europe without flying by the seat of your pants.

Facilitator:
Susan L. Foster, Eversheds LLP, Cambridge, United Kingdom

Speakers:
Competition law safe harbor or sucker punch? Assessing the impact of the "new and improved" technology transfer block exemption on your business in Europe
Susan L. Foster

Speaking the language: an in-house perspective on doing tech deals in Europe
Jill N. Fuchs, Senior Counsel, Convergys Corporation, Cincinnati, OH

Thursday's Coffee Breaks are co-sponsored by BNA Books, Inc

(there will be a 15-minute break near the halfway point of all morning sessions)

I) Hot Topics Facing The In-House Counsel

Moderator: Scott T. Piering, Cargill, Inc., Minneapolis, MN

Speakers:
E-mail: Attorney-client privilege- all the rules are changing
Paul R. Rice, Professor of Law, Washington College of Law, American University, Washington, DC

Budgetary challenge: adapting to a new economic playing field
Gloria D. Archuleta, Cingular Intellectual Property Strategic Management Team, Cingular Wireless, Atlanta, GA

The inside scoop to outside counsel
Debbie K. Wright, Chief Patent Counsel, Kraft Foods, Inc., Northfield, IL

Protecting your intelletual property rights from your employees
L. Marisia Campbell, Osler, Hoskin & Harcourt, LLP, Ottawa, ON, Canada

Representing the competition- how to avoid losing clients
Speaker to be announced

II) Downloading Drama: Strategies For Copyright Protection In The Digital Era
Co-sponsored by the ABA Section of Science & Technology Law

Copyright owners have launched a multi-pronged campaign to combat the digital exchange of music and other copyrighted works through the Internet. Our expert panel will discuss and debate the current litigation strategies employed against individual file swappers, file sharing networks and Internet service providers and consider alternative proposals for protecting the rights of copyright owners in the age of Grokster and Kazaa.

Moderator:
Thad Chaloemtiarana, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL

Speakers:
Sandra M. Aistars, Counsel, Intellectual Property, Time Warner, Inc., New York, NY

Sarah B. Deutsch, Vice President & Associate General Counsel, Verizon Communications, Arlington, VA

Joseph P. Liu, Assistant Professor of Law, Boston College Law School, Newton, MA

Matthew J. Oppenheim, Senior Vice President of Business and Legal Affairs, Recording Industry Association of America, Washington, DC

Wendy Seltzer, Staff Attorney, The Electronic Frontier Foundation, San Francisco, CA

III) Ethical Pitfalls for the Unwary
Patent Lawyer: We'll Tell You How To Avoid Them
This program will present the most common areas of discipline and legal malpractice against the unwary patent lawyer based on discipline and malpractice interviews and reports. Don't leave yourself unprotected!

Facilitators:
Carol M. Langford, Office of Carol M. Langford, Walnut Creek, CA

John M. Steele, Rogers, Joseph, O'Donnell & Phillips, San Francisco, CA

Special Interest Sessions

Pharmaceutical Balance Of Powers: Do The Hatch-Waxman Reforms Restore Equilibrium?

Co-sponsored by the ABA Section of Science & Technology Law

The Hatch-Waxman Act is said to achieve a balance of power by allowing the development of new, more effective medicine and the fast introduction of generic medicine. The true balance of the Act however has been debated since its inception in 1984. The 2003 Hatch-Waxman reforms seek to restore any unequal powers granted by the Act. A panel of distinguished pharmaceutical industry representatives will continue the debate concerning the balance of power, and will explore how the changes to the Act impact both research-based and generic drug industries.

Facilitator: Kristin Kosinski, Darby & Darby, New York, NY

Speakers:
Roberta R. Loomar, VP-Assistant General Counsel, Andrx Corporation, Davie, FL

Robert A. Armitage, Eli Lilly and Company, Indianapolis, IN

Erika King, Assistant General Counsel, Pharmaceutical Research and Manufacturers of America, Washington, DC

Electronic Discovery: How To Obtain It, Contain Costs, And Who's Responsible For Paying For It

Guest Speaker: Gary Kremen, President and CEO of Grant Media Management Inc., San Francisco, CA

Sponsored by Howrey Simon Arnold & White, LLP

I) Legal Ethics in Trademark Law: The Domestic and International Dimensions
The continuing relevance of trademarks in the United States and abroad forces practitioners to confront both ethical dilemmas common to all attorneys and conflicts particular to the nuances of trademarks. The international aspects of practicing trademark-related law exacerbate these problems for all but the most wary of attorneys. This panel will highlight current issues in this area.

Facilitators:
Nathaniel Nicoll, San Francisco, CA

Jonathan Matkowsky, Seward & Kissel, LLP, New York, NY

II) Recent Developments In Patent Law-What You Need To Know
This panel will focus on recent patent law precedents impacting practice in obtaining and enforcing patent rights. A survey of decisions from the Federal Circuit, the U.S. District Courts, and the U.S. Patent and Trademark Office will be provided.

The first half of this session will be available via ABA-CLE Teleconference from 1:45-3:15 p.m.

Moderator:
John J. Gresens, Merchant & Gould, Minneapolis, MN

Speakers:
Barbara A. Wrigley, Oppenheimer, Wolff & Donnelly, Minneapolis, MC

Professor R. Carl Moy, William Mitchell College of Law, St. Paul, MN

John J. Gresens, Merchant & Gould, Minneapolis, MN

Special Interest Sessions

Due to the intangible nature of IP and its ability to be used simultaneously in many different ways, the litigation and management contexts in which we have historically seen and used IP are changing. Attorneys are forced to be involved in disputes and transactions that they may not have considered in the past. From a litigation perspective, given the importance of intellectual property rights to a company, IP is showing up in a multitude of different types of disputes. It is no longer limited to infringement and misappropriation. IP issues are emerging in bankruptcy, purchase price disputes, breach of contract, tax, fraud, and licensing disputes. Attorneys need to be aware of the interplay between IP and these areas to properly protect IP rights and their value. From a management perspective, the valuation methodology around IP is becoming more and more sophisticated. The value of IP may also change given its many different uses and applications.

Facilitator:
Kathi Kedrowski, Ernst & Young Global Investigations and Dispute Advisory, Chicago, IL

In two recent cases, Lexmark v. Static Control Components and Chamberlain v. Skylink, plaintiffs have used the anti-circumvention provisions of the Digital Millennium Copyright Act against after-market competitors. This session will explore the legal and policy issues with some of the participants in the litigation.

Facilitator:
Jonathan Band, Morrison & Foerster, LLP, Washington, DC

Speakers:
Seth D. Greenstein, McDermott, Will & Emery, Washington, DC

Scott D. Baker, Reed Smith Crosby & Heafey, LLP, San Francisco, CA

Friday's Coffee Breaks are co-sponsored by Burns, Doane, Swecker & Mathis, LLP

Course Materials on CD-ROM are co-sponsored by Finnegan, Henderson, Farabow, Garret & Dunner, LLP

The Cyber Café is co-sponsored by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP