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2006 Summer IPL Conference
Continuing Legal Education Programs

Continuing Legal Education accreditation will be available for the following sessions. Thursday morning’s CLE session will follow the opening Plenary Session, and Friday morning’s CLE session will follow the Women and Minorities in IP Law Program. Please note the specific sign-in instructions available onsite for CLE credit for the various states.

IP Transactions in a Knowledge Society

Wednesday, June 21, 1:15 - 3:15 p.m.

IP transactions are complex and important business strategies. Whether an attorney is negotiating an M&A or a licensing transaction, protecting IP assets during an important business deal requires careful consideration and implementation of each party’s contract rights and obligations. A panel of speakers from different business areas will discuss their particular transactional challenges. They will discuss the provisions required in a contract in order to protect the company’s IP rights and business interests. Different perspectives to be addressed include IP provisions in transactions with start-up companies, nonprofit institutes and universities as well as provisions required in transactions with large companies. Preserving trade secrets, ensuring title to the IP and control over the IP after the transaction will be viewed from the perspective of a mobile and knowledge-based society.

Donna Suchy, Eastman Kodak Co., Rochester, NY

Anne Kelley, General Manager, Patent Cross Licensing, Microsoft Corporation, Redmond, WA
Susan Foster, Fisher & Richardson, San Diego, CA
Renee L. Jackson, Vice President, Chief Intellectual Property and Litigation Counsel, Fair Isaac Corporation, Minneapolis, MN

Cyber Cafe

During the 2006 Summer IPL Conference, a Cyber Cafe will be available to participants. This Cyber Cafe will be located in the main registration area, and will feature a number of computers with Internet-connection for those who wish to check e-mails or search for something on the Internet. High speed laser printers will also be available so participants will be able to print portions of the course materials on CD-Rom.

Boston Skyline

Massachusetts Institute of Technology

Parkman Bandstand, Boston Common

Streets of Boston

Clock Tower, Harvard University

Boston Public Garden

On-Line Content Issues

Wednesday, June 21, 3:30 - 5:00 p.m.


Some commentators claim that we’ve moved from a permissionbased copyright system to one where online companies act first and ask permission later. For example, do search engines and directories violate U.S. or European copyright law in the way they show news headlines–or link to, or display the copyrightable content of news agencies? At least one lawsuit brought by a French news agency says that they do, while others respond that these activities do not involve the reproduction of any content or that they constitute fair use. Join us for a lively discussion of these cutting-edge copyright issues.

Barbara Friedman, of Counsel, Hanson Bridgett, San Francisco, CA

Matt Robinson, Yahoo!, Sunnyvale, CA
Robert K. Hamadi, Head of Communications, The Publishers Association, London, U.K.
Speaker to be announced (invitation extended to representative of Google)
Academic Representative to be announced

Gaming Licensing Issues

Thursday, June 22, 10:15 a.m. – 11:45 a.m.

As video games become more complex, many games have begun to differentiate themselves from their competitors by inviting the players to help design aspects of the game or even the entire game universe. This panel will address the legal issues raised by such user-created content, including copyright (are these derivative works?), trademark (can a player create a recognizable mark that has independent value?), ownership (who is the “owner” of property or user-created aspects?), and licensing (what rights do other players have to access, enjoy, and change this content?).

Don McGowan, Microsoft Corporation, Redmond, WA
J. Michael Monahan, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, IL

To be announced

Software Patents

Thursday, June 22, 10:15 a.m. - 11:45 a.m.

This program will address software patents from three perspectives: patent prosecutor, patent examiner, and patent litigator. The program will provide advice to patent attorneys on how to draft a software patent application that will not only get through the patent office but will withstand scrutiny in court. The program will provide information on the guidelines followed by the patent office in examining software patent applications and offer specific guidance on how to draft claims with a view toward litigation.

Antoinette M. Tease, Antoinette M. Tease, PLLC, Billings, MT

Steven M. Greenberg, Christopher & Weisberg, P.A., Fort Lauderdale, FL
Stephen G. Kunin, Oblon, Spivak, McClelland, Maier & Neustadt, PC, Alexandria, VA
Joseph N. Hosteny, III, Niro Scavone, Haller & Niro, Chicago, IL

1:45 - 5:00 p.m.
Section Business Session:
Policy on Leading IP Issues

Debates on the latest, and often controversial, issues play a central role at the Section’s annual Business Session where it sets its positions on policy issues. The Section’s position on issues ranging from “first to file” versus “first to invent,” trade dress protection for product configurations and file downloading have been debated and voted upon at past Sessions. This is your chance to hear top IP attorneys debate the issues of the day and to participate in this open forum setting. A unique feature of the Section’s annual meeting, not found at any other intellectual property law conference, the annual Business Session features debate on the resolutions presented by the Section’s committees. CLE credit will be available for those attending the Business Session.

International Tech Transfer Issues

Friday, June 23, 10:15 - 11:45 a.m.

While many are aware that export control regulations such as EAR and ITAR exist, few are aware of their breadth and depth. In our era of instant global communication, multinational corporations, and foreign outsourcing, the possible application and effect of these regulations on technology transfers are often overlooked.
Our panel of experts from both the legal and business communities will discuss the breadth and depth of the export control regulations as they apply to technology transfers in today’s global business environment, and identify best practices for businesses and universities.

Nhat Phan, Buchanan Ingersoll PC, Alexandria, VA

William H. Pratt, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC
Mark E. Sagrans, E.I. DuPont de Nemours and Company, Wilmingoton, DE

Pro Bono in the IP Arena

Friday, June 23, 10:15 - 11:45 a.m.

This panel addresses the ethical requirement that lawyers strive to provide public interest legal services. It addresses hurdles faced by in house counsel departments in developing policies for provision of such services, provides tips and suggestions on avoiding the pitfalls associated with pro bono services and discusses available opportunities and suggestions on how to develop programs to meet this ethical obligation.

Moderator: Philip C. Swain, Foley Hoag LLP, Boston, MA

Elizabeth J. Hecht, Senior Patent Counsel, GlaxoSmithKline, King of Prussia, PA
Anthony DeMarco, McGee & Schiavoni, Lynn, MA
Cynthia E. Kernick, Reed Smith LLP, Pittsburgh, PA
Jane Campbell Moriarty, Associate Professor, University of Akron School of Law, Akron, OH

International Hot Topics in Trademarks

Friday, June 23, 1:45 - 5:00 p.m.

Speakers from the U.S., Canada, the EU, China and South Africa discuss “hot topics” in trademark law in each jurisdiction. Topics include recent case law, new and proposed legislation relating to trademarks, trade dress and unfair competition.

Amy Benjamin, Darby & Darby, PC, New York, NY
Peter Wilcox, Torys, LLP, Toronto, Ontario, CA

Kathryn Cruse, Withers & Rogers, LLP, Birmingham, UK
Nelia Hickman, Adams & Adams, Pretoria, South Africa
Yan Wu, China Patent Agent (USA), Ltd., New York, NY
Peter L. Wilcox

U.S. speaker to be announced

Patent Litigation Panel

Thursday, June 22, 1:45 - 3:15 p.m.

Speakers will discuss hot topics in intellectual property litigation, rapidly changing areas in substantive law and procedure, and address practical strategies that can be used to enhance a party’s position when in litigation.

Yoncha Kundupoglu, Hogan & Hartson LLP, Los Angeles, CA

William E. Thomson, Hogan & Hartson LLP, Los Angeles CA (Patent Litigation)
Mary E. Innis, Loeb & Loeb, Chicago, IL (Trademark Litigation)
Speaker to be announced, (Copyright Litigation)

International Hot Topics in Patent Prosecution

Friday, June 23, 3:30 - 5:00 p.m.

The panel of speakers from Europe, South Africa, Australia and Canada will analyze prevailing law and practice in their jurisdiction from the following topics:

  • Software and business method patents - what is and what's not patentable?
  • Contributory infringement - is it necessary to provide all essential means in the territory?
  • Claim interpretation - when is a dictionary definition relevant?
  • Overview of current court practice - how long and how much patent litigation?

Karl Barnfather, Withers & Rogers LLP, Birmingham, UK

Barry Eager, Eager & Buck, Eagle Heights, Australia
Russell Bagnall, Adams & Adams, Pretoria, South Africa
Timothy C. Bourne, Ridout & Maybee LLP, Ottawa, ON, Canada
Adrian Tombling, Withers & Rogers LLP, London, UK

IP Ownership Risks with R&D – International Discussion

Saturday, June 24, 8:00 - 10:00 a.m.

Article 35 of Japanese Patent Law had been a sleeping dragon until recently, when a former employee of Japan’s Nichia Corporation successfully applied it to gain remunerations for his part in inventing Blue LED. This leads to the question of whether U.S. businesses are at risk doing Research and Development in Japan and elsewhere abroad. Representatives from Nichia and the Japanese Intellectual Property Law Association will be on hand to discuss the case and further developments with Article 35 in Japan, as will attorneys with knowledge of the risks companies face in China and India. Also on hand will be an attorney from the U.S. Patent and Trademark Office to discuss what aspects of this topic have raised concern with government officials.

John T. Johnson, Fish & Richardson P.C., New York, NY

Yasuharu Nagashima, Nagashima Ohno &Tsunematsu Kiocho, Tokyo, Japan
Isamu Sojyo, Executive Managing Director, Japan Intellectual Property Association, Tokyo, Japan
Chris Katopis, Director of Congressional Affairs, U.S. Patent and Trademark Office, Washington, DC
Peter C. Schecter, Darby & Darby PC, New York, NY
Naomi Voegtli, Director, Global Intellectual Property, Pacific-Rim Asia SAP AG, Walldorf, Germany
Edward E. Lehman, Lehman, Lee & Xu, Beijing, China
Caleb Gabriel, K&S Partners, New Delhi, India