Over a year has passed since the UPC opened its doors in June 2023 after years of deliberation. With 373 cases initiated and 29,000 unitary patent applications made in its first year of operation, the UPC is building momentum, with new cases filed every month. The question now poses itself as to how US patent owners can get involved in this new exciting European endeavour, and what the advantages and risks are of opting out.

• Hear a detailed account of the UPC’s latest cases, and understand the circumstances factored into the decision-making process
• Explore the implications of the UPC from a policy and legislative perspective in order to weigh in on the implications of opting in/out
• Discover ways in which to leverage the UPC to streamline enforcement actions and litigation across Europe in order to reduce costs and achieve quicker outcomes

The legal department has for too long been cast to the background and circumvented with its image of pushing back projects with lengthy validation processes. While the IP department puts out fires, this also means that the wider company does not see the successes that take place behind-the-scenes, noticing only when something goes wrong. In house IP counsels must be equipped to raise awareness around the importance of IP within the compliance, privacy and brand protection framework, in order to ensure themselves a seat at the business table.

• Understand the importance of communicating to upper management the resources and visibility the IP department needs to succeed and continue to protect the company’s assets
• Assess key ways in which peers have educated other departments to demonstrate the importance of IP and mitigate risks caused by misunderstanding and/or unfamiliarity with the function
• Explore the value of promoting the IP department’s responsibilities cross-functionally in order to limit leaks and ensure compliance and the continued good reputation of the brand

Dennis Jung

Head of IP
PHC Holdings (Ascensia and Epredia)

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Ann Valdivia

Associate General Counsel - IP
USAA

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John Flynn

Associate General Counsel
IBM

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Building a global patent portfolio presents a number of significant challenges for in-house counsel. Conflicting and diverse patent laws across local and foreign jurisdictions, for instance, demand a robust strategy, as well as extensive legal expertise, in order to be navigated correctly. Prioritization also poses an issue – on limited budgets and resources, in-house counsel can often only file in a certain number of countries, meaning they must be aware of potential infringements globally. In addition to further challenges, such as translation capacities and navigating ever-evolving legal landscapes, a global patent portfolio, though necessary for competitive advantage and business development, is a tricky task to tackle amidst such restraints.

• Discover techniques to build a global patent portfolio and what to consider when filing in different countries in order to ensure it makes the most sense for you and your company
• Hone in on difficult jurisdictions, such as Russia and China, and the impact of geopolitics on patent filing and litigation activities
• Explore different enforcement strategies once patents have been granted in different jurisdictions in order to maintain IP protection at all times

Tenley Krueger

Vice President of IP
Technip Energies

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Aamir Haq

Vice President & Associate General Counsel, Patents and Trade Secrets
Hewlett Packard Enterprise

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Jeb Shookman

Head of IP for US, Vice President
ABB

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The patent portfolio is the heart and soul of any IP department. It is of the upmost importance that it is correctly managed and protected at all times. With the current volume of patent applications resulting in prior art search and competitor monitoring becoming increasingly difficult, IP leaders must be well-equipped to ensure they are aware of upcoming and current threats to their portfolio. On the other hand, there must also be room for innovation and most importantly figuring out what needs to be prioritized when it comes to patenting. From the struggles of patenting software through to prior art search tools, join this session to focus in on your portfolio and question what you can do to make it as robust and profitable as possible.

• Discuss key ways to make your prior art search more efficient, such as triage processes and factoring it into yearly budgets, in order to minimize gaps in your FTOs and reduce the risk of potential litigation and dispute
• Explore management strategies to document your portfolio and make the best use of it going forward
• Examine the need for communication throughout the business, especially with R&D, to assess priorities in patent filing and enhance competitor monitoring

While the EU passed its AI Act in March 2024, the US has experienced somewhat of a complicated start regarding regulation on AI. With President Biden’s Executive Order in October 2023 and Colorado’s first in the nation AI law in May 2024, as well as the USPTO and FDA releasing their own guidance about the use of AI, the regulatory landscape is blurry for companies who are eager to trial but worried about compliance and ethics without the necessary laws to follow. The question, then, becomes how companies can push ahead with innovation and documentation whilst remaining compliant, ethical and respectful of customer and employee data.

• Discuss as a group what the AI Act of the US will look like, when and if it comes into effect, in order to best prepare your business to move forward
• Hone in on current regulations and laws, their effects on your company, and best practices to comply and work in line with legal expectations
• Hear your peers’ approaches to using AI without regulatory framework, and what you can do to ensure compliance and ethical use of AI

Ian Cohen

AVP, Global IP and Data Protection Counsel
AECOM

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