North America's Premier Invitation-Only Gathering for Senior IP & Brand Protection Leaders
January 28 - 29, 2025
| Austin Marriott South,Texas
Agenda Day 2
8:00 am - 8:30 am
REGISTRATION & COFFEE
8:30 am - 8:40 am
OPENING REMARKS FROM THE CHAIRPERSON
8:40 am - 8:45 am
LIVE POLLING
8:45 am - 9:00 am
LIGHTNING PRESENTATION: IN REAL TIME – A BRIEF OVERVIEW OF BIG DECISIONS (AND HOW TO KEEP UP TO DATE IN THE IP WORLD)
9:30 am - 10:15 am
PANEL DISCUSSION: “THE NO DEPARTMENT” – PROMOTING THE VALUE OF IP AND FORGING YOUR PATH TOWARDS BECOMING A PARTNER TO THE BUSINESS
Dennis Jung -
Head of IP,
PHC Holdings (Ascensia and Epredia)
Ann Valdivia - Associate General Counsel - IP, USAA
John Flynn - Associate General Counsel, IBM
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
9:45 am - 10:00 am
LIGHTNING PRESENTATION: IN REAL TIME – A BRIEF OVERVIEW OF BIG DECISIONS (AND HOW TO KEEP UP TO DATE IN THE IP WORLD)
10:05 am - 10:35 am
THINK TANK: WHAT THE FTC’S BAN OF NON-COMPETE AGREEMENTS MEANS FOR YOUR TRADE SECRETS
Paula Kelly -
Associate General Counsel - IP,
Mars
Carolyn Brougham - Senior IP Counsel, Mars
Carolyn Brougham - Senior IP Counsel, Mars
In April 2024, the FTC issued a final rule banning non-compete agreements in most employment contracts across the US. Though new businesses, raised worker wages, lower healthcare costs and boosted innovation are set to result from the new measure, the rule would nonetheless eliminate a tool many businesses have used to protect trade secrets. With litigation set to explode, companies are indeed increasingly concerned about the risk of trade secret misuse and of breaches now that employees are able to work for competitors. Patent filings are also set to increase, be it from former employees starting their own business or companies choosing patent protection over trade secrets. Though nondisclosure and non-solicitation agreements remain available, it is imperative companies equip themselves now with a strategy to tackle this new law and protect their assets.
- Discover the importance of working closely with IT professionals in order to implement measures to restrict access to trade secrets now
- Assess key documentation to update and review now, including trade secret-related contracts as well as employee and training materials to ensure those entrusted with trade secrets are aware as to how to handle them
- Discover ways in which other jurisdictions, such as California or North Dakota, are navigating trade secrets protection without non-compete agreements in order to determine best steps going forward
10:40 am - 11:10 am
COFFEE BREAK & NETWORKING
11:15 am - 11:45 am
THINK TANK (TRACK 1): THE AI LICENSING SPECTRUM – OPEN, CLOSED, AND EVERYTHING IN-BETWEEN
Jonathan Torres -
Associate General Counsel, Patent Licensing, and Open Source,
Meta
In May 2024, the USPTO issued a Notice of Proposed Rulemaking suggesting changes to terminal disclaimer practices. Believed to stifle competition and lead to infringement cases involving too many similar patents, a patent subject to a terminal disclaimer would no longer be enforceable if a final, non-appealable decision has been made by a federal court of the USPTO that any one claim in the first patent is invalid under 35 U.S.C. § 102 or 103, or if a statutory disclaimer of a claim is filed for the first patent after any challenge to that claim has been made. Such a change necessarily means the increasing need to understand and agilely navigate rules against obviousness type double patenting for in-house counsel.
- Learn of latest developments on law such as In re Cellect to ensure patent strategies align with these principles
- Assess your patent portfolio in order to determine and identify potential issues of ODP to mitigate risk and optimize IP protection
- Explore the potential of fostering a culture of innovation within the business, all while adhering to patent standards, to effectively safeguard assets and maintain a competitive edge
10:05 am - 10:35 am
THINK TANK (BRAND PROTECTION TRACK): THE DANGERS OF COUNTERFEITING
Andy Forsythe -
Head of Brand Protection,
Nissan Group of North America
10:40 am - 11:10 am
COFFEE BREAK & NETWORKING
11:15 am - 11:45 am
THINK TANK (BRAND PROTECTION TRACK): REELING IN THE LINE – COMBATTING PHISHING, SCAMS AND EVERYTHING IN BETWEEN
Lindsey Furtado -
Head of Trademarks, Copyrights, Domains, and Brand Protection,
Block
Jordan Romanoff - Senior Director and Senior Managing Counsel, Co-Head Intellectual Property Legal, BNY
Jordan Romanoff - Senior Director and Senior Managing Counsel, Co-Head Intellectual Property Legal, BNY
10:05 am - 10:35 am
1:1 BUSINESS MEETINGS
10:40 am - 11:10 am
1:1 BUSINESS MEETINGS
11:15 am - 11:45 am
1:1 BUSINESS MEETINGS
11:50 am - 12:35 pm
TABLE 1: THE STRATEGIC VALUE OF IP DATA
Johannes Herbert -
Senior Product Manager, IP Consulting,
Dennemeyer
11:50 am - 12:35 pm
TABLE 2: PROTECTING YOUR PRODUCT’S MINIMUM ADVERTIZED PRICING ONLINE
11:50 am - 12:35 pm
TABLE 3: WHO OWNS WHAT? AI, ETHICS, AND DATA PROTECTION IN THE IP WORLD
11:50 am - 12:35 pm
TABLE 4: THE INNOVATION POTENTIAL – EMBRACING THE OPEN-SOURCE REVOLUTION
12:35 pm - 1:35 pm
LUNCH
1:35 pm - 2:20 pm
PANEL DISCUSSION: THE GLOBAL PATENT PLAYBOOK – BUILDING A PORTFOLIO ACROSS LOCAL AND FOREIGN JURISDICTIONS
Tenley Krueger -
Vice President of IP,
Technip Energies
Aamir Haq - Vice President & Associate General Counsel, Patents and Trade Secrets, Hewlett Packard Enterprise
Jeb Shookman - Head of IP for US, Vice President, ABB
Sharon Israel - Chief Policy Officer and Director for International Affairs, USPTO
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
Aamir Haq
Vice President & Associate General Counsel, Patents and Trade SecretsHewlett Packard Enterprise
2:25 pm - 3:55 pm
THINK TANK: PUBLIC ENEMY NUMBER ONE – CRAFTING AN EFFECTIVE IP STRATEGY AND ADAPTING YOUR BUDGETING TECHNIQUES AMIDST AN ECONOMIC CRISIS
Budget limitations continue to be the prime inhibitor for IP departments. Startups may struggle with a lack of resources, while more established companies might find it difficult to highlight the importance of IP to management, resulting in a disadvantage during budget allocation decisions. The issue also stems from the labyrinthine nature of IP budgeting, from the range of costly activities to the navigation of foreign filings. Within this context, it can be difficult to devise an IP strategy that will be able to protect assets and potentially drive revenue. In-house counsel must in this sense be equipped to adapt to the changing economic landscape.
- Explore techniques for optimizing costs and effectively allocating budget, such as negotiations with external counsel, regularly reviewing your portfolio to identify assets that could be put to better use elsewhere, and the potential value of budget management technology
- Weigh in on best prioritization practices, such as discussing potential patents with innovators, in order to enhance your strategy and reduce costs
- Understand the importance of gaining insight from forecasting and financial planning in order to ensure the budget aligns with overall business goals and financial constraints
3:00 pm - 3:30 pm
COFFEE BREAK & NETWORKING
2:25 pm - 3:55 pm
1:1 BUSINESS MEETINGS
3:00 pm - 4:30 pm
1:1 BUSINESS MEETINGS
3:35 pm - 3:40 pm
LIVE POLLING
3:40 pm - 4:25 pm
PANEL DISCUSSION: EXPLORING UNCHARTED TERRITORY – WHAT WILL THE AI ACT OF THE US LOOK LIKE?
Ian Cohen -
AVP, Global IP and Data Protection Counsel,
AECOM
Dan Smith - Patent and Licensing Strategist, Motorola Mobility (a Lenovo company)
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
