Join the Rocky Mountain District Export Council (DEC), International Trade Administration (ITA) and U.S. Patent & Trademark Office (USPTO) on Thursday, May 24th to address your international questions related to protecting and enforcing patents, trade secrets, trademarks and copyrights. Law firms and private businesses will benefit from this opportunity.

Join us to discuss common misunderstandings and mistakes that U.S. businesses often make in attempting to protect and enforce their intellectual property rights (IPR). This discussion will include issues related to China, where counterfeiting and piracy are critical concerns for U.S. firms. Each of the USPTO and ITA attorneys will identify and explain problem areas related to their specific IPR focus. Participants will have an opportunity to pose questions related to export issues involving patents, trade secrets, trademarks, copyright and domain names.

$55 registration for the program, lunch and all materials. To Register Go To: https://emenuapps.ita.doc.gov/ePublic/newWebinarRegistration.jsp?SmartCode=2Q8Z. Questions? Contact Danielle.Blakely@trade.gov / 303-844-6623 x214 or Suzette.Nickle@trade.gov with the U.S. Commercial Service in Denver.

Join us on May 31 and June 1, 2012 for our 10th Anniversary of the Rocky Mountain IP Institute in Denver!

This year’s Institute will provide you with new information, new ideas, new resources, and new energy! You’ll leave with additional insights, knowledge, and practice tips that you can use to be a better practitioner. You’ll receive materials from every session –but you get to choose the sessions that are most relevant and important to you.

Want to expand your knowledge base? With over 30 sessions to choose from, this is your opportunity to learn about developments in IP and tech law.

The 10th Annual IP Institute is your one-stop conference to get comprehensive coverage of the intellectual property law landscape and its changes.

Join your colleagues from throughout the United States to learn, to renew acquaintances, meet new colleagues and potential clients, and grow your practice in 2012 and beyond.

IP INSTITUTE HIGHLIGHTS:

“In the Court Where I Live”
KEYNOTE ADDRESS by Chief Judge Alex Kozinski, US Court of Appeals for the Ninth Circuit

“The Fertile Verge of the Digital Age: Intellectual Property, Litigation and the Market”

- Chief Judge Alex Kozinski, US Court of Appeals for the Ninth Circuit
- Mark Lemley, Stanford University Law School & Durie Tangri, LLP
- Ian Ballon, Greenberg Traurig, LLP
- William Coats, Kaye Scholer LLP

“IP Law and Practice As Seen From the Digital Beach“

- Dennis Crouch, PatentlyO Blog and University of Missouri-Kansas City
- R. David Donoghue, Chicago IP Litigation Blog and Holland & Knight, LLP
- Michael Smith, Eastern District of Texas Federal Practice Blog and Siebman, Burg, Phillips & Smith, LLP
- Moderated by Molly Kocialski, Moderator, Oracle Corporation

2012 Patent Law Update – Mark Lemley, Stanford University Law School & Durie Tangri, LLP

2012 Licensing Update – Jeff Dodd, Andrews Kurth, LLP

2012 Trademark Update – David Bernstein, Debevoise & Plimpton, LLP

2012 Copyright Update – Ian Ballon, Greenberg Traurig, LLP

Attorney Conduct During IP Litigation, the Award of Fees, and Ethics – David Hricik, Mercer University School of Law

Please see the brochure and website for pricing information.

When the CFO asks about your company’s exposure to NPE patent risk, it can be challenging to provide answers to questions such as: What are our chances of being sued and how much will it cost? What factors impact whether we will be targeted? What patents are most likely to be litigated or bought/sold in the marketplace? Which sectors are most heavily targeted by NPEs? How does the patent marketplace impact NPE risk? Leveraging RPX’s proprietary databases and insights, this discussion will provide a look into the murky NPE patent marketplace as well as framework for answering these questions using RPX’s unique methodology for predicting case frequency, severity and costs followed by an overview of what its membership of 100+ operating companies are doing to lower NPE patent risk.

Mallun Yen is Executive Vice President of RPX Corporation, the leading provider of patent risk management solutions, where she is responsible for corporate development, M&A, structured acquisitions and new product development. With over 100 members ranging from Fortune 10 to start-up companies, RPX helps clients reduce exposure and costs from patent litigation by providing rational alternatives to traditional litigation strategy, including by using pooled defensive buying, proactive patent acquisitions, syndicated transactions, and its unique patent and marketplace intelligence and proprietary databases.

Ms. Yen joined RPX following an eight-year career at Cisco where, as Vice President of Worldwide IP and Deputy General Counsel, she was responsible for developing and implementing the company¹s strategy to protect, enhance, defend, and capture the value of its IP. She built a group of over two dozen senior industry professionals with responsibility for all patent, copyright and trademark strategy, development, prosecution, disputes, licensing, acquisitions, marketplace, and policy, as well as patent pools and standards-related matters. She is credited with evolving Cisco’s IP strategy to advance its business objectives and drive competitive differentiation, which marked the company¹s transformation into a global IP leader.

Ms. Yen chairs the advisory board of the Berkeley Center for Law and Technology at UC Berkeley Law School, serves on the advisory board for Stanford Law School’s Center for Law, Science and Technology, and has served on the Executive Committee of the Association of Corporate Patent Counsel. She is a founding board member of ChIPs, an organization dedicated to the advancement, mentoring and retention of women in the IP field. She is a frequent invited speaker on a wide range of topics, including IP strategy, patent best practices, patent defense strategies, IP marketplace and acquisition, patent pools, innovation and standards. By invitation, she has testified before the FTC on the “Evolving IP Marketplace.”

This event will immediately precede the IP Section/Silicon Flatirons Event, but is separate event. Cost: $ 50 for non-members; $ 40 for members. Cost includes a catered lunch. RSVP by calling (303) 860-1115 ext. 727 or by emailing lunches@cobar.org before Noon on Friday, April 13, 2012. We formally invite all current law school students to attend this event on a complimentary basis. Please register by Noon on Friday, April 13, 2012.

Cancellations after Noon on Friday, April 13, 2012 and no-shows will be billed for the cost of the program. Checks can be sent to the Colorado Bar Association, 1900 Grant St., Suite 900, Denver, CO 80203. Also, please call or e-mail your RSVP when sending a check. Checks should be made payable to the CBA. If leaving a message, please spell your name, specify that you are attending the April IP Section Lunch, leave your phone number, and specify if you would prefer a vegetarian lunch.

Litigation over false, misleading and deceptive advertising is on the rise. As companies fight for marketshare in these increasingly competitive times, too often they turn to exaggeration, hyperbole or outright lies to sell their products and disparage their competitors. When faced with such unfair competition, victims have numerous options — they can complain to regulators, can sue in court, or can turn to the advertising industry’s forum for self regulation, the National Advertising Division (“NAD”) of the Counsel of Better Business Bureaus. Each of these potential forums has advantages and disadvantages, but in many cases, the NAD will be the best choice because it provides a relatively quick and inexpensive process for resolving advertising disputes before a panel of true advertising experts. In this program, David H. Bernstein – who has handled more than 50 NAD matters on behalf of both challengers and advertisers – will provide an overview of the NAD process, will discuss the relative advantages of the different forums, and will review recent developments in advertising law.

David H. Bernstein of Debevoise & Plimpton LLP is one of the nation’s leading IP litigators. He has handled high-profile trademark, advertising and domain name lawsuits for such clients as Alcon, American Express, Bayer, The Coca-Cola Company, Chrysler, Cubaexport, Louis Vuitton, the National Football League, Nestlé, Novartis, Pernod Ricard, Unilever and Yves Saint Laurent. With respect to advertising litigation, Mr. Bernstein regularly represents clients in federal courts, before regulators such as the Federal Trade Commission, before the television networks, and in the National Advertising Division of the Counsel of Better Business Bureaus. In addition to his active litigation and arbitration practice, Mr. Bernstein teaches advanced trademark law at New York University Law School and George Washington Law School, is a leading domain name neutral with the World Intellectual Property Organization and National Arbitration Forum, and is a prolific author including of the new treatise “The Law of Advertising, Marketing and Promotion.” In 2011, Managing Intellectual Property magazine selected Mr. Bernstein as the Outstanding IP Litigator of the Year, the International Trademark Association awarded Mr. Bernstein the President’s Award, and the International Who’s Who of Trademark Lawyers selected Mr. Bernstein as one of the top ten trademark lawyers in the world.

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found here.

In Response to the USPTO Request, the IP Section worked closely with the offices of Denver Mayor Hancock, Governor Hickenlooper, Senator Bennet, the Metro Denver Economic Development Corporation and Accelerated Colorado (“the Coalition for a Colorado Satellite Patent Office”) to prepare and submitted Colorado’s proposal to the USPTO on January 27, 2012. Additional letters of support and the signed Joint Resolution 12-008, Concerning the State of Colorado’s support for locating a patent office in the Denver metro area, adopted by the Colorado Assembly during the 2012 legislative session were submitted to the USPTO on January 30, 2012. The IP Section would like thank everybody who submitted comments on and letters in support of a Colorado Satellite Patent Office.

Senator Bennet’s Office is currently running an on-line petition in support of a Colorado Satellite Patent Office. To-date, Senator Bennet’s office has already received 2300 electronic signatures on the petition. The IP Section encourages you to view the petition and electronically sign on if you support it.

Please let the IP Section Leadership know if you have any questions or comments. Otherwise, the Leadership will continue to keep you updated on this Initiative.

Thanks in advance!

Best,
Molly

Cost: $ 150 for IP Section Members and Colorado IP Inn of Court members, $ 195 for non-members, and CU/DU Law students are free. Cost includes breakfast, lunch, and a cocktail reception. RSVP by calling (303) 860-1115 ext. 727 or by emailing lunches@cobar.org before Noon on Monday, February 13, 2012. Cancellations after Monday, February 13, 2012 and no-shows will be billed for the cost of the program. Checks can be sent to the Colorado Bar Association, 1900 Grant St., Suite 900, Denver, CO 80203. Also, please call or e-mail your RSVP when sending a check. Checks should be made payable to the CBA. If leaving a message, please spell your name, specify that you are attending the Intellectual Property Section USPTO Road Show, leave your phone number, and specify if you would prefer a vegetarian lunch. We have received 8 general credits for the program.

USPTO Speakers:

Remy Yucel. Remy Yucel is a Group Director in Technology Center 1600 whose subject matter area comprises biotechnology, biochemistry, organic chemistry and pharmaceutical patent applications. Ms. Yucel has been with United States Patent and Trademark Office since 1996 and was named Group Director in April 2008. She is also the Director of the Central Reexamination Unit (CRU). Ms. Yucel is the recipient of several Department of Commerce Awards including the Bronze Medal and the Performance Excellence Award. Prior to becoming a Director, Ms. Yucel was an examiner, primary examiner and supervisory patent examiner in the biotechnological arts; with particular emphasis on gene regulation, gene therapy and transgenic organisms.

Ms. Yucel holds a B.S degree in biology and a B.A. in French Literature from Duke University, a Master’s degree in Plant Science from the University of Maryland and a Ph.D. degree in molecular genetics/plant pathology from the University of California. In May 2006, Ms. Yucel graduated from The Catholic University’s Columbus School of Law.

During the 110th Congress, Ms. Yucel served as intellectual property counsel to Senator Orrin G. Hatch of Utah. She provided both scientific and technical advice on various legislative initiatives involving intellectual property. Much of her time was spent on the Patent Reform Act of 2007 (S. 1145) of which Senator Hatch was lead Republican sponsor. Ms. Yucel also contributed to the Senate’s version of follow-on biologics legislation co-sponsored by Senators Hatch, Kennedy, Clinton and Enzi as well as to the Orphan Works bill passed by the Senate.

Jean C. Witz. Jean Witz joined the USPTO in 1988 as a Patent Examiner and examined a variety of applications covering subject matter as diverse as cosmetics, pharmaceuticals and therapeutic treatments. In 2000, she was awarded a Bronze Medal for superior federal service, and in 2005, she was awarded an Exceptional Career Award for exceptional performance and service. In 2001, Ms. Witz also earned AIPLA recognition for outstanding contribution to the integrity of intellectual property law.

In 2006, she was selected as the Appeals Specialist for Technology Center 1600, where she participated in all pre-appeal conferences, as well as a large number of appeal conferences, and served as point of contact for the Technology Center with regard to matters related to appeal. In 2007, Ms. Witz became a Quality Assurance Specialist. During that year, she was invited to speak at the Chemical Practice Committee of the AIPLA at the annual meeting held in October and in 2008 and again in 2010 participated in visits to intellectual property groups in Seattle, San Francisco, San Diego and Boston. During the summer of 2010, she worked with the Office of Governmental Affairs, focusing on patent reform legislation.

Special thanks to our sponsors:

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found here. As we indicated in our December 9, 2011 announcement, the IP Section is working closely with Colorado community leaders to prepare and submit a coordinated response from Colorado.

In connection with preparing the Colorado Response, please see the email below from Senator Bennet requesting letters of support from the IP community. In addition to providing letters of support to Senator Bennet for inclusion in the Colorado Response, the IP Section Leadership also encourages you to email your letter directly to the USPTO. The letters of support can be electronically submitted to the USPTO by e-mail at satelliteoffices@uspto.gov. In the subject line of your email, please include the following information: “Docket No. PTO-C-2011-0066; Nationwide Workforce Program.”

Dear Friend,

I am writing to you today to ask for your help to promote Colorado as the location of a new satellite office for the U.S. Patent and Trademark Office (USPTO). As you may know, I helped secure a provision in the America Invents Act that empowers the USPTO director to create three or more regional satellite offices across the country over the next three years. Since President Obama signed the America Invents Act into law, I have been working with Senator Udall to bring one of those offices to Colorado. Over the past year, we have sent letters to President Obama and USPTO Director David Kappos encouraging them to consider Colorado for a satellite office. The Colorado IP legal community has been an invaluable partner in this process. Now I need your help to make the case for Colorado in this final push.

We all know why our state would be an ideal location for a new USPTO satellite office. We are home to one of the country’s most vibrant clusters of innovation, technological development, and economic growth. Our innovation-based industries are heavily dependent on the approval of new patents for growth. Additionally, our state boasts a large number of technology workers that would be excellent long-term patent examiners. These unique qualities, among many others, make Colorado the perfect choice for a new office.

The USPTO is seeking comment on potential locations for future satellite offices. I would like you to join me in replying to the USPTO’s request. My office will be collecting letters of support to deliver to the USPTO as part of a cohesive package of responses. Please send your letter to Monisha Merchant, my Sr. Adviser for Business Affairs, atmonisha_merchant@bennet.senate.gov no later than January 17, 2012. That will ensure that we have enough time to deliver them to the USPTO by the deadline.

Thank you for partnering with me on this endeavor to bring valuable jobs and economic growth to Colorado.

Sincerely,

Michael F. Bennet
United States Senator

Send letters to:

Monisha Merchant
Sr. Adviser for Business Affairs
atmonisha_merchant@bennet.senate.gov
303-455-5995

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found at http://www.federalregister.gov/articles/2011/11/29/2011-30717/request-for-comments-on-additional-uspto-satellite-offices-for-the-nationwide-workforce-program.

The IP Section is working closely with the offices of Denver Mayor Hancock, Governor Hickenlooper, Senator Bennet, the other members of the Colorado Congressional Delegation, Colorado Office of Economic Development, Denver Metro Chamber of Commerce and others to prepare and submit a coordinated response from Colorado to the USPTO’s Request by the January 30, 2012 deadline.

In connection with preparing the Colorado Response, the Leadership of the IP Section would like to solicit any comments that yo! u may have regarding Colorado’s candidacy for a satellite patent office under the factors set forth in the USPTO’s Request. Please email all comments to cobarptocomments@hotmail.com by December 30, 2011.

By J. Gregory Whitehair, IP Resolution Co.

On September 27, 2011, Chief Judge Rader keynoted the Judicial Conference for the Eastern District of Texas in a wide ranging speech. Tapping his experience as both a Federal Circuit Judge and as a trial judge by designation in the district, Judge Rader weighed in on array of topics, from the high quality of ED Tex. juries, to the dearth of fine local restaurants. He then spoke in detail, in his own inimitable style, on six ways to improve patent litigation today:

1. Detailed discovery management and control by the courts;
2. More effective, focused summary judgment practice;
3. Efficient venue and joinder decisions by plaintiffs;
4. Better and earlier case evaluation to gauge proportionality;
5. Dependable rules of practice to create predictability; and
6. “Troll and grasshopper control.”

You can find the entire speech here. His nomination of “trolls” (in his words, any party that attempts to enforce a patent “far beyond its actual value or contribution to the prior art”) and “grasshoppers” (any entity which “refuses to license even the strongest patent at even the most reasonable rates”) as legitimate candidates for “extraordinary case” fee shifting should become a classic. He also took the opportunity to roll out the Federal Circuit Advisory Council’s new Model Order Regarding E-Discovery in Patent Cases, discussed in the Patent Litigation link.

Greg is a nationally certified mediator and arbitrator and owns IP Resolution Co., a national ADR consultancy specializing in IP and high-tech disputes. He is a registered patent attorney and a long-time Denver trial lawyer. He is active in the Colorado IP American Inn of Court and is Vice-chair of the Dispute Resolution Section of the Colorado Bar Association. He can be contacted at jgw@ipresolutionco.com.

Judge Rogers and Charles Schill will share their insights on the unique aspects of patent litigation practice before the International Trade Commission, , new developments arising from the America Invents Act, and why ITC patent litigation is more than just expedited District Court patent litigation.

Cost: $35 for IP Section Members and INTA members, $45 for the general public, and CU/DU Law students are free. Cost includes a catered lunch and valet parking. RSVP by calling (303) 860-1115 ext. 727 or by emailing lunches@cobar.org before Noon on Tuesday, November 1, 2011.