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Intellectual Property Law Institute 2022 – Day One


  • City:
  • Start Date:2022-03-30 20:00:00
  • End Date:2025-03-30 20:00:00
  • Length:
  • Level:Various
  • Topics:Intellectual Property

$299.00 ProPass

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Overview

Join us for Part One of the 16th Anniversary of the Virtual IP Law Institute!

Intellectual property is a burgeoning practice area with nuances and ever-changing innovations and issues that can try the patience of even the most seasoned practitioners. No one can afford to remain unacquainted with the rights and potential liabilities that may arise. That’s why those in the know attend PBI’s Intellectual Property Law Institute year after year. Our 16th IP Law Institute has something for everyone from the novice to the expert.

Topics:

  • CAFC Year in Review
    This one-hour session will review the major developments in patent law from the Court of Appeals for the Federal Circuit in the past year, including issues arising in district courts, the U.S. Patent Office, and the International Trade Commission.
  • Wait, Who’s My Client? Pitfalls involving Client-Attorney Relationships – Ethics
    The Attorney-Client relationship forms the heart of every lawyer’s practice.  But often, be it because of client misunderstandings or special circumstances, IP attorneys may find themselves being asked to cross ethical boundaries in providing counsel and assistance to the wrong party.  We will look at several instances where failing to properly identify your client (or to properly advise your actual client) may give rise to ethical concerns.
  • Year in Review – Trademarks
    The panel will review trademark cases and legal developments since September of 2021, focusing on the impact of those cases and developments on advice to clients and businesses.
  • Year in Review – Trade Secret
    The Trademark Modernization Act of 2020 (the “TMA”), which was enacted on December 27, 2020, made significant changes to federal trademark law in the United States.  The USPTO adopted new rules to implement the TMA, which took effect at the end of 2021.  Donna Tobin and Julie Latsko of Royer Cooper Cohen Braunfeld will be discussing these important rule changes and what they mean for your practice going forward.  In particular, they will touch on topics including new ex parte non-use proceedings, requirements for letters of protest, variable office action response deadlines, and court orders concerning registration. 
  • Ten Years Since the Passage of the AIA – Where Do Things Stand
    The Leahy–Smith America Invents Act (AIA) was signed into law on September 16, 2011, with its central provisions implemented September 16, 2012 and March 16, 2013.  This session reviews the most important provisions of the AIA and the impact they have had on the practice of US patent law 10 years later.
  • The Trademark Modernization Act
    Please join us for an update on very recent developments in trade secret law, including cases at the U.S. Supreme Court, the Federal Circuit, the Third Circuit, and beyond.  Find out why publication of a patent does not necessarily destroy a trade secret, why the U.S. Supreme Court is considering punitive damages in a trade secret case, why American Airlines alleges that The Points Guy is unfairly using confidential information relating to frequent flier miles, and more.

All attendees will receive the course book as a digital download. A printed copy of the course book is available, at a discount to attendees, for $80. If you wish to purchase the printed version of the course book, please call PBI Customer Service at 800-932-4637.

Recorded in March 2022.

Faculty

Donna Tobin Esq.

Ms. Tobin is a partner in the law firm Royer Cooper Cohen Braunfeld LLC, chairs the Trademark & Brand Management Group and is a member of the Litigation Group. An Internationally recognized IP practitioner, Ms. Tobin was recently selected by World Intellectual Property Review as an outstanding IP Practitioner. She also regularly appears in Best Lawyers and Super Lawyers lists of the top IP lawyers. Ms. Tobin represents established and emerging companies worldwide in a variety of consumer products and services industries — including consumer products, cannabis, specialty foods, beverages, and home furnishings. A trusted advisor for more than 35 years, Ms. Tobin regularly counsels clients of all sizes on business strategy, and on how best to obtain, protect, enforce and monetize their trademarks, copyrights, trade secrets and patents. Ms. Tobin advises on complex areas of trademark and related laws, including in the areas of geographical indications, trade dress and designs. She promptly renders trademark search and clearance opinions, effectively counsels on trademark portfolio management and monetization, and successfully handles oppositions and cancellations before the Trademark Trial and Appeal Board. Ms. Tobin is an experienced IP litigator, helping her clients enforce their rights and defend against unfounded infringement allegations. In January 2018, Ms. Tobin was appointed for a three year term to the Trademark Public Advisory Committee (TPAC) of the U.S. Patent and Trademark Office which advises the Under Secretary of Commerce for Intellectual Property regarding the trademark operations of the U.S. Trademark Office. She also is an active member of the International Trademark Association, the Federal Bar Council, Intellectual Property Section, and the New York State Bar Association, Section on Women in IP. She is admitted to practice in New York State Courts; in the United States Courts of Appeals for the Second, Ninth and Federal Circuits; and in the United States District Courts for the Southern and Eastern Districts of New York. Ms. Tobin graduated from Boston University in 1985 earning her JD and Cornell University in 982 receiving her BS.

Julie Latsko Esq.

Ms. Latsko is an attorney at Royer Cooper Cohen Braunfeld LLC in Philadelphia. She focuses her practice on intellectual property litigation and counseling, as well as complex commercial disputes. Ms. Latsko has represented clients across many industries, including technology, health care and life sciences, fashion and design, finance, hospitality, food and beverage, and cannabis. She received her J.D. from Vanderbilt University Law School.

Kevin Casey Esq.

Mr. Casey is co-chair of both the Intellectual Property Group and the IP Litigation Group, and an active member of the Alternative Dispute Resolution Group, at Stradley Ronon Stevens & Young, LLP, an eight-office firm based in Philadelphia and comprised of over 200 lawyers from a variety of disciplines. He has been involved with trademark prosecution, client counseling (e.g., non-infringement or right-to-use opinions and trademark availability opinions), and litigation for over 35 years. Mr. Casey devotes about 30 percent of his time to trademark matters, including a significant foreign practice. He taught trademark law at Temple University School of Law for 23 years. Mr. Casey has also lectured around the country on the subject of trademarks. He has authored several papers on the subject of trademarks, including “Trademark Case Law Update” for the 4th, 7th, 11th, 12th, 13th and 14th Intellectual Property Law Institutes (Pennsylvania Bar Institute, April 2010, April 2013, April 2017, April 2018, April 2019 and July 2020); “Can and Should You Register Hashtags as Trademarks?”, Intellectual and Technology Law Journal, Vol. 31, No. 8, p. 3 (Aug. 2019), “Overview of International Agreements Protecting Trademarks,” Section I of International Trademark Practice for Paralegals (HalfMoon LLC 2003); “Problem Trademarks of the Descriptive-Misdescriptive-Deceptive Types,” Intellectual Property Law Newsletter (Pennsylvania Bar Association IP Law Section, Summer 2002); and “The Legal Advantage of A Strong Mark,” Intellectual Property Supplement to The Legal Intelligencer and The Pennsylvania Law Weekly (June 2002). Other topics on which Mr. Casey has written include selecting a mark, Internet violations, use requirements, the advantages of federal registration, intent-to-use applications, the benefits of principal versus supplemental registration, dilution, foreign (non-U.S.) trademark protection, and gray market goods. Copies of these articles are available at www.stradley.com. Mr. Casey served for two years as a judicial clerk to the Honorable Helen W. Nies, former Chief Judge of the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit hears all appeals from the U.S. Patent and Trademark Office (PTO) involving refusals to register trademark applications, notices opposing applications to register, and petitions to cancel existing registrations. Accordingly, the appellate court’s pronouncements on trademark law govern the PTO. Mr. Casey’s knowledge of the law from the unique vantage of a court insider, especially given the tutelage of Judge Nies (a former trademark attorney for Howrey & Simon in Washington, D.C.), and his role as President of the Federal Circuit Bar Association often prove helpful before trial, through trial and during any appeal.

Allison Gifford Esq.

Ms. Gifford focuses
her practice on trademark and copyright law and related business issues. She
has represented clients from start-ups to multinational corporations in a
wide variety of industries including building and construction materials and
supplies, minerals, chemicals, computer software and technology, retail,
apparel, nonprofit and charitable organizations, cosmetics, pharmaceuticals,
medical devices, online business services, e-commerce, restaurant and food
services, and financial and insurance services. Ms. Gifford has significant
experience managing, developing, maintaining and enforcing domestic and
foreign trademark portfolios including conducting and analyzing trademark
searches, filing and prosecuting trademark applications, coordinating
international trademark protection programs, and initiating and defending
proceedings before the Trademark Trial and Appeal Board (TTAB). Ms. Gifford
conducts IP due diligence for acquisitions and divestitures, negotiates and
drafts assignments, license agreements, co-existence and consent agreements,
and other related IP agreements. She also advises on domain name strategies
and enforcement and social networking issues. Ms. Gifford received her J.D.
from Temple University Beasley School of Law and her B.S. from the University
of Pittsburgh.

Elizabeth O’Donoghue PhD, Esq.

Ms. O’Donoghue concentrates her practice on all aspects of intellectual property, including patents, trademarks, copyrights, trade secrets, and licensing matters. She represents clients from individuals, start-ups, educational institutions, to large corporations in a variety of industries such as life sciences, pharmaceuticals, medical devices, chemicals, financial, retail, apparel, and online businesses. Ms. O’Donoghue has a technical background in anatomy and neuroscience, particularly applicable to the life sciences and pharmaceutical space, and her practice includes domestic and international patent preparation, prosecution, and management, as well as client counseling regarding patentability, infringement, and validity. She also assists clients in developing comprehensive and effective domestic and international trademark and copyright portfolios and strategies for enforcement. Ms. O’Donoghue received her J.D. from Villanova University School of Law, her Ph.D. from Boston University, and her B.S. from the University of Pittsburgh.

Rex Donnelly Esq.

As the Managing Shareholder of RatnerPrestia’s Wilmington Office, Mr. Donnelly enjoys a well-rounded practice with significant experience in every facet of Intellectual Property law. From devising comprehensive and cost effective protection strategies, to procuring rights that have value, to licensing, enforcing and/or defending those rights, Mr. Donnelly has been guiding clients large and small for two decades. Mr. Donnelly has also served as Delaware counsel through trial and as lead, local, consulting, or coordinating counsel for IP litigation throughout the U.S. and around the globe.

Diane Danoff Esq.

Ms. Danoff is a partner at Dechert LLP in Philadelphia, practicing in the Intellectual Property Litigation Group. She heads the group’s global Trade Secret Litigation practice. She has extensive litigation experience, developed during more than 30 years of practice, with trade secret, covenants not to compete, patent, trademark, copyright, unfair advertising, and invasion of privacy litigation, as well as other commercial litigation. Ms. Danoff has been named eleven times as a leading litigator by Chambers USA, a referral guide to leading lawyers in the United States. Chambers has called her “superb, thorough and decisive” and “recommended for her courtroom skills.” In 2019, Ms. Danoff was named an IP Star by Managing Intellectual Property. In 2015, Ms. Danoff was named a BTI Client Services All-Star, recognized as one of the top 25 IP lawyers nationwide for excellence in client service and having a deep awareness of the interplay between the complicated technical, legal and business issues facing IP clients. She is also listed in The Best Lawyers in America for Intellectual Property and Patent Litigation. Ms. Danoff has successfully litigated high-stakes intellectual property cases for clients such as Microsoft, WebMD, Bank of New York Mellon, Dow Chemical, Amkor, Tekni-Plex, Kellogg and MetLife. Her cases have spanned a broad range of highly sophisticated technologies, such as medical devices, specialty chemicals, computer technologies and financial services, and frequently involve injunctions. Ms. Danoff also speaks frequently on developments in intellectual property law and IP litigation strategies. She received her A.B. from Harvard University and her J.D. from the University of Chicago Law School. 

Luke Reilly Esq.

Mr. Reilly represents clients in a variety of intellectual property and commercial matters, focusing primarily on litigating patent and trade secret claims. His experience spans technology areas, ranging from wireless cellular systems to pharmaceutical compositions to printing technology. He has experience in all phases of litigation, including factual investigation, drafting complaints and answers, preparing motion and declarations, discovery, Markman briefing, working with experts and expert testimony, taking fact and expert depositions and pre- and post-trial briefing. Mr. Reilly also maintains an active pro bono practice, working with Philadelphia VIP to assist tenants involved in landlord-tenant disputes in Philadelphia Municipal Court.

Barry Cohen Esq.

Mr. Cohen is a partner at Royer Cooper Cohen Braunfeld LLC in Conshohocken. He concentrates his practice in the areas of business litigation, intellectual property litigation and licensing. Mr. Cohen regularly represents clients in the protection of their intellectual property rights and counsels them in developing intellectual property protection programs. Since 2011, Chambers & Partners USA has identified Mr. Cohen as a leading Intellectual Property Attorney in Pennsylvania. In 2004, he was selected by American Lawyer Media as one of only 30 attorneys under the age of 40 to be on the fast track in Philadelphia. Since 2009, Mr. Cohen has been selected by Law and Politics as one of Pennsylvania’s Super Lawyers. His recognized expertise has been tapped by CNBC, which has called upon him several times to serve as a commentator on current IP legal issues, and he is a frequent author of articles on a variety of legal matters. Mr. Cohen is the past chairman of the Pennsylvania Bar Association’s Intellectual Property Committee. He earned his J.D. from Temple University School of Law in 1993 and his B.A. in Economics and History from Emory University in 1990. In 2001, Mr. Cohen was a Fellow at the Temple University Academy of Advocacy.

Nancy Rubner Frandsen Esq.

Ms. Frandsen is a partner at the Philadelphia office of Baker & Hostetler. Her practice focuses on trademarks, copyrights, unfair competition, trade dress, cyberpiracy and domain name disputes. For over 35 years, she has enjoyed guiding clients not only through the core areas of trademark and copyright clearance, worldwide registration, maintenance and enforcement before the federal courts and the Trademark Trial and Appeal Board, but also through the more complex areas of the practice, including dilution, fair use, comparative advertising and the DMCA. Ms. Frandsen’s in-depth knowledge of her clients’ businesses, from individual entrepreneurs to major corporations, has enabled her to support and advance their unique objectives and goals. As a result, she has earned recognition each year in Chambers USA: Americas Leading Lawyers for Business in the area of intellectual property law, as well as in other publications. Ms. Frandsen received her J.D., cum laude, from Temple University Beasley School of Law and her B.A. from Ohio University. She is co-author of What the General Practitioner Should Know about Trademarks and Copyrights (6th Ed), published by ALI-ABA. Other published articles have appeared in both local and national publications on subjects such as trademark searching, product configuration in the Third Circuit, the federal right to copy, bad faith litigation, copyright remedies and the protection of nonverbal rights under trademark and unfair competition law. Ms. Frandsen has lectured on trademarks and trade dress for the American Law Institute, the Pennsylvania Bar Institute, the University of Pennsylvania, Temple University, Drexel University and the Philadelphia Intellectual Property Law Association. She is a member of the Philadelphia Chapter of the Copyright Society of the U.S.A. (chair, 2001-2003), the American Bar Association’s Sections on Intellectual Property and Litigation, the Philadelphia Intellectual Property Association, the International Trademark Association, the Philadelphia Bar Association and the Intellectual Property Advisory Committee for the Pennsylvania Bar Institute. Ms. Frandsen is also an adjunct professor at both Temple University Beasley School of Law and Villanova University Charles Widger School of Law., where she teaches a course on Trademarks and Unfair Competition

Benjamin Leace Esq.

Mr. Leace has over 30 years experience in intellectual property law and is a Shareholder and Management Committee member of RatnerPrestia. He has represented clients in a wide range of intellectual property areas, including litigation, licensing, opinions/counseling, and patent and trademark procurement. He focuses his practice in litigating intellectual property disputes in Federal Courts and before the Patent and Trademark Trial and Appeal Boards of the United States Patent and Trademark Office. Mr. Leace has been active in a number of professional organizations over the years, including the Benjamin Franklin American Inn of Court (past president),; the Philadelphia Intellectual Property Law Association (pst president); the Licensing Executive Society (past chair of the Philadelphia Chapter); and the International Trademark Association. He has taught seminars and been a panelist and presenter on various programs involving intellectual property and litigation. Mr. Leace has been honored each year as a Pennsylvania Super Lawyer by Philadelphia Magazine in the area of Intellectual Property Litigation and has been recognized in Chambers and The Best Lawyers in America. He holds a J.D. from the Temple University School of Law and a B.S. in Computer Engineering (with a minor in International Relations) from Lehigh University.

Michael Lovitz Esq.

Mr. Lovitz is senior partner and owner of Lovitz IP Law, recipient of a Tier 1 ranking in U.S. News–Best Lawyers “Best Law Firms.” His practice focuses on trademarks, copyrights, unfair competition, entertainment, trade secrets, copyright and trademark litigation, portfolio management, licensing and transactional matters for a broad range of domestic and international clients, including apparel, manufacturing, pharmaceutical, healthcare, financial, toys, jewelry, media/publishing, video game producers, software, Internet and technology companies, as well as comic book creators and publishers. Mr. Lovitz’s experience includes all aspects of foreign and domestic trademark availability clearance, filings, prosecution and maintenance, including ex-parte appeals to the TTAB and Court of Appeals for the Federal Circuit; title clearance for entertainment productions; copyright prosecution; copyright and trademark enforcement; trademark opposition and cancellation practice; trademark, copyright, patent and know-how licensing agreement negotiation, drafting and counseling; negotiating, drafting and counseling for technology, software, Internet and new media clients, including terms/conditions of use agreements, privacy policies, and publishing, media rights and option agreements; negotiating, drafting and counseling for trademark and/or copyright acquisitions and transfers, including television and film option agreements; negotiating, counseling and drafting of talent, crew and third-party agreements and releases for television and new media productions; IP portfolio management; litigation of trademark, unfair competition and copyright issues; domain name disputes; and related client counseling, including establishing trademark use guidelines, IP audits and due diligence reviews. He is a frequent instructor and lecturer on trademark, copyright, Internet, licensing, ethics and related issues, and has spoken at seminars and conferences sponsored by ALI-ABA, AIPLA, the Beverly Hills Bar Association, PBI, the Pennsylvania Bar Association, PIPLA and the DuPont Intellectual Property CLE Seminar. In addition, Mr. Lovitz developed the popular Comic Book Law School® seminar series, intended to inform and educate creators about IP rights and concerns, and has presented the series annually at Comic-Con International (San Diego) since 1994 and at WonderCon (SF/Anaheim/LA) since 2005. He is the author of numerous articles on copyright law, as well as The Trademark and Copyright Book published by Sirius Entertainment (2001). He received his B.A. in astrophysics and English in 1986 from the University of Pennsylvania and his J.D. in 1989 from the Temple University School of Law. Mr. Lovitz is a member of the California, Pennsylvania and Patent bars, the Beverly Hills Bar Association (BHBA), where he is ex-officio for the IP and New Media Section, and the International Trademark Association (INTA), where he recently served a term as Chair of the Titles and Characters Subcommittee of the Copyright Committee, and previously served a term as Chair of the U.S. Subcommittee of the Famous and Well-Known Marks (FWKM) Committee.

Hon. John F. Murphy

John Murphy is a judge for the United States District Court for the Eastern District of Pennsylvania. Before being appointed to the court, Judge Murphy was an IP litigation partner at Baker & Hostetler in Philadelphia, where he focused on patent, copyright, trademark, trade secret and other intellectual property disputes. He teaches patent litigation and strategy as an adjunct professor at Villanova Law School, and formerly taught the same class at Rutgers Law. Judge Murphy is co-author of the fifth edition of Patent Litigation and Strategy (West 2017) along with Federal Circuit Chief Judge Kimberly A. Moore and Emory Law Professor Timothy Holbrook. Judge Murphy also clerked for Chief Judge Moore. He attended Harvard Law School, where he was editor-in-chief of the Harvard Journal of Law and Technology. Before that, he obtained a Ph.D. in Chemical Engineering at Caltech and a B.S. in Chemical Engineering from Cornell University. 


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