Schedule-at-a-Glance

November 1 - 3, 2017
Hyatt Regency Bethesda
Bethesda MD

IP Portfolio Management Course

*Tentative schedule, subject to change.

Wednesday, November 1, 2017
   
7 a.m. - 5 p.m. Registration
7 - 7:45 a.m. Continental Breakfast
                             
7:45 - 8 a.m. Welcome and Introductions
   
8 - 10 a.m. Invention Disclosures
  Instructors: 
Karen Boghossian, Inteum Company
Korie Counts, Ohio University
Hina Mehta, George Mason University
Steven Wood, The Research Foundation for State University of New York

Invention disclosures are the foundation for the entire technology transfer process.  This session will cover the overall process of disclosing an invention including why inventions are disclosed (the basics of Bayh-Dole) and the role of the technology transfer office.  You will learn the key components of a disclosure, the importance of gathering accurate and complete information in the disclosure and the importance of that information.  The session will describe how administrative staff can be effective in working with licensing staff and faculty.
   
Join us to learn the process associated with managing an invention from the initial disclosure to tracking revenues through license agreements - from the administrator's perspective.  The following will be covered: receipt of the invention disclosure; obtaining an assignment; working with faculty; tracking/docketing systems for inventions; filing and tracking systems; reporting/compliance, patenting, marketing, and licensing.  
 
10 - 10:30 a.m. Break
   
10:30 - 12 p.m. Intellectual Property Primer
  Instructor: Lee Heiman, Azos Al LLC

In this session, you will learn about the four basic types of intellectual property (IP), including patents, copyrights, trademarks, and trade secrets. The interaction of IP and know-how will also be addressed. You will learn how to quickly identify which type of IP applies to a particular technology; what is, and is not, covered by each type; the essential features of each type; the respective systems for protecting each type; and the differing types of IP administration.
   
Noon - 1:30 p.m. Lunch
   
1:30 - 3 p.m. Working with Internal Counsel
  Instructors: 
Joseph Contrera, Johns Hopkins Technology Ventures
Felicia Metz, University of Maryland

Join this session to learn what decisions are made internally verses what is sent out when you do have internal patent counsel. Who are the inventors? What is the scope of application? Hear how different universities make these decisions and how to operate within each scheme. 
 
3 - 3:30 p.m. Break
   
3:30 - 5 p.m. Working With Outside Counsel
  Instructors: 
Alice Bonnen, Myers Bigel PA
Jodi Falk, North Carolina State University
Janet Kisinger, Tech Launch Arizona, University of Arizona
Magdalena Morgan, Virginia Commonwealth University 
Fred Rosenberger, Shapiro, Gabor and Rosenberger, PLLC

Learn about the roles and responsibilities of the licensing office, the inventor(s), co-owners, the licensee, and outside patent counsel.  We will discuss when and how to contract with outside counsel, what information to provide, and how to efficiently and effectively facilitate the process from start to finish.  Find out what experienced patent attorneys consider the most difficult aspects of the process.  Discuss evaluation of attorneys and potential process improvements.
   
5:30 - 7 p.m. Welcome Reception
   
Thursday, November 2, 2017
   
7 - 8 a.m.  Continental Breakfast
   
8 - 10 a.m. The US Patent Application Process Explained from Start to Finish - Part 1
  Instructors: 
Glenn Ladwig, Saliwanchik, Lloyd & Eisenschenk
Lee Heiman, Azos Al LLC

Join us to learn or enhance your understanding of the U.S. patent application process from start to finish. The patent process requires a high-level skill set and a wide knowledge. These sessions will provide an overview of the process and terminology of patent preparation, prosecution, issuance, maintenance, and enforcement. Beginning with an Invention Disclosure, we will discuss patent searching, application drafting, timing and formal requirements for filing an application, dealing with the USPTO, patent issuance or abandonment, patent families, maintaining an issued patent in force, and how patents are used—and enforced if necessary—to support commerce.
   
10 - 10:30 a.m. Break
   
10:30 - 12 p.m. The US Patent Application Process Explained from Start to Finish - Part 2
  This session is a continuation of our discussion on patent types, the parts of a patent, terminology, and the patenting process including office actions, restriction requirements, notices of missing parts (declarations), advisory actions and requests for continued examinations, etc.  Tracing relationships between patents within a patent family will also be covered.

An exercise with a simple issued patent will help you understand how to read a patent and the role of the claims. You will be provided with an overview of patents including the basic types of patents, what makes something patentable, and the patenting process.  An emphasis will be placed on the administration of the patent process including the various terms and language that is used when discussing the patenting process.  You will leave the session with a clear understanding of the relationships between the various patents and patent applications within a patent family.
 
12 - 1:30 p.m. Lunch
   
1:30 - 3 p.m. The PCT Patent Application Process Explained from Start to Finish
  Instructors:
Kimberly Dunn, Thomas Horstemeyer LLP
Lee Heiman, Azos Al LLC
Albert Keyack, EPO Attaché to the US Directorate

Join us to hear the PCT patent application process explained from start to finish! Learn the steps involved in the PCT procedure including filing, International Search, International Publication, International Preliminary Examination, National Phase and Granting of Patent.
   
3 - 3:30 p.m. Networking Break
   
3:30 - 5 p.m. Fundamentals of Filing Foreign: Understanding the Process is to Your Advantage
  Instructors: 
Robert Alderson, Jacobacci & Partners Spa
Kimberly Dunn, Thomas Horstemeyer LLP
Jodi Falk, North Carolina State University

This session will provide an overview of the filing process in foreign jurisdictions, i.e. from a PCT application to National Stage and hopefully to Issuance, as well as offer tips for managing those ‘bumps in the road’ that may arise.  Foreign applications can be big money and there are many variables involved, unlike US practice which is a bit more structured, so having as much information in your arsenal of knowledge is essential to maintaining a systematic workflow and reasonable budget throughout prosecution.  
   
Friday, November 3, 2017
   
7- 8 a.m. Continental Breakfast
   
8 - 10 a.m. Managing an Intellectual Property Portfolio
  Instructors:
Brian Coblitz, George Washington University
Jodi Falk, North Carolina State University
Janet Kisinger, Tech Launch Arizona, University of Arizona
Felicia Metz, University of Maryland

You will learn various “tricks of the trade” in an informal, collegial setting with our panel of experts. Some of the tips and tools shared will include:  tracking IP deadlines; keeping forward momentum during prosecution; reviewing and approving legal expenses  (including EEI/LEDES); cost management; using patent annuity services; navigating and searching Public PAIR and other PTO websites; tracking metrics; and more.
   
10 - 10:30 a.m. Networking Break 
   
10:30 - 12 p.m. Toolbox Tips & Tricks for Tracking an Intellectual Property Portfolio, Critical Dates, Maintenance Fees, Annuities, Expenses and More!
  Instructors: 
Karen Boghossian, Inteum Company
Korie Counts, Ohio University
Jodi Falk, North Carolina State University
Steven Wood, The Research Foundation for State University of New York

This session will consist of tips, tricks and tools related to managing an intellectual property portfolio.  Participants will leave with answers to their questions, time-saving solutions, and other tools to use in their work upon returning to their office and to share with their coworkers. 
 
Noon Course Adjourns