May 12 & 13, 2010, Toronto                          This program has been accredited by the Law Society of Upper Canada

APRIL 28, 2010 - 12:00-1:30 PM ET           ...

COLLEEN SPRING ZIMMERMAN                       NAIM KHAN                              ...
DEVELOPING AND IMPLEMENTING A                                              the issues that must be con...
· The international harmonization process of                            identify and value the IP of p...

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Patents as a Competitive Strategy


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Patents as a Competitive Strategy

  1. 1. May 12 & 13, 2010, Toronto This program has been accredited by the Law Society of Upper Canada towards the professional development requirement for certification. Intellectual Property Law: 8 hours. 3 Patents as a rd Competitive Strategy Using Patents as Part of your Legal Strategy to Gain Competitive Advantage While Mitigating Infringement 2 DAY COURSE + 2 LIVE INTERNATIONAL WEBINARS + 15 AV LECTURES Workshop Included: Managing IT & IP Disputes who should attend Directors and Managers of Intellectual Property; Corporate Patent and IP Counsels; IP Lawyers and Consultants; Patent Agents and Examiners course highlights • Developing and implementing a winning patent strategy • Aligning IP with corporate strategy and cultivating corporate patent practices • Patent portfolio management and monetization • Strategic and practical issues relating to patent licensing • Latest issues in patent litigation and overcoming challenges in litigation management • Using patent analysis tools to evaluate the strength of your company’s patent portfolio versus that of your competitors • Understanding developments in international patent law to mitigate the risks of doing business globally • Using patents to protect new business methods • Strategies for patent litigation spanning multi jurisdictions • Tracking developments in obviousness and selection patents
  2. 2. PRE-COURSE LIVE INTERACTIVE WEBINARS INTERNATIONAL WEBINAR DISCUSSION PANEL APRIL 28, 2010 - 12:00-1:30 PM ET MAY 6, 2010 - 12:00-1:30 PM ET PATENT PROTECTION IN CHINA AND INDIA PATENT COOPERATION TREATY The patent systems in India and China are relatively young, although Application for a foreign patent can be made through the Patent rapidly maturing. China’s top legislative body approved a series of Cooperation Treaty (PCT), which provides a standardized interna- major amendments to the Patent Law of the People’s Republic of tional filing procedure that is shared by principal trading part- China in 2008, which were in part designed to align Chinese law ners, making it possible to seek patent protection simultaneously with international standards. As a signatory to the TRIPS Agreement, in a large number of countries by filing a single “international” India has modified its patent law in conformity with TRIPS Agree- patent application. This webinar will examine the workings of ment. This webinar will focus on the developing IP regulations in the Patent Cooperation Treaty. these countries and provide strategies for protecting your IP assets. · International patent filing as a competitive business strategy · The current state of India’s and China’s IPR landscape · Conducting effective patent risk analysis to ensure · Recent case law and how it will impact on your patent strategy maximum patent protection internationally · Registering patents with the appropriate Chinese or · The standardized international filing procedure Indian agencies · International Searching Authority’s written opinion · The prevalence of patent infringement in China and India on patentability · Analyzing trends to protect and enforce your patents · Using the international search report and written · Analysis of cases of patent infringement and opinion regarding the patentability of the invention disputes in China and India · Advantages of using the procedures under the PCT · Impact of the proposed 3rd amendment of · Ways to accelerate and improve your patent Chinese Patent Law applications globally MAY 6 INTERNATIONAL PANEL ELIZABETH CHIEN-HALE G. PETER NICHOLS WEBINAR PANELISTS Elizabeth Chien-Hale of the G. Peter Nichols is a shareholder Institute for Intellectual Property at Brinks Hofer Gilson and Panelists will answer your questions in Asia is a U.S. attorney specializ- Lione where he currently serves APRIL 28 INTERNATIONAL PANEL ing in patent and other forms of as the Chair of the Firm’s US intellectual property protection Patent Prosecution and Transac- JAY A. ERSTLING in the U.S. and China. tional Group. Jay Erstling of Patterson, Thuente, Skaar & Christensen EDWARD E. LEHMAN STEVEN E. WARNER provides a unique and valuable Edward E. Lehman of Esq., Steven E. Warner is a member perspective gained through his Lehman, Lee & Xu has advised of the Fitzpatrick, Cella, Harper wealth of experience in inter- international clients in all major & Scinto’s patent prosecution, national IP strategy and role in shaping economic sectors on investment, nanotechnology and interfer- international IP law policy. trade and dispute resolution mat- ences groups. ters in China since 1987. ALEX W. ZHANG JAY A. ERSTLING Alex Zhang joined King & Wood CHID S. IYER Jay Erstling of Patterson, in 2001 and specializes in intel- Chid Iyer’s practice at Sughrue Thuente, Skaar & Christensen lectual property law. He was a Mion PLLC includes patent litiga- provides a unique and valuable patent attorney of the Patent tion and prosecution in complex perspective gained through his and Trademark Office of the technical areas in the electrical wealth of experience in interna- China Council for the Promotion of Interna- and computer artsrical and com- tional IP strategy and role in shaping inter- tional Trade. puter arts. national intellectual property law policy.
  3. 3. LIVE COURSE FACULTY COURSE LEADER COLLEEN SPRING ZIMMERMAN NAIM KHAN as well as: Colleen Spring Zimmerman is Naim Khan is an Intellectual a partner of Borden Ladner Property Manager at Primal Fu- ALEX PORAT Gervais LLP and the Manager of sion (Waterloo), an information Alex Porat is currently Chief Patent Counsel the IP practice group (Toronto). architecture company. He has for Magna International, Inc., where he is She is recognized in Canada as managed patent portfolios in responsible for management of all IP mat- a leading expert in IP by LEXPERT. She has consumer electronics and software arts for ters. He manages an IP portfolio of thou- extensive expertise in corporate transactions the past several years. His related responsi- sands of patents and trade-marks, and has involving IP and IT. bility has been to carve an IP strategy and established corporate policies for protect- execute it in corporate environment. ing innovation, containing legal costs, and extracting value from the IP portfolio. PETER E.J. WELLS CO-LECTURERS Peter Wells is a partner of Lang GAVIN BOGLE Michener LLP practicing in To- Gavin Bogle is a patent lawyer and Certified ANDREA RUSH ronto, and is a member of its IP Licensing Professional (CLP), registered to A Partner with Heenan Blaikie Group. He is certified by the Law practice before the USPTO as well as in New LLP, Andrea Rush is a member of Society of Upper Canada as a York and Ontario. At Iovate Health Sciences the bars of Ontario and Quebec, specialist in Civil Litigation as well as in Intel- Inc., he oversees the Legal Department. He as well as a registered patent lectual Property Law (Patent, Trademark and was an associate at Fitzpatrick, Cella, Harper and trade-mark agent. She has Copyright). & Scinto in New York where his practice specialized in IP since 1985, and represents included ANDA litigation as well as patent domestic and foreign corporations and their C. DONALD BROWN prosecution. After Fitzpatrick, he was Pat- counsel, in matters of registration, litigation Donald Brown of Heydary Ham- ent Counsel to Wyeth’s Biological Sciences and the licensing of IP. ilton is an intellectual property group. lawyer whose practice is focused DAVID A. AYLEN in all areas of intellectual prop- LENNI CARREIRO erty law including patents, trade- Lenni Carreiro is currently a member of the David Aylen is a Gowlings Part- Intellectual Property Department of Sanofi ner, Certified by the Law Society marks, copyrights and industrial designs in addition to IT matters. Pasteur, the vaccines division of the Sanofi- of Upper Canada as a Specialist Aventis Group. Her practice spans all areas in IP, having received that des- of IP counseling, protection and enforce- ignation in 1998. He is a regular KEN CLARK Ken Clark’s IP practice at Aird ment with a focus on developing, managing committee member within the International & Berlis LLP focuses on patents, and coordinating worldwide patent portfo- Trademarks Association (INTA), the Ameri- trade-marks and copyright and lios and policies, including obtaining, licens- can Intellectual Property Law Association related areas such as Internet ing and enforcing SP’s patent rights. and the Intellectual Property Institute of Canada (IPIC). law. He is a registered Trade- mark Agent. His areas of particular inter- SHELDON BURSHTEIN est include litigious aspects of trade-mark Sheldon Burshtein is a partner prosecution, as well as general IP litigation, of Blake, Cassels & Graydon LLP. including pharmaceutical patents litigation He practises in the Toronto office and Patented Medicines (Notice of Compli- as a member of the Intellectual ance) Regulations proceedings. Property, Information Technol- ogy, Life Sciences, Sports & Entertainment SANJAY D. GOORACHURN and Franchising Groups. He is a lawyer and Sanjay D. Goorachurn is counsel a patent and trade-mark agent. He acts for in Smart & Biggar’s Montreal of- numerous businesses in the management, fice. His practice consists primarily prosecution, licensing and enforcement of of advising clients on the IP and patent rights. technology aspects of commercial transactions, and counseling clients on the strategic management and exploitation of their IP assets. 3rd Patents as a Competitive Strategy
  4. 4. LIVE COURSE PROGRAM DEVELOPING AND IMPLEMENTING A the issues that must be considered when making the decision on WINNING PATENT STRATEGY whether to license and best practices for drafting and negotiat- ing patent license agreements. To be effective, a patent strategy must be concerned with more than just IP protection, it must incorporate methods for growing · Current trends in patent licensing and monetizing the patent portfolio, as turning your patent port- · Establishing a licensing strategy aligned with folio into real value is essential in increasing your organization’s patent strategy and overall business strategy competitiveness. This session will provide best practices and strate- · Structuring a licensing contract gies for implementing your company’s patent strategy. · Cross-licensing agreements · Alternative to licensing options: patent pooling · Identifying the right strategy to build your IP portfolio · Key issues to address in your patent strategy PATENT LITIGATION STRATEGIES · Deciding whether or not to seek registration for a patent as opposed to maintaining a trade secret Patent litigation is usually a complex matter that is taxing on a · Identifying strengths and weakness in current IP positions company’s resources, whether you are defending against a claim · Creating an integrated IP strategy (injunctions and damages) or asserting a claim. This session will look at the latest issues in patent litigation. ALIGNING IP WITH CORPORATE STRATEGY · The role of portfolio management in decreasing With senior management looking for more return on your com- risk and protecting intellectual assets pany’s IP, it is now more critical than ever to use patents to gain a · Recent decisions and developing trends in patent litigation proprietary market advantage. To do this, your patent strategies · Developing a proactive litigation strategy to must be geared towards the business objectives. This session will defend against aggressive attacks demonstrate how you can position yourself to use patents as com- · Pre-litigation strategies: preparing your petitive weapons to capture new markets, surpass the competition patent portfolio for litigation and increase market value and revenue. · Protecting against patent trolls · Screening corporate objectives: defining and PATENT ANALYSIS AS TOOLS FOR COMPETITIVE incorporating IP objectives INTELLIGENCE · Creating or redesigning patent strategy based on IP objectives and internal feedback from business units Patent information and patent analysis can be of tremendous · Key patent practice processes to improve internal value to your company as tools for competitive intelligence, as pat- communication ent information is critical in forecasting and identifying prevailing · Raising patent awareness within your organization technological trends as well as monitoring the activities of com- · Guiding IP objectives and patent strategy from technology map petitors. This session will look at methods for extracting valuable competitive intelligence information from your patent analysis. PATENT PORTFOLIO MANAGEMENT AND MONETIZATION · Analyzing the patent landscape and tracking Taking the proper steps in developing and managing a patent competitive intelligence portfolio from the outset will aid in preventing the process from · Patent mining and mapping as tools in becoming unwieldy, with soaring costs and excessive demands on making strategic decisions time. This session will examine patent commercialization and mon- · Using patent information to help businesses target etization strategies. niche markets, monitor the activities of competitors and locate potential partners and investors · Patent monetization strategies in the new economy · Emerging technologies that can be used to value from your patent portfolio augment patent analysis · Structuring your portfolio: prioritizing patents · Establishing a licensing strategy aligned with DEVELOPMENTS IN INTERNATIONAL PATENT LAW patent strategy and overall business strategy · Practical portfolio management tools, tips and techniques Since patent rights extend only within the country that they are · Assessing various monetization strategies granted, companies looking to do business internationally must ap- ply for patent protection in each country whose market they wish to PATENT LICENSING enter. This session will examine the state of international patent law. While patent licensing can be an efficient way to realize a return · Latest cases and policy changes at the Canadian on your patent, in order to develop a successful licensing program and U.S. Patent Offices there are several factors a potential licensor must consider, as the · Steps you can take to better protect your assets process is not without its risks and pitfalls. This session will examine upon entering the global market
  5. 5. LIVE COURSE PROGRAM · The international harmonization process of identify and value the IP of potential acquisitions, discover where substantive patent law the gaps are and determine which target has IP assets that offer · Current international filing trends the best strategic fit with the IP assets of the acquirer. · International patent enforcement issues · Valuing IP in an M&A context BUSINESS METHOD PATENTS · Determining the degree of a synergistic fit and its impact on value Business method patents, patents that disclose and claim new · Assessing IP in relation to an acquiring firm’s existing IP business models and methods of doing business, have become very · Potential issues arising between the seller and buyer important in the competitive marketplace. This session will look at · Considerations when acquiring patents from distressed companies the state of the law in Canada and strategies for using patents to · Protection of IP during M&A protect new business methods. · What is required to establish the necessary components of a business method patent · Recent case law and other trends impacting the value of business process IP · Legal requirements for getting business method patents WORKSHOP · Strategies for prosecuting business method patents PATENT LITIGATION IN MULTIPLE JURISDICTIONS Workshop Leader: In today’s global economy, companies looking to leverage their patent rights could end up engaged in litigation in multiple juris- P. BRADLEY LIMPERT dictions, not only within Canada, but in foreign courts as well. This Cameron MacKendrick LLP session will look at developing global patent filing strategies that comply with diverging international patent laws, as well as global litigation strategies. MANAGING IT & IP DISPUTES This interactive workshop will examine how to minimize the risk · Developing global patent filing strategies that of future disputes and possible financial losses and the best way comply with diverging international patent laws to resolve licensing disputes should they arise. · Multi-jurisdictional patent litigation case law developments · Considerations prior to litigation: establishing a litigation team · Creating a dispute resolution mechanism · Adapting litigation strategy to jurisdiction · Drafting and enforcing arbitration clauses and decisions · Using evidence in parallel proceedings · Using self-help provisions to avoid litigation · Perspectives of judges and arbitrators OBVIOUSNESS AND SELECTION PATENTS · Hints and tips for litigation · Settlement considerations The 2008 decision in Apotex Inc. v. Sanofi-Synthelabo, the Supreme Court of Canada unanimously upheld the validity of a system of genus and selection patents and further refined the law regarding the tests for anticipation and obviousness in Canada. This session will look at this decision. · Impact of the SCC’s decision in Apotex Inc. v. Sanofi-Synthelabo · Key considerations in defining a selection patent · Tests for anticipation and obviousness · Patent protection involving selection patents AV PROCEEDINGS CD IP STRATEGY DURING M&A Audio/Video segments clickable slide by slide Papers and overheads also included The valuation of a potential target’s IP during an M&A is essential Print any of the material for your own use for setting the total value of a deal. Moreover, the best acquisition target is usually the one whose IP assets make the best synergistic fit with the acquirer’s IP assets in the context of the joint compa- ny’s long-term business strategy. This session will look at how to 3rd Patents as a Competitive Strategy
  6. 6. MULTIMEDIA PRESENTATIONS (MP CD) Register for Patents as a Competitive Strategy and we will give you free of charge a CD comprising the following taped presentations from recent Federated Press courses and conferences. Presented in their entirety with complete audio and accompanying PowerPoint slides totaling 757 minutes of expert learning, these presentations are included in the price of this year’s course as are the webinars. IP Value Drivers: The Importance Aligning IP with Corporate Strategy: Valuation of Technology-Related IP of Context establishing a corporate James L. Horvath & Steven Hacker, James L. Horvath & Steven Hacker, patent culture Deloitte & Touche LLP Deloitte & Touche LLP Sandra Beauchesne, Time: 36 Slides: 1 Time: 48 Slides: 1 Bereskin & Parr LLP Time: 55 Slides: 21 Patent Outsourcing Patent Valuation Methodology Dr. Jeffrey H.M. Charuk, and Issues Patent Litigation in Multiple Larial Proteomics Inc. Brian W. Gray, Jurisdictions Time: 43 Slides: 10 Ogilvy Renault LLP Donald MacOdrum, Time: 68 Slides: 1 Lang Michener LLP Understanding China’s Changing Time: 44 Slides: 78 IPR Landscape Cross-Border IP Transactions James E. Longwell, Brian D. Segal, IP Licensing Agreements Gowling Lafleur Henderson LLP Baker & McKenzie LLP C. Ian Kyer, Time: 24 Slides: 26 Time: 62 Slides: 53 Fasken Martineau DuMoulin LLP Time: 77 Slides: 1 Licensing Emerging Technologies Patent litigation Strategies Marcel D. Mongeon, Dino P. Clarizio, Intellectual Asset Protection in Russia: McMaster University Goodmans LLP Recent Changes in IPR Time: 42 Slides:15 Time: 43 Slides: 40 Robert A. MacDonald, Gowling Lafleur Henderson LLP Patents, Trade Secrets, and Strategies Developments in International Time: 61 Slides: 13 to Mitigate Loss of Monopoly Power Patent Law Mark W. Sajewycz, John Orange, Obviousness and selection Patents Gowling Lafleur Henderson LLP Blake, Cassels & Graydon LLP Joan M. Van Zant, Time: 52 Slides: 18 Time: 53 Slides: 30 Swabey Ogilvy Renault LLP Time: 51 Slides: 27 Registration: To reserve your place, call Federated Press toll-free at 1-800-363-0722. In Toronto, Cancellation: Please note that non-attendance at the course does not entitle the registrant call (416) 665-6868 or fax to (416) 665-7733. Then mail your payment along with the registration to a refund. In the event that a registrant becomes unable to attend following the deadline form. Places are limited. Your reservation will be confirmed before the course. for cancellation, a substitute attendee may be delegated. Please notify Federated Press of any changes as soon as possible. Federated Press assumes no liability for changes in program Location: Metropolitan Hotel, 108 Chestnut Street, Toronto, Ontario, M5G 1R3 content or speakers. A full refund of the attendance fee will be provided upon cancellation Cost: The attendance fee for the course is $2075 per person and covers attendance for one person in writing received prior to April 15, 2010. No refunds will be issued after this date. Please and the lecturers’ presentation material as well as both webinars and the multimedia presentations note that a 15% service charge will be held in case of a cancellation. listed above. The fee further includes lunch on both days, morning coffee on both days and refresh- Discounts: Federated Press has special team discounts. Groups of 3 or more from the same ments during all breaks. You may purchase a CD containing the edited AV Proceedings of the course organization receive a 10% discount. Groups of 7 or more from the same organization re- and webinars. ceive a 15% discount . No reduction in price if registration is received after date of webinar, but the AV Proceedings CD (with audio of webinars) will be included free. Time: This course is a two-day event. Registration begins at 8:00 a.m. The morning ses- sions start promptly at 9:00. The second day ends at 4:00 p.m. Phone: 1-800-363-0722 Toronto: 416-665-6868 Fax: 416-665-7733 TO REGISTER FOR PATENTS AS A COMPETITIVE STRATEGY REGISTRATION COSTS NUMBER OF PARTICIPANTS: Name ¨ COURSE (WEBINARS + MP CD INCLUDED): $2075 Title Department ¨ COURSE + AV PROCEEDINGS: $2075 + $125 = $ 2200 Approving Manager Name ¨ AV PROCEEDINGS: $499 Approving Manager Title ¨ WEBINAR I OR WEBINAR II: $499 ¨ WEBINAR I AND WEBINAR II: $950 Organization NOTE: Please add 5% GST to all prices. Address Proceedings CD-ROM will be available 60 days after the course City Province Postal Code takes place Telephone Fax e-mail Enclose your cheque payable to Federated Press in the amount of: Please bill my credit card: Expiration Date: GST Reg. # R101755163 ¨ AMEX ¨ VISA ¨ MASTER CARD Signature: PBN#101755163PG0001 Payment Enclosed: ¨ Please invoice. PO Number: Payment must be received prior to April 21, 2010 WHEN CALLING, PLEASE MENTION PRIORITY CODE: MAIL COMPLETED FORM WITH PAYMENT TO: Federated Press P.O. Box 4005, Station “A” For additional delegates please duplicate this form and follow the PCST1005/E Toronto, Ontario M5W 2Z8 normal registration process