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Course Information
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2400 International Intellectual Property Litigation, Licensing and Cross-Border Issues
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 No cost or obligation
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| Course Length |
90 minutes
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| Course Price |
$ 119.00
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Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.
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Accreditation Information
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About the Instructor(s)
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Marc Adler
Rohm & Haas Company
Marc S. Adler is the Chief Intellectual Property Counsel and Assistant General Counsel of Rohm and Haas Company, a worldwide specialty chemicals and material company headquartered in Philadelphia, Pa. He is the current president of the Intellectual Property Owners Association and the past president of the Association of Corporate Patent Counsel.
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Q. Todd Dickinson
General Electric Company
Q. Todd Dickinson is Vice President and Chief Intellectual Property Counsel for General Electric Company, where he has corporate-wide responsibility for all intellectual property and technology licensing matters.
Mr. Dickinson previously served as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Prior to assuming his present position, he was a partner in the law firm of Howrey Simon Arnold & White, where he was a leader of its intellectual property practice.
With more than 25 years of experience in all aspects of intellectual property law and public policy, including patents, trademarks, copyrights, and trade secrets, Mr. Dickinson has written and spoken extensively on intellectual property issues, and has testified before Congress, the Federal Trade Commission and the National Academy of Sciences on the impact of intellectual property policies.
Mr. Dickinson is a member of the board of directors of the Intellectual Property Owners Association and the Council of the American Bar Association Intellectual Property Law Section. He is also the ABA delegate to the World Intellectual Property Organization. In 2004 and 2005, he was named one of “The 50 Most Influential People in Intellectual Property” by Managing Intellectual Property magazine, and is one of the Lawdragon 500 Leading Lawyers in America.
In the academic realm, Mr. Dickinson has taught or lectured at various universities including Stanford, Yale, University of California (Berkeley), MIT, Georgetown, George Washington and Tokyo University. He is a member of the Board of Visitors at his alma mater, the University of Pittsburgh School of Law, and is a member of the editorial advisory boards of the BNA Patent, Trademark & Copyright Journal.
Mr. Dickinson earned his J.D. in 1977 from the University of Pittsburgh and his B.S. from Allegheny College in 1974. He is admitted to the bars of the District of Columbia, Pennsylvania, Illinois and California, the U.S. Patent and Trademark Office, and the Court of Appeals for the Federal Circuit.
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Simon Greene
Elkington and Fife LLP
Simon K. Greene is a partner at Elkington and Fife LLP, a medium-sized practice of patent and trademark attorneys which has particular expertise in opposition work. He joined Elkington and Fife in 2000 and became a partner in 2002.
Prior to becoming a patent attorney, Mr. Greene obtained a Ph.D. in semiconductor physics at Cambridge University. He then joined the European Patent Office (EPO) in the Hague as a search examiner and developed skills in French, Dutch and German. He returned to the U.K. to train as a patent attorney, qualified as a British and European patent attorney in 1997, and was awarded the Gill prize for outstanding performance in the final exams for qualification as a U.K. patent attorney.
Mr. Greene works on oppositions at the EPO for a number of clients in a variety of technical fields and has experience with U.K. patent office revocation proceedings. Together with other team members, his practice also includes drafting work for clients varying from large multinational companies to small and medium-sized enterprises in a variety of fields. He also deals with prosecution matters, for which his experience at the EPO and his resulting understanding of examiners can be very helpful in achieving the required protection.
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Stephen Koch
ExxonMobil Chemical Company
Stephen P. Koch is Assistant Chief Attorney for Technology Licensing at ExxonMobil Chemical Company. His internationally-oriented practice focuses on the licensing of patent and trade secret intellectual property portfolios in the chemical process industry and the leasing of catalytic products used in those processes. He was previously Chief Patent Counsel at Univation Technologies, a leading licensor of intellectual property in the polyethylene process industry.
Previously, Mr. Koch held positions with ExxonMobil Upstream Research Company, where he specialized in geophysical and software patent portfolio development, and ExxonMobil Exploration Company, where he led teams focused on oil and gas leasing and joint venture development in West Africa.
Mr. Koch is a registered patent attorney at the U.S. Patent and Trademark Office, and received his law degree from the University of Houston. He has engineering degrees from Purdue University, the Massachusetts Institute of Technology, and the Woods Hole Oceanographic Institute.
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Paul Luckern
U.S. International Trade Commission
Paul J. Luckern has been a permanent administrative law judge at the U.S. International Trade Commission (ITC) since August 1984.
The ITC is an independent, nonpartisan, quasi-judicial federal agency established by Congress with a wide range of trade-related mandates. Under Section 337 of the Tariff Act of 1930, as amended, the ITC conducts investigations into certain alleged unfair practices in import trade. The ITC’s administrative law judges direct litigation, hold hearings and make initial determinations in investigations under Section 337. The majority of the alleged unfair trade practices involve intellectual property, in particular alleged infringement of U.S. patents.
Judge Luckern’s specialty is administrative law and intellectual property law. A native of Auburn, N.Y., Judge Luckern received a B.S. in chemistry, cum laude, from Georgetown University and an M.S. in organic chemistry from Cornell University. After working as a chemist at Eastman Kodak, he did further graduate work under a research grant and taught chemistry at the University of Southern California.
Judge Luckern was appointed an administrative law judge with the Social Security Administration in Pittsburgh, Pa., in November 1981. He was on detail with the ITC from April 30, 1984 to August 13, 1984.
From 1956 to 1960 Judge Luckern was a patent examiner in the U.S. Patent and Trademark Office. He received an LL.B. (J.D.) from Georgetown University in 1959. From 1960 to 1962, Judge Luckern worked under a contract as patent consultant in Basel, Switzerland for J.R. Geigy, A.G. From 1962 to 1964, he was a technical advisor to the late Hon. I. Jack Martin of the U.S. Court of Customs and Patent Appeals. He received an LL.M. from Georgetown University in 1964.
Judge Luckern started as an associate with Fish & Neave in New York City in August 1964 and later became a junior partner there. In 1971, he resigned from that firm to become a trial attorney in intellectual property with the U.S. Department of Justice. Judge Luckern
received U.S. Department of Justice Special Commendation awards for outstanding service in 1975 and 1979.
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Wayne Paugh
U.S. Department of Commerce
In May 2006, Wayne B. Paugh was appointed senior advisor to the U.S. Coordinator for International Intellectual Property Enforcement at the U.S. Department of Commerce. He is a top advisor on intellectual property matters involving both domestic and international counterfeiting and piracy.
Mr. Paugh joined the Commerce Department from the national law firm of Venable LLP, where he was a senior legislative counsel advising clients on intellectual property policy issues.
Prior to that, he served as chief of staff and attorney-advisor to former Congressman and then Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) James E. Rogan from 2002-2004. He was responsible for the development of intellectual property policy and the management of the Under Secretary’s staff, intra-agency communications, and all speaking engagements.
In 2001, Mr. Paugh served as counsel for the Intellectual Property Owners Association (IPO), a trade organization comprised of over 100 large and mid-sized companies including 3M, IBM, Motorola, Microsoft, Pfizer, Coca-Cola, Hewlett-Packard, and General Electric. At IPO he helped coordinate federal communications advocating effective IP protection.
From 1998-2001, Mr. Paugh served as legislative counsel to Congressman Dana Rohrabacher (R-CA), specializing in judicial, science and intellectual property issues. While working on Capitol Hill, he helped draft the pivotal American Inventors Protection Act, a landmark legislative effort which was signed into law in November 1999 (P.L. 106-113). Prior to his service in Congress, Mr. Paugh worked as a patent examiner for the USPTO and, before coming to Washington, D.C. in 1997, he worked as an applications engineer in the robotics and motion-control industries.
Mr. Paugh earned his J.D. from the George Mason University School of Law with an intellectual property sequence. He also holds a M.S. from the University of Miami, Florida and a B.S. in mechanical engineering and a B.A. in communications from the University of South Florida.
Mr. Paugh is an active member of the bars of Florida and the District of Columbia. He is also a member of the Federal Circuit Bar Association and the Republican National Lawyers Association, and is a lifetime member of the Tau Beta Pi Engineering Honor Society.
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Wolfgang von Meibom
Bird & Bird
Wolfgang von Meibom is chairman of Bird & Bird’s offices in Germany and joint head of the firm’s International Intellectual Property Group. He has established a leading international reputation for IP litigation, including patents, trademarks, and competition and antitrust matters. He is highly renowned for work in all areas of intellectual property, both nationally and internationally. He has been involved in many high-profile and technical patent cases, including those for the life sciences and pharmaceutical sectors.
During his career, Mr. von Meibom he has won a number of high profile and important cases for his clients. Many of these have been precedent cases in Germany.
The 2006/2007 JUVE Handbook of German Commercial Law Firms identified Mr. von Meibom as a leading lawyer in his field, and in 2003, 2004 and 2005, Global Counsel distinguished him as a “Highly Recommended Intellectual Property Practitioner in Germany,” adding in their 2004/2005 Handbook for Intellectual Property that he is a ;leading expert” and “pre-eminent lawyer with a strong international reputation.” Additionally, in 2004, Mr. von Meibom won the 2004 World Leaders European IP Award and the distinction of “best contribution to IP enforcement.” The Managing Intellectual Property Guide 2003 listed him as a leading patent and trademark law expert.
Mr. von Meibom is a member of numerous German and international intellectual property associations such as AIPLA, ALAI, EPLAW and IBA. He frequently lectures on patent law at international conventions and seminars. In June 2006, he was selected as a guest professor of the Civil Commercial and Economic Law School of the China University of Political Science and Law (CUPSL).
Mr. von Meibom is a faculty member of the Munich Intellectual Property Law Center and an advisory board member of the faculty of law at the Heinrich-Heine University in Düsseldorf. He is trilingual, speaking English, French and German, and is the author of many legal publications.
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Outline + Synopsis
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Outline
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Synopsis
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International Intellectual Property Litigation, Licensing and Cross-Border Issues
I. Introduction
II. International Patent Litigation in Europe
A. Multijurisdictional Patent Litigation
B. Jurisdiction: Germany
C. Other European Jurisdictions
D. Cross-Border Litigation (1)
E. Cross-Border Litigation (2)
III. European Opposition Practice
A. Dealing With a Competitor Patent
B. Patent Opposition
C. Multiple Proceedings
IV. Section 337 Disputes at the U.S. International Trade Commission
A. Basics of Section 337
B. Wall Street Journal Article
C. Recommendations
D. Question: ITC and Customs
V. Global Research and Development
A. Global Research Network
B. Globalization
C. Challenges
D. Exporting Technology
VI. U.S. Enforcement Strategy
A. Importance of Enforcement
B. STOP! Initiative
C. Enforcement Strategy
D. Russia and Beyond
VII. Export Laws and Gray Markets
A. Understanding the Gray Market
B. Applicable Law
VIII. International Intellectual Property Licensing
A. Business Approach
B. Business Climate
C. Appropriate Protection
IX. Questions and Answers
AfterWords®
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A line-up of European and U.S. intellectual property experts presents a jam-packed program touching on multiple aspects of international IP practice. European attorneys discuss multijurisdictional European patent litigation and tips on patent opposition practice in Europe. A U.S. International Trade Commission judge covers the basics of litigating a case before that body under Section 337 of the Tariff Act. Corporate IP attorneys present an overview of issues and challenges in global research and development and discuss a number of questions surrounding international IP licensing. The course also includes an update on what the U.S. government is doing to enforce IP rights internationally and a discussion of the problem of products being sold through gray market channels worldwide.
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Content Provided By
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The American Intellectual Property Law Association (AIPLA) is a 16,000-member, national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property. Members represent both owners and users of intellectual property.
AIPLA was formed in 1897 in order to maintain a high standard of professional ethics, to aid in the improvements in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.
To qualify for membership, applicants must be members in good standing of the bar of a court of record of the United States or any state. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries to be considered for membership, or be registered to practice with the Patent and/or Trademark Office of their country of citizenship. AIPLA also has student memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools. Approximately 70% of the active members are in private practice, 30% in corporate practice, with the remainder in the government or academia.
AIPLA holds three regularly scheduled conferences a year, Mid-Winter, Spring and Fall, at which the association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA holds many stand-alone seminars on specialized areas of intellectual property law at varying times of the year in locations around the United States. The association also produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published online three times a year), and CD-ROMs and tapes which include papers or speeches presented by speakers at the meetings. The AIPLA also publishes the Report of the Economic Survey biennially.
Furthermore, the AIPLA is actively involved in shaping U.S. intellectual property policy through its work on legislation and federal regulations affecting intellectual property cases in the U.S. courts. Internationally, the AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents, regularly participates in meetings of the World Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.
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Purchase course
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2400 International Intellectual Property Litigation, Licensing and Cross-Border Issues
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| Course Price |
$ 119.00
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Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.
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