8:30 Registration Opens and Continental Breakfast
9:00 Opening Remarks from Conference Co-Chairs
Moshe Malina
Associate General Counsel & Chief Patent Counsel
Citigroup
Barry J. Schindler
Co-Chair, Patent Prosecution Group
Greenberg Traurig, LLP
9:15 What is Patentable Now: The Current State of Patentable Subject Matter and the Viability of Business Method Patents
Laurence Bromberg
Executive Director and Patent Counsel
Morgan Stanley
Robert A. Stewart
Director and Chief Patent Counsel of Americas
UBS AG
Wayne P. Sobon
Associate General Counsel, Director of Intellectual Property
Accenture
James M. Bollinger
Partner
Morgan, Lewis & Bockius LLP
Thomas S. Biemer
Member
Dilworth Paxson LLP
- Impact of Comiskey, Nuijten, and Bilski on the future of BMPs
- What is patentable going forward and how are existing patents affected?
- The impact of KSR, MedImmune, eBay, and Seagateon businessmethod patents
- Working with the USPTO in light of the evolving case law
- Congressional reforms under consideration and the likely effectsthat they will have on BMPs
10:45 Networking Coffee Break
11:00 Capitalizing on the Heightened Standards of Patentability and Recent Procedural DevelopmentsWhen Defending Against Business Method Patent Infringement Claims
Kathlyn Card Beckles
Vice President & Assistant General Counsel
Technology, Sourcing & Intellectual Property
JPMorgan Chase Bank
Charles Kwalwasser
Intellectual Property Counsel
Barclays Capital Inc.
Jeffrey A. Berkowitz
PartnerFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
Moderator:
Mark P. Kesslen
Member, Chair of the IP Group
Lowenstein Sandler PC
- Successfully arguing that a claimant’s method or process is notpatentable subject matter under the evolving caselaw
- When claimant’s subject matter consists only of mental processes
- When claimant’s subject matter has both mental andphysical elements
- Using “obviousness” after Comiskeyand KSR to defeat a BMP infringement claim
- Defending against willful infringement claims post-Seagate
- Implementing an aggressive and strategic plan for confronting BMP trolls
- Coordinating your defense with other troll targets
- Winning the battle over the determination of damages
- Impact of recent shifts in venue preferences
12:30 Networking Luncheon
1:45 Ensuring and Using Accurate Valuations of Business Method Patents
Jubin Dana
Global Head of Patent Management, Visa
- Methodologies for accurately assessing the value of a potential BMP
- Incorporating the increased uncertainty of receiving an issuanceinto your cost/benefit analysis when making the decision to pursue a BMP
- Assessing the value of a pre-existing BMP
- Determining appropriate licensing fees to pay or require to be paid
2:30 Obtaining and Negotiating Business Method Patent Licensing Agreements: Considerations for Licensors and Licensees
John Cronin
Managing Director and Chairman
ipCapital Group
Kerry L. Konrad
PartnerSimpson Thacher & Bartlett LLP
- Licensor/licensee perspectives on where BMPs fit in licensingstrategies
- Impact of Bilskion pre-existing licensing agreements
- Maximizing the utility of cross-licensing agreements
- Applying lessons learned from the tech licensing world to the financial services and insurance industries
- How BMP “risk factors” are different from most other patentsin licensing
- Strategies for ensuring that a license stays in force
- Declaratory judgment – a new world
- How to license in the wake of the new DJ Supreme Courtrulings
- Factors to consider when determining whether to renegotiate a BMP licensing agreement
- Impact of Quanta on BMP licensing agreements
- Finding and exploiting new licensing opportunities
3:30 Afternoon Refreshment Break
3:45 Protecting Your Portfolio:Identifying and Curbing Infringements of Your Business Method Patents
Moshe Malina
Associate General Counsel & Chief Patent Counsel
Citigroup
Jeffrey D. Sullivan
Partner, Baker Botts L.L.P.
Dirk D. Thomas
Partner, Co-Chair IP Litigation Group and Life Sciences Practice
Dewey & LeBoeuf LLP
- Identifying potential infringements of your BMPs
- Deciding what action to take against a potential infringer:
- Identity of the potential infringer
- The cost-benefit calculus of pursuing potential infringers
- Anticipated outcome of each course of action
- Ensuring that your BMPs withstand an “obviousness” defenseafter Comiskeyand KSR
- Overcoming a non-patentable subject matter defense – what you must prove and how you prove it
- Making a successful claim of willful infringement in the wake of Seagate
- Proving “objective recklessness” on the part of the defendant
5:00 Conference Adjourns for the Day
8:30 Registration Opens and Continental Breakfast
9:00 Recap and Remarks from Conference Co-Chairs
Moshe Malina
Associate General Counsel & Chief Patent Counsel
Citigroup
Barry J. Schindler
Co-Chair, Patent Prosecution Group
Greenberg Traurig, LLP
9:15 Streamlining the Business Method Patent Prosecution Process in the Wake of Bilski, Comiskey,and Other Recent Cases
David Cunningham
Vice President, Assistant General Counsel & Director of Patent Law
The Hartford Financial Services Group, Inc.
Moshe Malina
Associate General Counsel & Chief Patent Counsel
Citigroup
Steven J. Soucar
Senior Counsel, Intellectual Property Law
IBM
William T. Ellis
PartnerFoley & Lardner LLP
Barry J. Schindler
Co-Chair, Patent Prosecution Group
Greenberg Traurig, LLP
- Obtaining the information necessary to effectively prosecute a patent in light of the evolving scope of BMPs
- Drafting claims to include a “non-routine” technical component
- Using clear and explicit language that the patent examiner will understand
- Determining which documents should be submitted to the USPTO and which should not
- Responding to an Office action that finds that subject matter is not patent-eligible
- The recent expansion of the USPTO’s Peer Review Pilot to include business method patents
- Knowing where to look when conducting prior art searches –moving beyond the USPTO into professional journals,textbooks, articles, and other published materials
- Considerations when a prior art search reveals a potentiallyrelevant pre-existing patent
- Writing your claims around the claim boundaries of a pre-existing patent
- Conducting a cost/benefit analysis of challenging the validity of an existing BMP
- Using inter partesreexaminations as a defensive tool
10:45 Networking Coffee Break
11:00 Managing Business Method Patent Portfolios: Strategies for Identifying and Protecting Innovation
Shailendra Bhumralkar
Director, IP Portfolio Development
SAP
Richard Brown
IP Counsel
SAP
Gerald L. DePardo
Intellectual Property Counsel
The Travelers Companies, Inc.
Steven M. Bauer
Partner
Proskauer Rose LLP
- Implementing a system for identification of patentable business methods
- Integrating BMPs into your patent portfolio
- Monitoring the industry:
- Ensuring that you are aware of your competitors’ patentsand how they impact you
- Knowing which BMPs are being asserted against yourcompetitors and using this information to your advantage
12:00 Alternatives to Business Method Patents:Exploiting and Protecting Intellectual Property Without Obtaining a Patent
Nicholas Baggaley
Senior Corporate Counsel
Oracle U.S.A., Inc.
Bill Harmon
Associate General Counsel
Microsoft Corporation
Victoria A. Cundiff
Partner
Paul, Hastings, Janofsky & Walker LLP
- When obtaining patent protection may actually limit the value of your IP
- Enhancing the value of your IP through trade secret
- Ensuring that you own your proprietary trading strategies and other business methods
- Detecting and preventing trade secret misappropriation
- Strategies for avoiding the acquisition of trade secrets from competitors
- Benefits and limitations of non-disclosure agreements and non-compete clauses as a means of protecting business methodsand processes
- When is disclosure of trade secrets “threatened” or “inevitable”and what can be done to reduce the risk of disclosure?
- Protecting trade secrets through “black box” monitoring and other creative remedies
1:00 Conference Concludes
POST-CONFERENCE WORKSHOP
Thursday, November 20th 2008
2:00 p.m. – 5:00 p.m. (Registration begins at 1:30 p.m.)
Drafting Techniques for Business Method PatentApplications: Strategies for Receiving a Patent IssuanceQuickly and Efficiently
David E. Boundy
Vice President, Assistant General Counsel
Intellectual Property Cantor Fitzgerald L.P.
Over the past few years, the number of business method patent applications filed each year has steadily increased. At the same time, the examination process in the Patent Office's business methods art units has become far less predictable. The broad view that originally prevailed after State Street may have been scaled back - or may simply be in an ongoing process of refinement. The pitfalls that destroy value for patents in all technologies have become more dangerous. Thus, it is more important now than ever before to be fully aware of the technological and legal issues in abusiness method patent; failure to do so will result in costly delays, loss of rights, or a worthless patent. In this interactive workshop, participants will learn the drafting strategies and techniques that will enable them todraft a business method patent application that will minimize delays,have a higher likelihood of approval, and command more value in the market. Participants will leave the workshop with the knowledge andinsights needed to:
- Accurately and effectively describe the business method or process
- Ensure that claims are directed to patent-eligible subject matter
- Avoid new obviousness challenges under KSRand Comiskey
- Draft applications to ease examination by the PTO
- Draft applications to maximize value and to overcome PTOreluctance to examine high-value applications
Conference Details