12:30 Registration for the Main Conference
1:00 Co-chairs’ Opening Remarks
Brinks, Hofer, Gilson, & Lione, P.C. (Ann Arbor, MI)
Heads of Sales and Marketing for North America
EISENMANN Corporation (Crystal Lake, IL)
1:15 Utilizing New Patent Portfolio Valuation Metrics for Green Technologies Post-America Invents Act
Lawrence P. Zale
Intellectual Property Counsel
Alstom Power, Inc. (Scranton, PA)
Brinks, Hofer, Gilson, & Lione, P.C. (Ann Arbor, MI)
Finnegan, Henderson, Farabow, Garrett, & Dunner, L.L.P. (Washington, DC)
The AIA’s upending decades of law developed around the statutes governing both the procurement and the challenging of a granted patent’s validity have not only created uncertainty in both prosecution and litigation practice, but also call into question tried-and-true methods employed to valuate these critical instruments for protecting IP. As green technology firms relying heavily on patents to produce revenue and justify their overall market value enter this brave new world, it is prudent to review how granted patents have been valued under the old regime and the ways in which these methodologies will be challenged and even obviated in the face of patent reform.
- Outlining methods for patent valuation under the pre-AIA regime
- What patent characteristics affected value before?
- How did established PTO procedures create certainty in valuation from the time a patent was granted?
- Devising appropriate and useful new models for establishing valuations
- Distinguishing between buyer and seller valuation
- Using comparables as a basis for value
- Analyzing the implications of the new post-grant review procedure
- Detailing the post-grant review procedure and its differences from existing methods for challenging a patent’s validity
- Discussing the harsh new estoppel requirements included in this procedure
- How will the new procedure impact the certainty of a patent’s viability?
- Evaluating the effects of the first-to-file regime on patent quality
- Utilizing methods for creating durable patent applications in spite of time constraints placed on inventors by the new race to the PTO
- What will this new system do to the cost of prosecution?
- Determining whether the inclusion of enhanced third party prior art submission procedures will create doubt as to a patent’s longer term viability
2:15 Licensing Green Technologies: Contracting for an IP License that Ensures Maximum Benefit and Minimal Risk
Kaye Scholer, L.L.P. (New York, NY)
Executive Vice President and General Counsel
Gevo, Inc. (Englewood, CO)
- Engaging in due diligence when negotiating a license for a green technology
- Scrutinizing any existing license agreements involving a counter-party
- Examining the different effects of existing exclusive licenses vs. non-exclusive licenses
- Obtaining revenues from green IP licenses
- Exploring methods for reaching equitable agreements providing maximum benefit for each party
- Researching similar licensing agreements that were priced effectively
- Investigating the disclosure provision of the AIA and its potential effects on negotiations
- Maintaining required levels of confidentiality
- How much can be said in negotiations without running afoul of this provision?
- Managing expectations in crafting a licensing agreement
- Recognizing when pursuing a green technology license is worthwhile
- Identifying the core deal asset
- Ensuring that expectations are driven by realistic valuations based on applicable models
- Negotiating the gap between buyer and seller
3:15 Refreshment Break
3:30 Understanding Your Rights and Obligations When Collaborating With Academia and Government Entities
J. Steven Rutt, Ph.D
Foley & Lardner, L.L.P. (Washington, DC)
Licensing Officer, Office of Intellectual Property & Industry Research Alliances
University of California, Berkeley (Berkeley, CA)
Intellectual Property Division Law Deputy Chief Counsel
U.S Department of Energy (Argonne, IL)
Among the most critical sources of funding for green technology development for both start-up companies and established players are universities and government entities. While these institutions represent important resources for the development of novel technologies in this space, the support of each comes with particular and sometimes onerous obligations. As such, any business looking to work with either must be well aware of the rights and responsibilities associated with university and/or government collaborations. This session features experts with long experience working with these entities who will share with you best practices for careful cooperation with these vital resources.
- Avoiding common pit-falls associated with employees or business partners who are also university professors
- Comprehending the privileges and responsibilities associated with receiving university grants
- Grasping the differences between exclusive/non-exclusive licenses granted by universities
- What are each party’s expectations in university collaborations?
- Weighing the advantages and disadvantages of licensing technology from a university
- Receiving government grants and understanding the commitments and obligations associated with them
- Investigating the “marching orders” rights of government entities that fund R&D projects
- Analyzing the Federal Acquisition Regulations and their impact on government collaborations
4:45 Balancing Cost Against Risk in Freedom To Operate (FTO) Searches and Conducting Effective IP Due Diligence
Global Intellectual Property Counsel
General Electric Power & Water (Trevose, PA)
Sterne, Kessler, Goldstein & Fox, P.L.L.C.
- Operating within financial constraints in patent searches
- How to conduct an FTO search inexpensively when determining whether to proceed in developing a nascent invention
- Ascertaining how FTO searches for various green technologies differ from those in other sectors
- Determining when a green technology is sufficiently distinct to write around existing patents on similar technologies
- Conducting international patent searches
- How does the AIA’s inclusion of foreign prior art impact international patent searches?
- Establishing when an international patent search has been sufficiently thorough
- Ascertaining where the thrust of an international search should be directed
- Pointing out where to search based on filing activity
5:30 Conference Adjourns to Day 2
Thursday, June 28, 2012
7:30 Continental Breakfast
8:15 Co-chairs’ Opening Remarks
8:30 Expert Strategies for Leveraging Existing Resources and Commercializing Green Technologies
CEO and Managing Director
Global Midwest Alliance, L.L.C. (Chicago, IL)
In order to attract funding, start-ups and small companies in green technology spaces must demonstrate certain qualities indicating that a return on investment is both likely and sufficient to justify an initial investment. This session’s keynote address features a seasoned commercialization professional discussing what venture capitalists and other investors look for in green technology companies seeking funding and share insights on the best ways to acquire the necessary means to grow a small, innovative company into a large and successful one.
- Cataloguing the different ways a green technology can obtain private funding and evaluating the strengths and weaknesses of each approach
- Discussing which qualities are most attractive to investors in selecting a green technology company to fund
- How is investing in green technologies like and unlike investing in other sectors?
- What are some common characteristics of companies that were able to attract investment?
- What about those which were unable to do so?
- Analyzing the importance of patents and other IP protection in deciding whether to invest in a company
- How are patent and trademark quality evaluated?
- Determining the best strategy for producing an attractive IP portfolio
9:30 Overcoming Obviousness Challenges: Evolving Standards Used to Evaluate Green Technology IP Post-KSR
Morrison & Foerster, L.L.P. (San Francisco, CA)
McDonnell, Boehnen, Hulbert, & Berghoff, L.L.P. (Chicago, IL)
- Examining obviousness post-KSR for green technologies
- Considering how a green technology borrowing from prior existing fields will affect findings of obviousness
- Showing novelty when combining known elements
- Emphasizing unexpected results
- Detailing the substantial evolution of technology
- Investigating the issue of inherent anticipation and green technology
- Comparing obviousness based on prior art to new double-patenting type obviousness to understand the doctrines’ collective impact on green technology IP portfolios
- Recent litigation on obviousness and green technologies
- How does the mechanical nature of green technology impact findings of obviousness by judges and juries?
- Judge or jury?
- Who should decide the ultimate question of obviousness?
- Successfully mounting an obviousness defense in the courts
10:30 Refreshment Break
10:45 Strengthening Your Business Architecture Today to Realize Maximum Value of Your Green IP Portfolio Tomorrow
Chief Intellectual Property Counsel
Foro Energy, Inc. (Littleton, CO)
Heads of Sales and Marketing for North America
EISENMANN Corporations (Crystal Lake, IL)
McDermott Will & Emery L.L.P. (Houston, TX)
- Incorporating a patent strategy into an effective business plan for a green technology firm
- Writing sufficiently broad and numerous claims to ensure that the patent covers as many eventualities as possible
- Including article claims, device claims, system claims, processing claims, claims that are incorporated into a product
- Constructing a family of patents that interrelate and reinforce one another
- Ensuring that a supply chain has value:
- Creating a system that ensures that every aspect of a product requires your company’s IP assets in order to function
- Constructing a plan for the future that indicates a robust business model
- Why is it not enough to simply have created a quality invention?
- Detailing the ways in which the company will grow, achieve goals, and continue to increase in value
- Crafting a pipeline of products that will demonstrate future profit growth
12:00 Networking Llunch
1:15 Obtaining Certification Marks and Crafting a Trademarking Strategy that Results in Strong Registered Marks Unique to Your Product
Vice President, Terra Choice
Director, Markets Development, UL Environment (Reading, PA)
Espinosa Trueba, P.L. (Miami, FL)
- Discussing what constitutes an effective green mark
- Describing how the PTO determines if something is a suggestive mark
- How approval of green trademarks has changed over time
- Recounting the dilution of green “buzz words” in the last decade
- Outlining best practices for obtaining a strong green trademark today
- Confronting the challenges of descriptiveness and crowded field inherent in crafting unique marks for green technologies
- Creating and guarding strong green brands in a marketplace increasingly crowded with “eco-friendly” marks
- Handling rejections of “eco-friendly” marks as being generic or merely descriptive
- Investigating the most effective ways to obtain a green certification mark
- What standards must be satisfied?
- Scrutinizing the phenomenon of “faux certifications”
- Cataloguing recent litigation regarding green certification marks
2:30 Utilizing Effective Tactics to Protect and Enforce IP rights and Maintain Trade Secrets in Foreign Jurisdictions
Perkins Coie, L.L.P. (Los Angeles, CA)
Luce, Forward, Hamilton & Scripps, L.L.P. (San Diego, CA)
- Identifying the major issues confronting green technology IP overseas
- Discussing the increased importance of overseas operations to green technology companies and how it has influenced IP protection in this space
- Exploring the effects of corporate structures on protecting trade secrets in foreign jurisdictions
- Protecting IP in emerging markets with weak legal protections
- Entertaining alternative strategies to avoid IP infringement
- Considering the usage of trade secrets in the place of patenting inventions
- Using trade secrets to protect the process in particular
- Keeping part of the process secret while patenting other aspects of it
- Investigating when extra-territorial reach of US patent law
- Analyzing the Transocean v. Maersk case
- Considering the patent rights associated with off-shore wind production and other unusual green technology platforms
3:30 refreshment Break
3:45 constructing an effective Green Branding Strategy that conforms to Truth-In-advertising requirements: Greenwashing, FTC Guidelines and more
King & Spalding, L.L.P. (Atlanta, GA)
- Examining the “greenwashing” phenomenon
- Enumerating examples of greenwashing
- What are the kinds of risk and exposure that occur when green branding crosses the line into greenwashing?
- Challenging competitors that engage in these tactics
- Dissecting the FTC’s Green Guides
- Building a compliant green marketing program
- Communicating environmental benefits on product packaging and advertising within the scope of the FTC’s Green Guides
- What are acceptable environmental claims?
- When will a company’s claims run afoul of the Green Guides?
- Defining best practices for complying with the Green Guides
- Cataloguing litigation over green trademark and marketing strategies so far
4:45 Conference Concludes