IP Strategy is a Business Strategy

Do you have questions about patents, trademarks, and other ways to protect intellectual property?   Come and meet West Coast Regional U.S. Patent and Trademark Office (USPTO) Assistant Director Stephen Koziol as he leads a discussion on intellectual property (IP) strategies and why startups should consider them.

  • Overview of intellectual property types:  patents, trademarks, copyrights, trade secrets
  • Why should innovators and entrepreneurs consider protecting their IP?
  • Understanding the risks of early disclosure
  • What types of resources and assistance are available through the USPTO?

Trademark and Copyright Basics for Graphic Designers

This program is specifically tailored for graphic designers and highlights the fundamentals of both trademarks and copyrights. It explains the potential pitfalls of infringement and how to help avoid possible problems by searching the USPTO database (with a practical demonstration of the necessary steps to conduct a search for pictorial elements rather than words). The overall program focuses on how success as a graphic designer has as much to do with legal and ethical considerations as it does about being creative.

Presented in part with the Silicon Valley USPTO.

Trademark Basics: What Every Small Business Should Know Now, Not Later

Geared toward business start-ups and new entrepreneurs, this program starts by identifying how trademarks, domain names, and business name registrations all differ. It explains why selecting a strong mark (one that is both federally registerable and legally protectable) is important. The program highlights why doing a complete search to avoid a likelihood of confusion is critical and whether an attorney should be used. You will learn about what may happen if another trademark owner believes they have stronger rights in a mark and sends a “cease-and-desist” letter.

Trademark basics also covers application filing issues and how to avoid “scams” of companies not affiliated with the USPTO. It concludes by discussing what happens after registration and the owner’s responsibility to enforce registration rights.

Craig Morris, U.S. Patent and Trademark Office (USPTO) Managing Attorney for Trademark Educational Outreach, will present and answer your questions.

MIP Trade Secrets Forum

The Forum will feature interactive discussions on the emerging issues, opportunities and challenges in the advancing trade secrets landscape.

To find out more information – View the agenda.

FREE attendance for in-house IP counsel, general counsel.

SVIPLA private practice email recipients receive 20% off the standard rate.

Register here.

Hands-on Patent Search Workshop

As part of its Patents Education Curriculum, the Silicon Valley USPTO will host a two-hour workshop on patent searching. Learn to search databases used by patent examiners on the USPTO Universal Public Workstations (UPWS) which are publicly available at the regional office. A supervisory patent examiner will instruct the attendees on the following:

  • What are the benefits of searching?
  • Where can you search?
  • When should you search?
  • How do you search using USPTO search tools?

This session is designed for inventors, entrepreneurs, and those who have a beginning to intermediate knowledge of patents and would like to learn more about patent searching.

IP Strategy is a Business Strategy

Do you have questions about patents, trademarks, and other ways to protect intellectual property? Come and meet West Coast Regional U.S. Patent and Trademark Office (USPTO) Director John Cabeca as he leads a discussion on intellectual property (IP) strategies and why startups should consider them.

  • Overview of intellectual property types:  patents, trademarks, copyrights, trade secrets
  • Why should innovators and entrepreneurs consider protecting their IP?
  • Understanding the risks of early disclosure
  • What types of resources and assistance are available through the USPTO?

Trade Secrets: Important Lessons for Management

Program:
Data in various forms, along with innovative business models and strategies, form the core assets of most business. Protecting this information from loss and contamination is a critical responsibility of management. This discussion, led by Silicon Valley veteran Jim Pooley, will draw lessons from recent cases like Waymo v. Uber and a $706 million verdict in Texas.

Topics to include:

  • Three factors affecting “reasonable efforts” to protect confidential information
  • Major areas of information security risk and how to reduce them
  • How to create and sustain an effective program that aligns with existing company processes

Speaker:

James Pooley’s storied career mirrors the development and innovation of Silicon Valley. He began in Palo Alto in 1973 trying commercial cases, primarily fights between startups over proprietary technology. He was a senior partner at several large firms where he focused on trade secret and patent litigation.

In 2009, he was appointed by the White House to become Deputy Director General of the World Intellectual Property Organization, an agency of the United Nations, and was responsible for the international patent system (PCT). Upon returning to Silicon, he completed “Secrets: Managing Information Assets in the Age of Cyberespionage,” which is about the increasing difficulty of keeping corporate information private in a hyperconnected world.

In his private practice, he serves as a trusted advisor and co-counsel to legal departments and law firms on IP litigation and strategy, and conducts pre-litigation investigation and analysis of domestic and multinational IP issues, drawing on his global experience. He helps design and improve information security strategies and programs for companies, including trade secret risk analysis, protection systems, training, and crisis response. He frequently works in conjunction with cybersecurity professionals to limit risks to key corporate assets

The Business of Responsible Deal Making Presented by IAM Globe Business Media Group

Future-proof your licensing strategy so that it thrives in an uncertain market.  As the licensing landscape remains uncertain in many of the world’s major markets, it has never been more important for licensors and licensees to stay up to speed on deal-making best practices and the changing legal and regulatory environments. Returning for the 4th year, IAM’s Patent Licensing 2018 will provide delegates with indispensable insight into the key domestic U.S. and global licensing trends.

Hear the latest updates, insights, and best practices for adapting your licensing strategy to ensure that it thrives in turbulent market conditions:

  • Gain insight into the dos and don’ts of licensing transactions from licensees and licensors
  • Determine the best strategy for licensing across borders
  • Learn the secrets of closing successful licensing deals
  • Hear the latest on how to determine what is fair and reasonable in SEP FRAND licensing
  • Meet, network, and engage with senior decision makers and experts across the licensing world

For details and registration, click here.
Use code LES20 to receive 20%* off the registration fee.

CLE credits:
Patent Licensing 2018 has been submitted for approval for Continuing Legal Education (CLE) hours. Depending on the specific state rules, regulations, and restrictions, the projected CLE credits awarded could be up to 5.5 hours.

Trademarks Commissioners+USPTO-SV Director


Mary Boney Denison
USPTO Commissioner for Trademarks

Sharon Marsh
USPTO Deputy Commissioner for Trademark Examination Policy

John Cabeca
USPTO Silicon Valley Director

DATE: Tuesday, September 11, 2018

Please note: day of week changed for September only.

LOCATION:
Crowne Plaza Hotel
4290 El Camino Real, Palo Alto (just north of San Antonio Road)

TIME: Note time change 

5:30 p.m. – 6:30 p.m. – Registration, Networking, Appetizers and Cash Bar
6:30 p.m. – 7:30 p.m. – Program

NEW REGISTRATION FEES:
Member – $40
Non-Member – $50
In-house counsel – $25
Government – $25
Student – $20

PROGRAM:
SVIPLA is pleased to have Mary Boney Denison, USPTO Commissioner for Trademarks, Sharon Marsh, Deputy Commissioner for Trademark Examination Policy, and John Cabeca, Director, USPTO Silicon Valley, at its September meeting. Their timely USPTO information should interest all intellectual property corporate and law firm professionals, either specializing in trademark, patent, copyright or trade secret law.

Commissioner Denison and Deputy Commissioner Marsh will provide us with a trademark update from the USPTO. They will discuss upcoming rule changes including mandatory e-filing,  U.S. counsel requirement and Statement of Use extensions after Notice of Allowance.  They will also discuss Chinese filing issues, specimen protests, anti-counterfeiting initiatives, Office initiatives to address the cluttered Register, post-registration procedure for modifying goods and services and why you need to know about MyUSPTO.gov.

Director Cabeca will provide a brief update on USPTO priorities and recent developments.

Mary Boney Denison, USPTO, Commissioner for Trademarks
Mary Denison oversees all aspects of the Trademarks organization, including policy, operations and budget relating to trademark examination, registration, and maintenance. She joined the USPTO in 2011 as Deputy Commissioner for Trademark Operations where she was responsible for USPTO trademark application, legal examination, and registration processes. She has led outreach to the trademark legal community, small businesses, and applicants without legal counsel, and has been an active participant in meetings with the world’s largest trademark offices, promoting projects aimed at harmonizing trademark practices and procedures. While at the USPTO she has initiated several projects to enhance and expand internal and external communications as well as employee career development. The Commissioner is actively engaged in moving the office towards implementing mandatory electronic filing for trademarks, decluttering the Trademark Register, updating the IT systems, and enhancing the customer experience. Before joining the USPTO, she practiced law in the area of trademark prosecution and litigation, as a founding partner of Manelli Denison & Selter PLLC in Washington, D.C., from 1996 to 2011, and as a partner of Graham & James LLP, where she practiced for 10 years.

Sharon Marsh, USPTO, Deputy Commissioner for Trademark Examination Policy
Sharon Marsh manages the Offices of Trademark Policy, Petitions, and Identification and Classification, as well as the Trademark Assistance Center and the Office of Quality Review and Training. She joined the USPTO as a Trademark Examining Attorney, and then served as a Senior Attorney, a Managing Attorney, and as the Administrator for Trademark Examination Policy before assuming her current position. She is a graduate of Duke University and the Emory University School of Law.

Jonh Cabeca, Director, USPTO Silicon Valley
As USPTO Director, John Cabeca carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and the USPTO. He established and leads the USPTO’s west coast regional office in San Jose – a region covering California, Washington, Oregon, Nevada, Arizona, Hawaii and Alaska. John ensures the USPTO’s initiatives and programs are tailored to the region’s unique ecosystem of industries and stakeholders. A veteran of the USPTO for over 28 years, he previously served as the Senior Advisor to the Under Secretary of Commerce for Intellectual Property and the USPTO Director. John has dedicated much of his career to the USPTO’s outreach and education programs focusing on small businesses, startups and entrepreneurs. In 2006, he was appointed a Department of Commerce Science and Technology Fellow and was on special assignment to the Executive Office of the President in the U.S. Trade Representative’s Office, working with multiple agencies on a variety of international intellectual property rights issues and played an integral role in the Free Trade Agreement negotiations with the Republic of Korea.