NEW SEMINAR ADVANCED APPROACHES FOR MANAGING OUTSIDE PATENT COUNSEL How to save 10% of your IP budget without tears 5.5 CPD HOURS JOIN US ON n Deciding what you want/need from your outside patent counsel n How to choose outside patent counsel, considering their potential roles: Hired gun, partner and extension of the in-house team n Keys to evaluating outside patent counsel rigorously but fairly for prosecution, litigation, licensing and design-around options n How to organise yourself for effective management of outside patent counsel n Establishing the correct fee arrangement for your firm n How to save money and time in patent prosecution, licensing and litigation n Working with counsel to identify what inventions to file applications on, and where and when to file (and abandon) internationally n Assessing litigation plans Seminar Leaders John Nevard Director, Intellectual Property Cambridge Display Technology Ltd., UK Bradley Hulbert Founding Partner McDonnell Boehnen Hulbert & Berghoff, Chicago You can register online at www.management-forum.co.uk or by phone on +44 (0)1483 730071, fax 730008 24 November 2014 The Rembrandt Hotel, London HOW YOU WILL BENEFIT FROM ATTENDING THIS SEMINAR The seminar is directed to the techniques that experienced in-house and outside patent counsel agree both increase the likelihood of favorable outcomes and reduce costs. • The course includes discussions on how corporate managers can better choose outside patent counsel and then work with them to achieve the corporate objectives. • You will learn from experts what ‘works’ in evaluating outside patent counsel and managing their performance. • The seminar will include a discussion of typical law firm business models and how to avoid them leading to bad results for you as a client. • The seminar will include ongoing opportunities for you to ask questions and discuss individual concerns. WHO SHOULD ATTEND • In-house patent attorneys who work with outside patent counsel and wish to do so more effectively. • Managers responsible for overseeing any aspect of their firm’s patent portfolio, including the preparation and prosecution of patent applications, the assertion of patents to obtain value through licensing or litigation, and the defence against patent assertions by others. • Directors overseeing the operation of a corporate Patent Department. • IP managers in SMEs and universities Reserve your place at the seminar by registering online now at www.management-forum.co.uk or by fax +44 (0)1483 730008 Any questions? e-mail [email protected] SEMINAR LEADERS John Nevard is the Director, Intellectual Property, for Cambridge Display Technology Ltd. Mr. Nevard has over 20 years experience in all major aspects of IP: Freedom to operate risk assessment, strategies for protection, IP transfer from licensing to M&A, multi-jurisdictional enforcement and defence, knowledge management and culture change. His particular specialties include the IP aspects of M&A, licensing, multi-jurisdictional litigation, and portfolio management Bradley Hulbert is a founding partner in McDonnell Boehnen Hulbert & Berghoff, an 80-lawyer patent firm based in Chicago. Mr. Hulbert has worked closely with a diverse range of in-house counsel in overseeing the patent portfolios of multi-billion-dollar, multinational corporations. He is also an adjunct professor of law at the Chicago-Kent Law School. ATTENDANCE LIMITED, EARLY REGISTRATION RECOMMENDED This limitation, a unique feature of all MANAGEMENT FORUM seminars will give participants the opportunity for a thorough discussion of the complex issues to be covered by the programme. DOCUMENTATION Participants will receive a folder containing comprehensive documentation provided by the seminar leaders, which will be a valuable source of reference for the future. ACCREDITATION This course merits 5.5 CPD hours, and may be relevant training under the IPReg CPD self-accreditation scheme. A Certificate of Attendance for Professional Development will be given to each participant who completes the course. PROGRAMME u Introduction • • Identifying goals for the Corporate Patent Department and the patent portfolio Getting the best from your outside counsel, to deliver improvements in efficiency and quality, and to reduce costs u Understanding your wants and needs Before you can effectively manage external patent counsel, you and your organisation need to understand and agree why you are using external patent counsel - today and in the future. • What resources do you have ? • What is your budget ? • What is your patent portfolio ? • Where is your organisation going ? u Fee arrangements, and the associated adaptation of law firm business models • • • • • • Fixed fee Fee cap Flat fee (eg, per month) Secundum model Contingency/performance based Hybrid u How to choose and manage External Patent Counsel • • Domestic/Overseas Prosecution/Litigation/Licensing Working with Patent Counsel on u Prosecution External patent counsel are businesses. They have overheads and salaries to pay, and profits to make. You need to select the right patent counsel for your technology, your business and you by: • Identifying what inventions should be protected by patents • Selecting when and where to file (and abandon) applications • Coordinating domestic and foreign prosecution - US rules on admissions in corresponding applications • Assessing prosecution performance u Prosecution ....continued • • • Understanding that the terms and conditions of external patent counsel are negotiable. You should not pay for what you do not need, or just accept their ways of working. Managing your external patent counsel by setting and agreeing your working practices and standards of performance. Monitor their performance and act accordingly u Licensing • • How long to make the leash: Establishing goals for External Patent Counsel and choosing from the spectrum of roles. Hallmarks of a well-drafted patent license u Litigation • Risk management: Working with external patent counsel before any litigation to minimise future risk and cost -Freedom to operate studies - Document (including e-mail) retention policies - IP audits • Determining when and where to file offensive actions • Roles and responsibilities: Blitzkrieg or guerrilla warfare? • Developing defences to third-party complaints • US litigation traps - Hold notices and discovery - Juries and damages assessments • Overseeing the evolving litigation plan and litigation budget • Coordination of multi-jurisdictional litigation • Assessing counsel’s efforts throughout: -Pleadings -Discovery - Motion practice - Use of experts - Pretrial and trial • Obtaining adequate opinions of counsel and ‘design around’ options u Round-up u Close ADVANCED APPROACHES FOR MANAGING OUTSIDE PATENT COUNSEL: How to save 10% of your IP budget without tears tion to Applicaister Reg 24 November 2014 Conf. No. H11-3114 Dates 24 November 2014 Times 24 November 2014 Start 09.30 - Finish 17.00 Please PRINT your details: Title .................. First Name........................................... (Dr, Mr, Mrs, etc) Family name ................................................................... Position ........................................................................... Department...................................................................... Company ........................................................................ Company VAT No. .......................................................... Address .......................................................................... ........................................................................................ City ................................ Post Code .............................. Country............................................................................ Tel No. ............................................................................. Fax No............................................................................. E-mail ............................................................................. Secretary’s Name ........................................................... Signature ......................................................................... Substitutions may be made at any time at no extra charge Payment by either: VISA MASTERCARD AMEX Card No: Registra tio Informat n ion Registration & Coffee 24 November 2014 09.00 Venue & Accommodation The Rembrandt Hotel, 11 Thurloe Place, London SW7 2RS Hotel Tel: +44(0)20 7589 8100 Hotel Fax:+44(0)20 7225 3476 Email: [email protected] Subject to availability, a limited number of bedrooms have been reserved at the hotel at a special rate. All bookings should be made directly with the hotel or online at www.sarova.com/rembrandt quoting promo code ‘manforum’. Directions Opposite V&A Museum. Nearest underground station: South Kensington. www.sarova-rembrandthotel.com/location-local-attractions Conference Fee £598 + VAT (if applicable) The fee includes course documentation as well as mid-session refreshments and lunch. Invoice and confirmation will be forwarded to you. Conference No. H11-3114 Card Security No: Expiry date........../......... AMEX: Cheque enclosed payable to Management Forum Limited W Bank transfer on receipt of invoice ß T o Re +44 (0) 1483 730008 giste r Management Forum Ltd, 98-100 Maybury Road,Woking, Surrey GU21 5JL, UK www.management-forum.co.uk E-mail: [email protected] If you have NOT received confirmation seven days after registering, please contact Registration Department. Discounted Rates Available on application for personnel from non-profit making organisations and registered charities. Group discount available on request Cancellation Policy: Over 14 days prior to the Seminar: Cancellation fee of £75. 7/14 days prior to the Seminar: 50% of the fee. Fewer than 7 days or if no notification received: Registrant liable to pay FULL seminar fee. NB: Cancellations must be received in writing by [email protected] Management Forum reserves the right to cancel/ alter the programme, the speakers, the date or venue. If an event is cancelled Management Forum is not responsible for airfare, hotel or other costs incurred by registered delegates. If you do not want to receive future mailings from Management Forum please contact [email protected] If you do not wish to receive selected third party mailings please contact [email protected] Exhibition spaces and promotional opportunities will be available at this meeting. For further information please contact Robert Sinclair (email: [email protected]) MANAGEMENT FORUM LTD, 98-100 Maybury Road, Woking, Surrey GU21 5JL, UK Tel: +44 (0)1483 730071 Fax: +44 (0)1483 730008 Website: www.management-forum.co.uk
© Copyright 2024