April 1-2, 2004
International Trade Centerat the
Ronald ReaganFederal Building
Washington, DC
American Bar AssociationSection of Intellectual Property Law
In cooperation with the Section of Science & Technology Law
Intellectual PropertyLaw Conference
The 19thAnnual
Special One-Day Program Preceding the 19th Annual Intellectual PropertyLaw Conference
A separate one-day program entitled Practical Tips on Intellectual Property Law, onWednesday, March 31, 2004 will be held at the International Trade Center, and will precedethis year’s Annual Intellectual Property Law Conference. This program will provide a broadbackground of information to bring the new practitioner in IP law up to speed with the nutsand bolts of IP law practice in light of current developments in the field. For information and aregistration form for this program, visit our website at www.abanet.org/intelprop, or e-mail usat [email protected]. This program will also offer CLE credit.
Special Interest Sessions
This year’s Annual Intellectual Property Law Conference will incorporate seven narrowly-focused Special Interest Sessions in addition to the main program tracks. The Special InterestSessions are developed for individuals who have an interest in the topic presented or whosepractice has been involved in some way with the issues presented. These smaller group ses-sions will provide a setting with more interactivity and an opportunity to focus in on very spe-cialized areas of IP law.
Special Interest Workshop Session topics will include Things IP Counsel Should Know WhenResponding to Requests from Accountants and Transaction Counsel; Latest Developments InElectronic Filing; Negotiating Technology Licenses In Europe? Leave Your Pants At Home!;Pharmaceutical Balance of Powers: Do The Hatch-Waxman Reforms Restore Equilibrium?;Electronic Discovery: How To Obtain It, Contain Costs and Who’s Responsible For Paying ForIt; Navigating The IP Minefields: Economic Aspects of IP Litigation; and a Science &Technology Law Special Interest Session on Accessing Embedded Software: Competition,Infringement And The DMCA. See the program schedule for the days and times of these ses-sions, and sign up on the registration form.
Teleconference CLE Sessions Available
For those unable to attend the 19th Annual Intellectual Property Law Conference in person,selected sessions will be made available by live teleconference. This year the sessions will be“The Intersection of Antitrust and IP” and “Recent Developments in Patent Law – What YouNeed To Know”. See the program schedule and conference information for details.
Special Tuition Assistance
A limited number of registration fee-reductions are available for government employees, aca-demics, law students, and public interest lawyers employed with non-profit organizations. Nofull tuition waivers are available. The fee-reductions will be determined on a one-time only,case-by-case, first-come first-serve basis. To apply, send a letter outlining the basis for yourrequest of a fee-reduction to Betsi Roach, Section Director, ABA Section of IntellectualProperty Law, 750 N. Lake Shore Drive, Chicago, IL 60611. Deadline for receipt: March 1,2004. No cases will be considered after the deadline, and all standard registration fee rateswill apply after March 1, 2004.
Welcome to the one annual conference in which IPlawyers consistently participate to get the latest updateson all aspects of IP law. Now in its 19th year, the AnnualIntellectual Property Law Conference will highlight agathering of the foremost authorities on the state ofintellectual property law. It is the one conference of theyear that an IP law practitioner should not miss. Theconference is recognized for its preeminence in cover-ing IP law topics, both nationally and internationally.
The past year has been marked by importantchanges and developments in many aspects of IPlaw and practice. In an area of the law already fraughtwith complexity, IP practitioners are faced with anarray of new issues and areas of practice, with multi-faceted dimensions. The broad diversity of the prac-tice, its accelerating rate of change, and its growinginternational importance place ever-increasingdemands on the knowledge and skills of these practi-tioners.
The 19th Annual Intellectual Property Law Conferenceis designed to assist intellectual property law practi-tioners in maintaining and updating their professionalskills and their knowledge of current IP practice issue.
The conference will address recent developments, corpo-rate counsel issues, prosecution, litigation, licensing issues,copyright and the Internet issues, antitrust/unfair competi-tion, international issues, and ethical issues. Speakers willinclude prominent IP practitioners from the U.S. and abroad,representatives from industry, and key policymakers from U.S.and international agencies.
The program is organized to allow registrants to select from sessionstailored to areas of IP practice such as patents, trademarks, and copy-rights, and special interest sessions focusing on the specific issues relatedto breaking areas of 21st century IP law and practice.
This year the Section of Intellectual Property Law welcomes the Section ofScience & Technology Law as a co-sponsor of several of the sessions. As a co-sponsoring section, its members are invited to attend the conference at the Sectionregistration rate.
Intellectual PropertyLaw Conference
The 19thAnnual
What IP Lawyers Need to Know
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Program Schedule at a Glance
THURSDAY APRIL 1, 2004
8:30 – 11:45 a.m. I. Bench And Bar Panel Discussions: Patent Litigation Hot Topics And Practical Tips
II. Trademark Litigation – Where Do We Go From Here?
III. Open Source: From Software To Genetics(co-sponsored by the Section of Science & Technology Law)
12:00 – 1:30 p.m. LUNCHEON (with guest speaker)
1:45 – 5:00 p.m. I. Patents Are A Worldwide Business – International Patent Issues
II. Madrid Protocol: The First Six Months – Boom Or Bust?
III. The Intersection Of Antitrust And IP (teleconferenced from 1:45-3:15 p.m.)
Special Interest Sessions
1:45 – 2:30 p.m. Things IP Counsel Should Know When Responding To Requests From Accountants And Transaction Counsel
3:00 – 3:45 p.m. Latest Developments In Electronic Filing
4:15 – 5:00 p.m. Negotiating Technology Licenses In Europe? Leave Your Pants At Home!
5:30 – 7:00 p.m. RECEPTIONsponsored by
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FRIDAY APRIL 2, 2004
8:30 – 11:45 a.m. I. Hot Topics Facing The In-House Counsel
II. Downloading Drama: Strategies For Copyright Protection In The Digital Era(co-sponsored by the Section of Science & Technology Law)
III. Ethical Pitfalls For The Unwary Patent Lawyer: We’ll Tell You How To Avoid Them
Special Interest Sessions
9:15 – 10:00 a.m. Pharmaceutical Balance Of Powers: Do The Hatch-Waxman Reforms Restore Equilibrium?
10:30 – 11:15 a.m. Electronic Discovery: How To Obtain It, Contain Costs And Who’s Responsible For Paying For It
12:00 – 1:30 p.m. LUNCHEON (with guest speaker)
1:45 – 5:00 p.m. I. Legal Ethics In Trademark Law: The Domestic And International Dimensions
II. Recent Developments In Patent Law – What You Need To Know(teleconferenced from 1:45-3:15 p.m.)
Special Interest Sessions
1:45 – 2:30 p.m. Navigating The IP Minefields: Economic Aspects Of IP Litigation
3:00 – 3:45 p.m. Accessing Embedded Software: Competition, Infringement, And The DMCA (co-sponsored by the Section of Science & Technology Law)
Intellectual PropertyLaw Conference
The 19thAnnual
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Thursday April 1, 2004
7:30 a.m. – 5:00 p.m.Registration and Check-in
8:30 – 11:45 a.m. Three Concurrent Sessions(there will be a 15-minute break near the halfwaypoint of all morning sessions)
Session 1Bench & Bar Panel Discussions:Patent Litigation Hot Topics AndPractical TipsA panel of experienced trial and appellatejudges and lawyers will address a varietyof hot topics in intellectual property law.In addition, the panel will provide impor-tant tips on trial and appellate practice.
Administrative Remarks: MoniqueMorneault, Wallenstein, Wagner & Rockey,Ltd., Chicago, IL. Co-Chair, 19th AnnualIntellectual Property Law Conference.
Welcome Remarks: E. Anthony Figg,Rothwell, Figg, Ernst & Manbeck PC,Washington, DC. Vice-Chair, ABA Section of Intellectual Property Law.
Moderator:Charles H. De La Garza, Fulbright &Jaworski LLP, Austin, TX
Panelists:Hon. Randall R. Rader, U.S. Court of Appealsfor the Federal Circuit, Washington, DC
Hon. T.S. Ellis, III, U.S. District Court forthe Eastern District of Virginia, Alexandria, VA
Robert L. Baechtold, Fitzpatrick, Cella,Harper & Scinto, New York, NY
James J. Elacqua, Dewey Ballantine LLP,East Palo Alto, CA
Richard L. Stanley, Howrey, Simon, Arnold& White LLP, Houston, TX
William A. Streff, Jr., Kirkland & Ellis LLP,Chicago, IL
Session 2Trademark Litigation — Where DoWe Go From Here?This panel will address topics and strate-gies relevant to all facets of litigation inthe trademark and unfair competitionarena in both traditional and digitalmedia, with a particular focus on signifi-cant court decisions of the last year.
Administrative Remarks: Amy J. Benjamin,Darby & Darby, New York, NY. Co-Chair,19th Annual Intellectual Property LawConference.
Welcome Remarks: Robert W. Sacoff,Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, IL. Chair, ABASection of Intellectual Property Law.
Moderator:Carrie A. Hanlon, Wiggin & Dana LLP,Stamford, CT
Speakers:No turning back the clock: the significance of laches in Pro-Football,Inc. v HarjoRobert L. Raskopf, White & Case LLP, New York, NY
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Measuring damages in trademarkinfringement and related claims inlight of recent court decisionsTodd Schoettelkotte, FTI Consulting, Inc.,Houston, TX
Trademark fear and loathing on the Internet: The UDRP and cybersquatting in 2004W. Scott Creasman, Powell, Goldstein,Frazer & Murphy LLP, Atlanta, GA
Victor/Victoria and the Supremes:scanty support for radical dilution ruling piques trademark punditsJamie J. Fitzgerald, Wiggin & Dana LLP,New Haven, CT
Effective trademark enforcement programsLawrence R. Robins, Finnegan, Henderson,Farabow, Garrett & Dunner LLP,Cambridge, MA
TTAB ProceedingsJ. David Mayberry, Kilpatrick StocktonLLP, Washington, DC
Session 3Open Source: From Software To GeneticsCo-sponsored by the Section of Science & Technology Law
The recent market share success of theopen source Linux operating system hasmade open source software a viable alter-native to traditional proprietary software.As this model comes into the mainstreamit is essential for IP lawyers to understand
the fundamental legal issues raised by theopen source process. Session I will addressthese questions, and delve into the termsof the five most frequently used opensource software licenses. Session II willexplore the application of open sourceprinciples to genetics research. Geneticresearch poses new challenges for intellec-tual property law as lawyers attempt tobalance the desire of scientists for a freeand open exchange of research resultswith the private sector requirements forproperty rights that reward investment.
Administrative and Welcome Remarks:Heather D. Rafter, Digidesign, Daly City,CA. Chair, ABA Section of Science &Technology Law.
Open source software licenses
Moderator:Heather D. Rafter
Speakers:Heather J. Meeker, Tomlinson Zisko LLP,Palo Alto, CA
Mark Webbink, Senior VP – GeneralCounsel, Red Hat Software, Raleigh, NC
Dan Ravicher, Senior Counsel, FreeSoftware Foundation, New York, NY
W. Sam Byassee, Maupin Taylor P.A.,Research Triangle Park, NC
Randall Boe, Executive Vice President andGeneral Counsel, AOL, Dulles, VA
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Intellectual PropertyLaw Conference
The 19thAnnual
The application of open sourceprinciples to genetics research
Moderator:Professor Anna Mastroianni, University ofWashington School of Law, Seattle, WA
Speakers:Claire T. Driscoll, Director, TechnologyTransfer Office, National Human GenomeResearch Institute, National Institutes ofHealth, Bethesda, MD
Professor Arti K. Rai, Duke UniversityLaw School, Durham, NC
Werten F.W. Bellamy, Jr., Lewis &Munday PC, Washington, DC
12:00 – 1:30 p.m.LUNCHEON (tickets required)
Atrium Hall, Concourse Level
Guest Speaker: Congressman Lamar Smith (R-TX), Chair,Subcommittee on Courts, the Internet andIntellectual Property Rights of the U.S. Houseof Representatives Judiciary Committee
Co-sponsored by Oblon, Spivak, McClelland, Maier & Neustadt PC
1:45 – 5:00 p.m.Three Concurrent Sessions(there will be a 15-minute break near thehalfway point of all afternoon sessions)
Session 1Patents Are A WorldwideBusiness — International PatentIssuesAs business tends to be globalized, weaddress patent coverage outside of theUnited States in order to protect ourclients. The program will address threeaspects of International Practice. The firstrelates to the very successful PatentCooperation Treaty (PCT). Recent changeshave gone into effect making it easier,cheaper, and more useful to use PCT for filing your foreign applications. We will dis-cuss the changes, the U.S. rules involved,and strategies for making effective use ofPCT filing. The second part of the pro-gram will address how to prepare a patentapplication in a most effective way forglobal filing in order to reduce the costsand try to achieve a “universal” patentapplication useful for all countries. The final aspect of the program will addressproblems that are unique in EPO practice,filing in Japan, and handling Canadianapplications. It will address areas thatalways give difficulty to U.S. practitionersand will clarify and facilitate an understand-ing of these three areas in connection withpatent filing and prosecution.
Moderator:Samson Helfgott, Director of Patents,KMZ Rosenman, New York, NY
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PCT changes — this is the way to gofor your client!
Speakers:Recent PCT changes and what is stillaheadLouis Maassel, Consultant, Legal Division,World Intellectual Property Organization,Bowie, MD
U.S. implementation of PCT changesCarol Bidwell, Supervisor, Office of PCTLegal Administration, U.S. Patent &Trademark Office, Alexandria, VA
Strategies for handling PCT cases withnew changesChen Wang, Senior Counsel, E.I. du Pontde Nemours and Company, Wilmington, DE
PCT filing — An essential businessstrategy toolT. David Reed, Senior Patent Advisor,Global Patent Services, The Procter &Gamble Company, Cincinnati, OH
Preparing a “global” patent application
Speaker:Samson Helfgott, Director of Patents,KMZ Rosenman, New York, NY
Tips and traps in foreign prosecution
Speakers:EPO — claiming problems — inescapabletrapsSoren Giver, European Patent Attorney – IPManager, Awapatent AB, Helsingborg, Sweden
Japan — How to draft effectiveJapanese patent applicationsShinji Kato, Patent Attorney, PROSPECPatent Firm, Tokyo, Japan. Japan PatentAttorney Association, Patent Committee.
Canada — Is it really different from U.S.practice?Dino P. Clarizio, Dimock Stratton ClarizioLLP, Toronto, ON, Canada
Session 2Madrid Protocol: The First SixMonths — Boom Or Bust?Moderator:Karin Segall, Darby & Darby, New York, NY
Speakers:A European perspective on MadridProtocol: what will happen after the E.U. joins?Andreas Renck, Partner, Lovells, Alicante,Spain
In-house filing strategies under MadridLucy Nichols, Global Director, IPR BrandProtection, Nokia Corporation, Espoo,Finland
Evaluation of the Madrid Protocol nowthat the U.S. has joinedSuzanne Stoll, Washington Coordinator,World Intellectual Property Organization,Washington, DC
Madrid Protocol: the USPTO’s perspectiveDeborah S. Cohn, Group Director for theTrademark Law Offices, U.S. Patent &Trademark Office, Arlington, VA
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Intellectual PropertyLaw Conference
The 19thAnnual
Session 3The Intersection Of Antitrust And IPThe first portion of this session will beavailable via ABA-CLE Teleconference from1:45-3:15 p.m.
Balancing competition with intellectual property rights: proposals from the DOJ and FTC
Moderator:M. Howard Morse, Drinker, Biddle & Reath LLP, Washington, DC
Speakers:Robert P. Taylor, Howrey, Simon, Arnold & White LLP, Menlo Park, CA
Susan Stark DeSanti, Deputy GeneralCounsel for Policy, Federal TradeCommission, Washington, DC
Frances E. Marshall, Special Counsel forIntellectual Property, Antitrust Division,U.S. Department of Justice, Washington, DC
Q. Todd Dickinson, Howrey, Simon, Arnold& White LLP, Washington, DC (former UnderSecretary of Commerce for Intellectual Property,and Director of the U.S. Patent andTrademark Office, Washington, DC)
Specific issues in managing IP and competition law
Moderator:Robert P. Taylor, Howrey, Simon, Arnold & White LLP, Menlo Park, CA
Speakers:Settlement of patent litigationSusan A. Creighton, Director, Bureau ofCompetition, Federal Trade Commission,Washington, DC
Refusals to license in the E.U.Mauritz J.F.M. Dolmans, Cleary Gottlieb,Brussels, Belgium
Patent and copyright misuseJeffery B. Fromm, Drinker, Biddle &Reath LLP, Breckenridge, CO (formerlySenior Managing Counsel for IntellectualProperty, Hewlett-Packard Corporation)
Standard setting involving intellectualproperty rightsM. Howard Morse
Special Interest Sessions
1:45 – 2:30 p.m.Things IP Counsel Should KnowWhen Responding To RequestsFrom Accountants And TransactionCounselClients often ask IP counsel to participatein due diligence, provide IP schedules andrespond to the information requests of theclients’ auditors, accountants, lenders, cor-porate and commercial counsel, and oth-ers. What are the IP counsel’s obligations?The speakers will explain the context andpurpose of various audit and transaction-related requests and discuss the Do’s andDon’ts for responding to these types ofrequests, including specific obligationsunder the Sarbannes-Oxley Act of 2002,the ABA/AICPA “Treaty” regardingresponses to auditors, and the generalstandard of care.
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Facilitator:Susan Barbieri Montgomery, Foley HoagLLP, Boston, MA
Speakers:Dean F. Hanley, Foley Hoag LLP, Boston, MA
Susan E. McHale-McGahan, IntellectualProperty Law Department, AT&TCorporation, Bedminster, NJ
3:00 – 3:45 p.m.Latest Developments In ElectronicFilingFacilitator:William C. Rowland, Burns, Doane,Swecker & Mathis LLP, Alexandria, VA
Speakers:Current technology and latest electronicfiling developmentsEdmund M. Crump, U.S. Patent &Trademark Office, Alexandria, VA
E-filing demonstrationMaria Eliseeva, Houston Eliseeva LLP,Lexington, MA
4:15 - 5:00 p.m.Negotiating Technology Licenses In Europe? Leave Your Pants At Home!In these days of GATT and TRIPs, with aStarbucks on every corner of London, it’seasy to underestimate the legal and cultur-al differences between the U.S. andEurope. Many U.S. companies still don’trealize that the “ordinary” exercise andprotection of their IP rights can violateEuropean competition (antitrust) laws andexpose them to massive fines – even ifthey are far smaller players than Microsoft.
Then there are the on-the-ground chal-lenges of negotiating across barriers oflaw, language and business culture. Thispanel explains the major changes to E.U.competition rules for technology agree-ments that will come into force on May 1,2004, and gives an in-house perspectiveon doing deals in Europe without flying by the seat of your pants.
Facilitator:Susan L. Foster, Eversheds LLP, Cambridge,United Kingdom
Speakers:Competition law safe harbor or suckerpunch? Assessing the impact of the “newand improved” technology transfer blockexemption on your business in EuropeSusan L. Foster
Speaking the language: an in-houseperspective on doing tech deals inEuropeJill N. Fuchs, Senior Counsel, ConvergysCorporation, Cincinnati, OH
5:30 – 7:00 p.m.RECEPTIONSponsored by Kirkland & Ellis LLP
Thursday’s Coffee Breaks are co-sponsored by BNA Books, Inc.
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Intellectual PropertyLaw Conference
The 19thAnnual
Friday April 2, 2004
8:00 a.m. – 5:00 p.m.Registration and Check-in
8:30 – 11:45 a.m. Three Concurrent Sessions(there will be a 15-minute break near thehalfway point of all morning sessions)
Session 1Hot Topics Facing The In-HouseCounselModerator:Scott T. Piering, Cargill, Inc., Minneapolis, MN
Speakers:E-mail: Attorney-client privilege – allthe rules are changingPaul R. Rice, Professor of Law, WashingtonCollege of Law, American University,Washington, DC
Budgetary challenge: Adapting to anew economic playing fieldGloria D. Archuleta, Cingular IntellectualProperty Strategic Management Team,Cingular Wireless, Atlanta, GA
The inside scoop to outside counselDebbie K. Wright, Chief Patent Counsel,Kraft Foods, Inc., Northfield, IL
Protecting your intellectual propertyrights from your employerL. Marisia Campbell, Osler, Hoskin &Harcourt LLP, Ottawa, ON, Canada
Representing the competition – how toavoid losing clientsSpeaker to be announced
Session 2Downloading Drama: StrategiesFor Copyright Protection In TheDigital EraCo-sponsored by the Section of Science & Technology Law
Copyright owners have launched a multi-pronged campaign to combat the digitalexchange of music and other copyrightedworks through the Internet. Our expertpanel will discuss and debate the currentlitigation strategies employed against indi-vidual file swappers, file sharing networksand Internet service providers and consid-er alternative proposals for protecting therights of copyright owners in the age ofGrokster and Kazaa.
Moderator:Thad Chaloemtiarana, Pattishall,McAuliffe, Newbury, Hilliard & GeraldsonLLP, Chicago, IL
Speakers:Sandra M. Aistars, Counsel, IntellectualProperty, Time Warner, Inc., New York, NY
Sarah B. Deutsch, Vice President &Associate General Counsel, VerizonCommunications, Arlington, VA
Joseph P. Liu, Assistant Professor of Law,Boston College Law School, Newton, MA
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Matthew J. Oppenheim, Senior VicePresident of Business and Legal Affairs,Recording Industry Association of America,Washington, DC
Wendy Seltzer, Staff Attorney, TheElectronic Frontier Foundation, San Francisco, CA
Session 3 Ethical Pitfalls For The UnwaryPatent Lawyer: We’ll Tell You HowTo Avoid ThemThis program will present the most com-mon areas of discipline and legal malprac-tice against the unwary patent lawyerbased on discipline and malpractice inter-views and reports. Don’t leave yourselfunprotected!
Facilitators:Carol M. Langford, Office of Carol M.Langford, Walnut Creek, CA
John M. Steele, Rogers, Joseph, O’Donnell& Phillips, San Francisco, CA
Special Interest Sessions
9:15 – 10:00 a.m.Pharmaceutical Balance OfPowers: Do The Hatch-WaxmanReforms Restore Equilibrium?
Co-sponsored by the Section of Science & Technology Law
The Hatch-Waxman Act is said to achieve abalance of power by allowing the develop-
ment of new, more effective medicine andthe fast introduction of generic medicine.The true balance of the Act however hasbeen debated since its inception in 1984.The 2003 Hatch-Waxman reforms seek torestore any unequal powers granted by theAct. A panel of distinguished pharmaceuti-cal industry representatives will continuethe debate concerning the balance ofpower, and will explore how the changesto the Act impact both research-based andgeneric drug industries.
Facilitator:Lee A. Goldberg, Darby & Darby, NewYork, NY
Speakers:Roberta R. Loomar, VP – AssistantGeneral Counsel, Counsel, AndrxCorporation, Davie, FL
Erika King, Assistant General Counsel,Pharmaceutical Research and Manufacturersof America, Washington, DC
10:30 – 11:15 a.m.Electronic Discovery: How ToObtain It, Contain Costs And Who’sResponsible For Paying For It
Facilitator:Bruce Malter, OmniDox, Chicago, IL
Intellectual PropertyLaw Conference
The 19thAnnual
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12:00 – 1:30 p.m.LUNCHEON (tickets required)
Atrium Hall, Concourse Level
Guest Speaker: Gary Kremen, President & CEO of GrantMedia Management, Inc., San Francisco, CA
Co-sponsored by Howrey, Simon, Arnold & White LLP
1:45 – 5:00 p.m. Two Concurrent Sessions
Session 1Legal Ethics In Trademark Law:The Domestic And InternationalDimensionsThe continuing relevance of trademarks inthe United States and abroad forces prac-titioners to confront both ethical dilemmascommon to all attorneys and conflicts par-ticular to the nuances of trademarks. Theinternational aspects of practicing trade-mark-related law exacerbate these prob-lems for all but the most wary of attorneys.This panel will highlight current issues inthis area.
Facilitators:Nathaniel L. Nicoll, San Francisco, CA
Jonathan Matkowsky, Seward & KisselLLP, New York, NY
Session 2Recent Developments In PatentLaw — What You Need To KnowThis panel will focus on recent patent lawprecedents impacting practice in obtainingand enforcing patent rights. A survey ofdecisions from the Federal Circuit, the U.S.District Courts, and the U.S. Patent andTrademark Office will be provided.
The first portion of this session will beavailable via ABA-CLE Teleconference from1:45-3:15 p.m.
Moderator:John J. Gresens, Merchant & Gould,Minneapolis, MN
Speakers:Barbara A. Wrigley, Oppenheimer, Wolff & Donnelly, Minneapolis, MN
Prof. R. Carl Moy, William Mitchell Collegeof Law, St. Paul, MN
John J. Gresens
Special Interest Sessions
1:45 – 2:30 p.m.Navigating The IP Minefields:Economic Aspects Of IP LitigationDue to the intangible nature of IP and itsability to be used simultaneously in manydifferent ways, the litigation and manage-ment contexts in which we have historicallyseen and used IP are changing. Attorneysare forced to be involved in disputes andtransactions that they may not have con-sidered in the past. From a litigation per-
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spective, given the importance of intellec-tual property rights to a company, IP isshowing up in a multitude of differenttypes of disputes. It is no longer limited to infringement and misappropriation. IPissues are emerging in bankruptcy, pur-chase price disputes, breach of contract,tax, fraud, and licensing disputes.Attorneys need to be aware of the inter-play between IP and these areas to prop-erly protect IP rights and their value. Froma management perspective, the valuationmethodology around IP is becoming moreand more sophisticated. The value of IPmay also change given its many differentuses and applications.
Facilitator:Kathi Kedrowski, Ernst & Young GlobalInvestigations and Dispute Advisory, Chicago, IL
3:00 – 3:45 p.m.Accessing Embedded Software:Competition, Infringement, And The DMCACo-sponsored by the Section of Science & Technology Law
In two recent cases, Lexmark v. StaticControl Components and Chamberlain v.Skylink, plaintiffs have used the anti-cir-cumvention provisions of the DigitalMillennium Copyright Act against after-market competitors. This session willexplore the legal and policy issues withsome of the participants in the litigation.
Facilitator:Jonathan Band, Morrison & Foerster LLP,Washington, DC
Speakers:Seth D. Greenstein, McDermott, Will & Emery, Washington, DC
Scott D. Baker, Reed, Smith, Crosby, HeafyLLP, San Francisco, CA
Friday’s Coffee Breaks are co-sponsored byBurns, Doane, Swecker & Mathis LLP
Intellectual PropertyLaw Conference
The 19thAnnual
Cyber CaféDuring the 19th Annual IntellectualProperty Law Conference, a CyberCafé will be available to participants.This Cyber Café will be located inthe main registration area and willfeature a number of laptop comput-ers connected to the Internet forthose who wish to check e-mails orsearch for something on the Internet.High speed laser printers will also beavailable so participants will be ableto print portions of the course mate-rials on CD-ROM.
Sponsored by Pattishall, McAuliffe,Newbury, Hilliard & Geraldson LLP
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Early RegistrationRegister online at www.abanet.org/intel-prop/spring2004, or complete the formin the brochure and mail to: 19th AnnualIntellectual Property Law Conference,Section of Intellectual Property Law M/S10.5, American Bar Association, 750 N.Lake Shore Drive, Chicago, IL 60611. Ifpaying by credit card, you may also faxyour form to 312/988-5628. The dead-line for receipt of early registration, atthe earlybird rate is Wednesday, March17, 2004. Registration will only beaccepted when accompanied by a creditcard number (Visa, MasterCard orAmerican Express only), check, moneyorder, or government purchase order ortraining form. No registration can beheld without payment.
Onsite RegistrationRegistration will be available onsite from2:00-5:00 p.m. Wednesday, March 31, inthe Atrium Ballroom Foyer, ConcourseLevel. Registration will also be availablebeginning at 7:30 a.m. Thursday, April 1in the Amphitheater Foyer. A busymorning registration rush is anticipatedon April 1, so registration onWednesday, March 31 is encouraged.
Onsite registrations will be acceptedonly when accompanied by a creditcard (Visa, MasterCard or AmericanExpress only), check, money order, orgovernment purchase order or trainingform. Late registration fees will be ineffect for onsite registrations.
Registration ConfirmationConfirmation of registration will be sentvia e-mail in advance of the program forall registrations received prior to March17. Indicate on the registration form ifyou would prefer to receive confirmationvia fax or U.S. mail.
Cancellation PolicyRegistrants who are unable to attend theconference will receive a refund less a$50 administrative fee if a written can-cellation is received by March 17, 2004.Cancellation requests should be faxed to312/988-5628. No refunds will be grant-ed after March 17, 2004. Substitutionsare acceptable. The ABA reserves theright to cancel any program andassumes no responsibility for personalexpenses.
CLE CreditCLE accreditation will be requested forthis Conference from every state withmandatory continuing education require-ments for lawyers. Please be aware thateach state has its own rules and regula-tions, including its definition of “CLE”.Check with your state agency for confir-mation of this program’s approval.Attendees requesting credit for the pro-gram must sign the attendance rosteronsite at the program. New York attor-neys must sign in and sign out each timethey enter or leave the program room,and complete the special New York cer-tificate of attendance at the end of eachprogram and have it signed by ABAauthorized personnel.
REGISTRATION AND MEETING INFORMATIONTuition includes admission to the program, beverage breaks, one reception and one set ofprogram materials on CD-ROM.
Teleconference CLE CreditAvailableFor those unable to attend the 19thAnnual Intellectual Property LawConference in person, selected sessionswill be made available via live teleconfer-ence. Teleconference sessions this yearinclude “The Intersection Of AntitrustAnd IP,” and “Recent Developments InPatent Law – What You Need to Know.”See the program schedule for the day,time and topic information. Registrantsfor teleconference sessions will be eligi-ble for CLE credit in those states thatallow for teleconference CLE credit.Instructions on downloading coursematerials and dialing in to the programwill be provided in a confirmation letterupon registration. If you have any ques-tions regarding CLE application andapproval please contact the ABA Centerfor CLE at 312/988-6217.
Course Materials available on CD-ROMCourse materials are produced in CD-ROM format and made available forpickup at the conference. A limited num-ber of printed course material sets willbe available for an additional fee tothose who request this in advance on theregistration form. Materials will also beposted on the Section website, availablefor viewing by conference registrants inadvance of the conference.
LocationThe International Trade Center in theRonald Reagan Federal Building, at 1300Pennsylvania Avenue, between 13th and14th Streets, NW, Washington, DC.
LodgingThe J.W. Marriott Hotel, 1331Pennsylvania Avenue, NW, WashingtonDC 20005 (right across PennsylvaniaAvenue and Freedom Plaza from theRonald Reagan Building). The ABAgroup rate is $222.00 single/doubleoccupancy. All rooms are subject to a14.5% District of Columbia Sales Taxplus a $1.50 per night DistrictOccupancy Tax. To reserve a room, callthe J.W. Marriott Hotel directly at202/393-2000, or 800/228-9290. Besure to mention the ABA 2004 AnnualIntellectual Property Law Conference toreceive the special group rate. Note:The cutoff date for the room block isMonday, March 1, 2003— but do notwait until the March 1 cutoff date, as theroom block fills up quickly. After thisdate, reservations can be made on aspace-available basis only. The ABA willnot be able to secure a room for you.
Travel InformationYou are encouraged to make your air-line reservations on the newly launchedABA Online Travel site where you auto-matically receive ABA airfare discountsfrom a variety of carriers and can viewand purchase other low fare optionsincluding web fares. ABA Online Travelcan be accessed from the navigationbar on the left of the ABA web sitehome page, www.abanet.org. It takesonly a few moments to establish a user-name and password allowing you toimmediately book your reservations.ABA Online Travel provides you with aquick and easy way for obtaining themost cost effective airline reservations.
Intellectual PropertyLaw Conference
The 19thAnnual
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Reservations can also be made with theABA travel agent, Jennifer Slago, whoalso can automatically provide ABA air-fare discounts. She can be contacted viaemail, [email protected] or bydirect phone number at 312/988-5862.ABA Discounted Meeting Airfares arealso available through your travel agentor directly from the airline. You may callyour travel agent or the airlines directlyand refer to the appropriate accountnumber: American Airlines, 800/433-1790, ABA Code: 16666; Delta AirLines, 800/241-6760, ABA Code:189419A; or US Airways, 877/874-7687,ABA Code: 36632473. For more infor-mation, contact Tower TravelManagement, the official ABA travelagent, at 800/921-9190.
Program Co-Chairs:
Amy J. Benjamin, Darby & Darby PC,New York, NY
Monique Morneault, Wallenstein, Wagner& Rockey, Ltd., Chicago, IL
Section Chairs:
Section of Intellectual Property Law
Robert W. Sacoff, Pattishall, McAuliffe,Newbury, Hilliard & Geraldson LLP,Chicago, IL
Section of Science & Technology Law
Heather D. Rafter, Digidesign, Daly City, CA
GUEST LUNCHEON SPEAKERS
On Thursday, April 1, the guestluncheon speaker will beCongressman Lamar Smith (R-TX).Congressman Smith serves asChairman of the Subcommittee
on Courts, the Internet and IntellectualProperty of the U.S. House JudiciaryCommittee. He also sits on the ImmigrationSubcommittee of the House JudiciaryCommittee and the House ScienceCommittee. He is second in seniority andcontinues as a member of the ScienceCommittee’s Space and ResearchSubcommittees. He has represented the residents of the 21st Congressional District in Texas since 1987.
Thursday’s Luncheon is co-sponsored byOblon, Spivak, McClelland, Maier &Neustadt PC.
On Friday, April 2, Gary Kremen,will address luncheon attendeeson the topic of “What doesTrover have to do with theInternet?” Mr. Kremen has over
twenty years of experience with emerginggrowth companies and developing informa-tion technology. He has started several com-panies including Sex.Com, and Match.Com,the world largest dating service. He holds an MBA from Stanford University School of Business and degrees in ComputerScience and Electrical Engineering fromNorthwestern University. He is a frequentspeaker on online intellectual property matters and has been extensively quoted in the Wall Street Journal, The New York Times and Forbes.
Friday’s Luncheon is co-sponsored byHowrey, Simon, Arnold & White LLP.
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If any special arrangements are required for a disabled individual toattend this program, or any special dietary menus are required for mealfunctions, please note them below:
________________________________________________________________
________________________________________________________________
________________________________________________________________
REGISTRATION FORM
Advance Registration Deadline: March 17, 2004
(To register directly via the Internet, please visitwww.abanet.org/intelprop/spring2004.)
q Yes, please register me for The 19th Annual Intellectual Property Law Conference
q No, I cannot attend this program. Please send me the course materialson CD-ROM available after this meeting at the price of $75, whichincludes postage and handling. Payment must accompany this form (please allow 4-6 weeks from date of program for receipt of coursematerials.)
Registrant InformationName: __________________________________________________________________
Organization: ____________________________________________________________
Address: ________________________________________________________________
City:________________________________________ State: __________Zip:_________
Daytime phone:( )______________________ FAX: ( )______________________
E-mail: __________________________________________________________________
ABA Membership ID No. ___ ___ ___ ___ ___ ___ ___ ___
State(s) registered State Bar IDto practice in: number:
State ______________ # ______________
State ______________ # ______________
State ______________ # ______________
Registration Fees (check one)
before 3/17 after 3/17
q $395 q $445 ABA IPL Section members $ _____
q $395 q $445 ABA Science & Technology
Law Section members $ _____
q $445 q $495 ABA, but not IPL or Science &
Technology Law Section members $ _____
q $495 q $545 General Attendance (not ABA) $ _____
q $350 q $400 Government, Public Interest, Academics $ _____
q $185 q $235 Law Students $ _____
LUNCHEONS (ticket required)
q $40 Thursday, April 1, 2004Congressman Lamar Smith, Guest Speaker
q $40 Friday, April 2, 2004Gary Kremen, Guest Speaker
ABA-CLE Teleconference RegistrationThe Intersection of Antitrust and IP, 1:45-3:15 p.m. (Eastern time), Thursday,April 1, 2004
q $ 85 Section member
q $125 ABA but not IPL members
q $150 General attendance (not an ABA member)
q $ 60 Secondary Registrant, same site. Name of additional registrant:
____________________________________________
Recent Developments in Patent Law – What You Need To Know, 1:45-3:15p.m. (Eastern time), Friday, April 2, 2004
q $ 85 Section member
q $125 ABA but not IPL members
q $150 General attendance (not an ABA member)
q $ 60 Secondary Registrant, same site. Name of additional registrant:
____________________________________________
Printed Course Materials Orderq $75 Please reserve for me (in addition to the CD-ROM), a printed set of
course materials. Orders for printed materials must be received beforeMarch 17. Printed materials will be available onsite upon check-in at theregistration desk.
TOTAL OF ALL FEES $_______________
PaymentCredit Card: q VISA q MasterCard q American Express
Card no. __________________________________________ exp. date: ____________
Signature: _______________________________________________________________
Print name as it appears on card: ___________________________________________
q Check enclosed. Payable to the AMERICAN BAR ASSOCIATION for
program registration fee and optional events in the amount of $__________.
q Purchase Order No. ___________________________________________
(government employees only)
Thank you for your registration. A confirmation will be sent to you via e-mail. If you prefer your confirmation by fax or U.S. Mail, please indicate below:q Fax q U.S. Mail
Special Interest Session Sign-Up(your sign-up below is for planning purposes only— it does not commit you to asession nor guarantee you a seat at the session. Space is limited for these specialinterest sessions and will be available on a first-come basis onsite at the program):
Thursday, April 1q Things IP Counsel Should Know When Responding to Requests From
Accountants and Transaction Counsel(1:45 – 2:30 p.m.)
q Latest Developments In Electronic Filing (3:00 – 3:45 p.m.)
q Negotiating Technology Licenses In Europe? Leave Your Pants At Home! (4:15 – 5:00 p.m.)
Friday, April 2q Pharmaceutical Balance of Powers: Do The Hatch-Waxman Reforms Restore
Equilibrium? (9:15 – 10:00 a.m.)
q Electronic Discovery: How To Obtain It, Contain Costs and Who’s ResponsibleFor Paying For It (10:30 – 11:15 a.m.)
q Navigating The IP Minefields: Economic Aspects of IP Litigation (1:45 – 2:30 p.m.)
q Accessing Embedded Software: Competition, Infringement And The DMCA(3:00 – 3:45 p.m.)
Return this form to:Section of Intellectual Property Law, M/S 10.5
Attn: 19th Annual Intellectual Property Law ConferenceAmerican Bar Association750 N. Lake Shore Drive
Chicago, IL 60611Fax: 312/988-5628
Questions? Please e-mail [email protected] or call 312/988-5598.
Special thanks to our sponsors:
BNA BooksThursday coffee breaks
Oblon, Spivak, McClelland, Maier & Neustadt PCThursday Luncheon
Kirkland & Ellis LLPThursday Reception
Burns, Doane, Swecker & Mathis LLPFriday coffee breaks
Howrey, Simon, Arnold & White LLPFriday Luncheon
Finnegan, Henderson, Farabow, Garrett & Dunner LLPCourse Materials on CD-ROM Sponsor
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLPCyber Café
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Inte
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Adv
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reg
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dead
line:
Mar
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7, 2
004
Apr
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2, 2
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Inte
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Law
Con
fere
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The
19th
Ann
ual
