Schedule-at-a-Glance

Schedule-at-a-Glance

October 28 - 30
Hyatt Regency Bethesda
Bethesda, Maryland

Conflicting Events
Attendees of the IP Portfolio Management Course will be required, as a condition of their participation, not to host conflicting events. Private events should not conflict with any of AUTM’s educational sessions, special programs, social and themed events, including receptions and meals provided by AUTM. Participants should review the meeting program for potential conflicts before scheduling their events.

*Tentative schedule, program subject to change
 

Monday, October 28

7 – 8 a.m.           Breakfast
8 – 9:15 a.m.     Invention Disclosures
          
Speakers:
Kelly Bialek, The University of Akron
Courtney Grate, NUtech Ventures

Invention disclosures are the foundation of the entire technology transfer process.  This session will cover the overall process associated with obtaining and evaluating an invention disclosure, as well as managing the funding compliance related to an invention.
9:15 – 10 a.m.     Update on NIST
        
Speaker:
Paul Zielinski, National Institute of Standards and Technology (NIST)

Join us for an update on federal regulation changes across all agencies and a discussion on the implications for institutions regarding non-compliance and the necessary communication between sponsored research and the technology transfer office.
10 – 10:30 a.m.   Break
10:30 a.m. – Noon     US Patent Process        

Speakers:
Lee Heiman, Azos Al LLC
Glenn Ladwig, Saliwanchik Lloyd & Eisenschenk

The patent process requires a high-level skill set and a wide knowledge base. Join us to learn or enhance your understanding of the U.S. patent application process from start to finish. 

In the first session, we will discuss inventorship and date of invention, priority dates, and patent term; application types; parts of an application; subject matter eligibility; novelty, non-obviousness, and application sufficiency under Title 35 of the US Code; and common myths about patents.
1:30 – 3:00 p.m.     US Patent Process (continued)
        
Speakers:
Lee Heiman, Azos Al LLC
Glenn Ladwig, Saliwanchik Lloyd & Eisenschenk

In the second session, we will discuss patent searching, the duty of disclosure, and Information Disclosure Statements; patent ownership, assignment, and the address of record at the PTO; preparing and filing provisional and non-provisional applications; “needs” and attorney-client communication during drafting and prosecution; official fees and Applicant fee status; electronic filing (EFS) and status (PAIR) systems; overview of the US prosecution process; PTO deadlines, extensions of time, and related fees; examination backlog, the “14/4/4/4 rule”, and procedures for accelerating examination; and official Notices and other channels of communication.
3 – 3:30 p.m.     Break
3:30 – 5:00 p.m.      US Patent Process (continued)

Speakers:
Lee Heiman, Azos Al LLC
Glenn Ladwig, Saliwanchik Lloyd & Eisenschenk

In the third session, we will discuss working with the USPTO; managing patent prosecution: the four major types of Official Actions during prosecution, and Responsive actions by the Applicant; allowance of claims and patent issuance; patent term extension and patent term adjustment; anatomy of an issued patent; correcting errors in an issued patent; co-pendency, continuing applications, and patent application families; maintaining patents in force; licensing; and post-issuance changes of ownership.
5:30 – 7 p.m. Welcome Reception
 

Tuesday, October 29

7 – 8 a.m.           Breakfast
8 – 9 a.m.     PCT Applications

Moderator:
Kim Dunn, Emory University
 
Speaker:
Michael Neas, USPTO

Attendees bring your questions!  This morning’s sessions focus on the PCT process and the available strategies for making smart and cost effective decisions. A senior member of the USPTO PCT Legal Office, together with an IP patent attorney will provide an overview of the PCT process, timelines, formalities, and strategies for complying with routine and advanced issues. The discussion will include filing techniques, entity status, receiving offices, searching authority, correct defects, publication, Chapter II demand/preliminary examination and last, but not least, entering National Stage.
9 – 10 a.m.     PCT Strategies/National Phase 
            
Moderator:
Kim Dunn, Emory University
 
Speaker:
Brian Giles, Thomas Horstemeyer LLC

See PCT Applications description (above).
10 – 10:30 a.m.     Break
10:30 a.m. – Noon     National Phase: Filing in Foreign Jurisdictions

Moderator:
Kim Dunn, Emory University
 
Speaker:
Coco Bailey, Thomas Horstemeyer LLC

Following PCTs, this portion of the session will be directed towards processes and strategies for filing directly into the patent offices of foreign jurisdictions (via the Paris Convention), the similarities and differences between a direct file and a national stage application, managing costs/budgets, limitations of scope, claim strategies, voluntary amendments, examination and grant. The panel will consist of an IP attorney and paralegal who manage day-to-day foreign prosecution.  
1:30 – 3 p.m.     Working with Internal and External Patent Counsel            

Speakers:
Keisha Hylton-Rodic, Hylton-Rodic Law Firm
Caroline Chen, University of Maryland

This session will delve into various structures utilized in technology transfer offices for managing their caseloads and how prosecution is handled by them. Whether your office uses internal counsel, external counsel, or quite possibly some combination of the two, there will be tips and tricks for how to handle your portfolio. Panelists will include patent attorneys/agents, internal counsel and others who work with TTOs daily. They will discuss how they handle functions including patentability searching, patent preparation, prosecution, inventorship determinations and other substantive and procedural matters. Find out what experienced patent attorneys/agents consider the most difficult aspects of the process and how you can work with them to control costs and get a better and more time efficient product.  
3 – 3:30 p.m.     Break
3:30 – 5:00 p.m.     Working with Patent Counsel (Cont.)                

Speakers:
Keisha Hylton-Rodic, Hylton-Rodic Law Firm
Caroline Shen, University of Maryland

This session will focus on how different universities and TTOs make the decisions regarding IP prosecution counsel. Learn about the roles and responsibilities of the licensing office, inventor(s), co-owners, licensees and counsel in order to establish an efficient and effective partnership. Panelists will discuss the structures of various TTOs and highlight the advantages/disadvantages associated with that structure.  Billing, invoice approval processes and evaluation of counsel will also be discussed. The final portion of the session will be a small group discussion where best practices and tips and tricks can be shared by all. Use your peers to assist you in problem solving or idea generation to take back to your office.  We will wrap up with a question and answer portion to cover all topics discussed in the two sessions.
 

Wednesday, October 30

8:00 – 10:00 a.m.     Managing an Intellectual Property Portfolio                      
 
Speakers:
Korie Counts, Ohio University
Jodie Richardson, University of Michigan

So you’ve spent the past few days learning about intellectual property and everything that goes along with it.  Now how do you put it all together?  This session is designed to help you connect the dots by providing a comprehensive overview of the process with our panel of experts. They will provide tips and tricks that they’ve learned using real-world examples.
10 – 10:30 a.m.     Break
10:30 a.m. – Noon     Round Table Discussion on All Things IP
 
As a wind down to the course, come join the Intellectual Property Portfolio Management Committee and panel members for a round table discussion on whatever questions you may have related to IP portfolio management.   A very casual get together with your peers for sharing ideas, thoughts, strategies and best practice.   

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Offsite Tour: USPTO Headquarters             

The tour will consist of visiting the museum and the public search facility. The tour will start at 11:30 a.m. and end at 1 p.m. Transportation will be provided.