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In-Person

Choose two Master Classes. Deep dive into specific subjects.

Faculty instructors are top ranking global experts.

Monday, November 14th Schedule | 8:30 - 13:30

08.30 – 09.00 | Registration and Continental Breakfast

09.00 – 10.30 | Master Classes, Parallel classes are held, participants select one class
10.30 – 11.00 | Coffee Break and Networking
11.00 – 12.30 | Master Classes, Parallel classes are held, participants select one class
12.30 – 13.30 | Light Lunch and Networking


Location: ROOMS, Tower A, 5 Hatidar Street, Raanana

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Maeve O'Flynn

Master Classes 1- 4, 09:00 –10.30

SELECT ONE 

Master Class 1

How to Cost-Effectively and Quickly Build a Minefield of Patents to Block International Competitors. Open to IP Managers Only

 

Faculty: Gerson Panitch, Finnegan

Gerson Panitch is a U.S. lawyer, an engineer, a courtroom patent litigator, a registered U.S. patent attorney, and a partner at Finnegan, one of the world’s largest IP firms.  He leads Finnegan’s Strategic IP Planning Group and its Israel practice, working with over 150 of Israel’s top companies to help grow valuation through strategic patenting, and to assert and defend patents in U.S. courts.  Gerson is on the faculty of the Business School at Tel Aviv University where, for the last three years he received the school’s Outstanding Lecturer Award for his MBA course entitled, “The Development and Use of Patents as Strategic Business Tools.”

Master Class 2

Competitor Analysis: IP Landscaping and Beyond  

Competitor analysis in IP diligence may take many forms depending on the business objective. ​From basic landscaping and freedom to operate searches, to the development of fully-formed noninfringement and invalidity positions, competitor analysis may both solve and create problems. Effective competitor analysis must be strategic to achieve the objective and not cause unintended adverse consequences. 

 

This master class focuses on strategies built around business objectives, and the diligence tools to achieve those objectives. 

 

Topics will include: 

  • Application of the attorney-client privilege and work product doctrine

  • Avoiding and/or mitigating claims of willful infringement

  • Preparing for diligence – Develop a Landscape Report that Reflects Your Business

  • Diligence involving former employees and  trade secrets

 

The master class will also cover strategies involving opinion practice through the instigation of patent challenges and declaratory judgment actions, and the effective preparation for an infringement litigation brought by a competitor. 

 

​Faculty: Adam Samansky, Mintz 

Adam’s practice focuses on intellectual property litigation. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries. For pharmaceutical clients, Adam leverages his trial and appellate experience in litigation when advising on new product development, regulatory strategy, Orange Book listing, citizen petition practice, and the settlement of multiparty, highly contested Hatch-Waxman litigation.

Master Class 3

Patenting AI Implemented Inventions

This session will cover accumulated best practices in the prosecution of patent applications in inventions which include artificial intelligence (AI) as a component of the invention (not AI as an inventor). The discussion will focus on practices at the EPO, USPTO and ILPO.  


Topics will include:
-    AI and patent-eligible subject matter
-    AI and novelty and inventive step
-    Disclosure requirements for an ever-changing convolutional neural network
-    Patenting AI while maintaining trade secrets                                                                      Time permitting, the discussion will include perspectives on the enforceability of AI           Implemented Inventions, a challenge yet to be met by the courts.

Faculty: Asa Kling, Naschitz Brandes Amir

Mr. Kling, former Director of the Israel Patent Office and Commissioner of Patents, Trademarks and Designs (2011-2017), heads the firm's intellectual property practice; including litigation and registration prosecution in courts, in arbitrations and before the Israel patents office. He consults on litigation and transactional issues pertaining to all aspects of intellectual property. Mr. Kling is an attorney-at law and a patent attorney and is well versed in international intellectual property and unfair competition laws.

Master Class 4

Managing Renewals in Light of Latest Developments

Topics will include:

  • Different jurisdictions call for different approaches – understanding the importance of knowing the laws' distinctions in foreign countries and the various types of IP

  • Answers to FAQs regarding intellectual property expiration

  • What to take into consideration when choosing a renewal agent

 

Faculty: Sara Ben Zur, Reinhold Cohn & Partners

Sara leads a team responsible for the maintenance and renewal of Patents, Trademarks, Designs and Plant Breeders’ Rights in Israel and abroad. The department provides administrative services for pre-grant Israeli patent applications as well as for all post-grant IP rights. The department serves RCG clients as well as other entities requiring renewals in Israel and other jurisdiction

Master Class 5

Stay Within Budget! Optimizing Available USPTO Tools to Advance IP Strategy

This class will look at various strategies one can utilize at the USPTO to expeditiously build patent portfolios. 

 

Topics will include:

  • Track one  

  • Examiner interviews  

  • “Narrowing” scope of initial patent,

  • Utilizing tools (patentbots, patsnap, etc.) to get to right art unit.

 

Faculty, Greenberg Traurig:

Barry Schindler 

With over 30 years of experience in handling all aspects of patent prosecution and IP protection, Barry is the Co-Chair of Greenberg Traurig's Global Patent Prosecution Group, which handles 1,600 domestic and foreign applications per year.

Philip Hoffmann 

Philip is an ex-PTAB judge with over 600 appeal decisions and more than 20 years of experience in representing clients in intellectual property matters, with an emphasis on PTAB proceedings, patent prosecution, portfolio management and IP counseling.

 

Dr. Mark Ruberto 

With 20 years of industrial experience, including an R&D Project Leader at Intel Corporation, Mark is an experienced Patent Agent who prepares and prosecutes patent applications, conducts patentability evaluations, and prepares corporate due diligence IP Assessments.

 

Master Class 6

The UPC is finally Coming into Place! Sunrise Period likely from January to April 2023 - What You Need to Know and Do Right Now

Protecting your intellectual property is a challenge, especially when entering into a joint development project or when collaborating to commercialize a new product. This Masterclass will concentrate on the challenges of partnering and cooperating with potential competitors & with academic institutions in R&D projects, licensing and commercialization.

This Masterclass will focus on the latest developments with the Unitary Patent (UP) and its court System (UPC).

 

Topics will include:

  • What will change and what will remain the same: How does the UP differ from the old EP?

  • What happens with the already granted EP patents and patent applications and as of when can we get a UP?

  • What is the “Sunrise Period” and do I have to become active already now or can it all wait until later. What happens if we do nothing? 

  • What is meant by “opt-out” and “opt-in”?

  • Will it be more or less expensive?

  • Filing and litigation strategies different for each technology market.  

Faculty: Felix Roediger, Bird & Bird  

Felix is one of the founding partners of Bird & Bird Germany. As a patent litigator, his practice focuses on patent law. He has been active in all technical areas and advised on all manner of patent law issues, in particular patent litigation before civil courts and arbitration on complex licensing agreements.

Mr. Roediger’s particular expertise is in advising on technically complex patent infringement cases with parallel litigation throughout Europe and the US, and with a strong antitrust component (FRAND). My clients come from all technical fields, especially the automotive, pharmaceutical and food industries, and include well-known companies such as Nestlé, Sanofi, Valeo, Acer and LG.

Master Class 7

Collaborations in Development and Commercialization of Products and Technology

Protecting your intellectual property is a challenge, especially when entering into a joint development project or when collaborating to commercialize a new product. This Masterclass will concentrate on the challenges of partnering and cooperating with potential competitors & with academic institutions in R&D projects, licensing and commercialization.

 

Topics will include:

Issues with joint research projects with the Academia;
Engaging researchers from the Academia and from Governmental institutions;

TTOs licenses – main areas of negotiations;

IP contribution and IP ownership;

Special circumstances and/or concerns of a large company with regard to collaborations;

Unwinding the collaboration

 

Faculty: Hili Rashkovan, Pearl Cohen

Hili is a Partner and Chair of the IL Technology Transactions Practice Group.

Her work includes negotiating terms, drafting agreements, and counselling companies and academic institutions regarding licensing and technology transactions. In addition, Hili handles corporate and commercial transactions, such as fundraising and mergers and acquisitions. Hili represents global corporations, as well as startups, mid-size companies and technology transfer spin-off companies of academic institutions of international caliber.

Master Class 8

What’s it worth? Effective & Practical Strategies for Due Diligence

The class will concentrate on conducting due diligence with an eye to enforcement. 

 

Topics will include:

  •  Practical tips for preparation & FTO

  • Strength & Scope of Coverage

  • Finding solutions for issues identified during the due diligence process

  • Managing risk

  • Closing the Deal

Faculty: Finnegan

Laura P. Masurovsky

Laura Masurovsky is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Washington, DC office.  She is an experienced first-chair litigator with more than 25 years of practice in federal and state courts. Laura concentrates on patent infringement and trade secret cases across a wide range of technologies, due diligence investigations and strategic counseling for portfolio growth. With a focus on the biomedical and chemical industry, Laura is an active member of Finnegan’s Israel practice.  Laura is immediate past president of the Federal Circuit Bar Association (FCBA), serving from 2021-2022. The FCBA presented Laura with a Committee Leadership Award (CLA) and a Committee Individual Leadership Award (CILA) for her contributions to the intellectual property bar.

Maeve O'Flynn

Maeve O’Flynn is a partner in Finnegan Europe LLP’s London office.  She is a European and UK patent attorney with more than a decade of in-house experience, having worked at some of the world’s largest multinational corporations in the oil and chemical industries. Maeve helps develop commercially relevant intellectual property strategies, including developing and managing global patent portfolios, provisioning advice regarding trade secrets and defensive publications, and negotiating collaboration and licensing agreements.  She also works with clients to assess and value their patent portfolios, and to develop filing strategies that support their commercial aims. Maeve represents clients at oral proceedings before the European Patent Office, representing both patentee and opponent.

Master Classes 5 - 8, 11:00 –12.30

SELECT ONE