MASTER CLASSES 
MARCH 2022

Attend 2 Master Classes in-person and get a third Master Class as a bonus. Network over breakfast and lunch. Deep dive into specific subjects in great detail. Faculty instructors are long term professionals and top ranking proven experts from around the world.

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Wednesday, March 23rd and 27th*  

 

March 23rd:

Registration and Continental Breakfast 8.30 – 9.00
Master Classes 9.00 – 10.30
Coffee Break and Networking 10.30 – 11.00
Master Classes 11.00 – 12.30
Light Lunch and Networking 12.30 – 13.30

(ROOMS, Tower A, 5 Hatidar Street, Raanana)

March 27th:

Master Class 16:00 - 17:30

(Round Tower Azrieli, Tel Aviv and ONLINE)

Early bird registration extended to March 2

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09:00 - 10:30

Master Class 3 (09.00 – 10.30)

Powerful Prosecution Strategies to Secure Early Allowance

Early patent allowances can pay quick dividends, as companies seek to build value by protecting important technologies.  Not only will patent rights accrue more quickly, but often the reduced level of negotiation with the patent office can lead to more valuable patents. 

 

In this class, we will take a detailed look at multiple, proven strategies for accelerating patent examination and patent grants, including several to implement before prosecution even begins.  We will show you how to take full advantage of expedited examination options, how to make the most of each round of negotiation with the examiner, and how to develop persuasive presentations for examiner interviews.  

 

Faculty:

Jeffrey Berkowitz, Partner, Finnegan

Intellectual Asset Managment and The Legal 500 U.S. have recognized Jeff for his patent litigation practice. He has received several American Jurisprudence Awards: Legal Research and Writing (2); Civil Procedure; Jurisprudence; and Judicial Clerkship. Managing Intellectual Property named him as an “IP Star” in Virginia, and he was recognized as a leading lawyer by Who’s Who Legal: Telecommunications Media & Technology.

Darren Jiron, Partner, Finnegan

Relying on extensive experience in both patent procurement and patent litigation, Darren Jiron focuses on building strategically developed patent portfolios. With a special interest in helping high-tech and fast-growing companies craft patent plans to block competitors and build corporate value, Darren works closely with clients to ensure their patents align with and support their business goals.

 

11:00 - 12:30

(You can select one of the two classes below)

Master Class 4 (11.00 – 12.30)

Trade Secrets - Best Practices: Remote Work Considerations and Intellectual Property Incentive Programs (IPIP)

Two years have passed since the global workforce began shifting to remote work, a shift that should have companies considering taking additional precautions to protect valuable trade secrets and proprietary information. Such steps may reduce the chances of theft of trade secrets during remote work. They may also serve to position companies to continue to keep their information protected by trade secret laws through taking “reasonable efforts” to ensure the information remains “secret.” However, courts operating with the benefit of hindsight after this crisis have concluded that the surprise transition to and rapid expansion of remote workers are not valid excuses for not having proper protocols in place.

 

The Master Class will provide case studies regarding protecting trade secrets – including recent U.S. trade secrets litigation – what went wrong and how to avoid these pitfalls. From these case studies, best practices programs will be explored. 

 

There is, however, more to the story, as trade secret best practice programs appear to be contradictory to typical Intellectual Property Incentive Programs. The Master course will explore how to align these two programs:

 

  • Facilitating recruitment and retention of the best talent by fostering and promoting a culture of innovation and knowledge;

  • Promoting the company’s reputation, image, and vision as an innovative company;

  • Aligning the speed of innovation with industry trends;

  • Protecting investment and competitive edge; and

  • Generating new revenue streams by monetizing IP rights through licensing or as add-on value. 

 

Faculty:

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.

Master Class 5 (11.00 – 12.30)

Combination of Patent and Design Protection Strategy

for Protecting a Product
Strategically combining utility protection with broad design protection provides the most comprehensive protection for physical products.  This master class will demonstrate how a product’s functionality is material to such a strategy and provide insights and tips on formulating and executing the strategy.

Topics will include among others:

  • Considerations relevant to inventions and designs protection strategies (scope of protection, territories, timing, etc.)

  • Advantages of international filing systems (under the PCT and the Hague Agreement) for multiple-invention and multiple-design applications

  • Different approaches to drawings preparation for utility patent applications and design applications

 

Faculty:

Dima Litvak, Patent Attorney and Partner, The Reinhold Cohn Group.

Dima has over a decade of extensive experience in registering and drafting patent applications in Israel and abroad, in a variety of technological fields, among them consumer products, medical devices, and construction. Dima accompanies private entrepreneurs and small and large companies in all stages of product development and production, from consulting on patent protection for new technologies and building a long-term strategy, to managing an Intellectual Property portfolio. He is involved in patentability opinions for inventions, Freedom-to-Operate opinions on products, and supporting clients in litigation and enforcement procedures.

 

Tal Lustig, Patent Attorney, The Reinhold Cohn Group. 

Tal's practice focuses on patent filing and prosecution, representing companies in a wide range of mechanical engineering disciplines including fluid dynamics, environmental engineering, and advanced mechanical designs.

Online ZOOM Wednesday March 30

Master Class 1 (10.00 – 11.30)

What's new at the EPO in 2022? Everything you always wanted to know - and now you can ask.


This Masterclass concentrates on the latest developments at the European Patent Office that are most relevant to US and Israeli companies.
Topics will include:

  • Issues with claiming priority from foreign applications, e.g. US and IL applications

  • Patentability of software-based simulations,

  • Divisional applications and double patenting, 

  • Using experimental data generated after the filing date to show inventive step,

  • Patentability of antibodies and many more.

 

We will also discuss the upcoming unitary European patent, which is expected to enter into force in 2023. The unitary patent will allow to finally get rid of post-grant translations, thus making obtaining
patent protection in Europe much easier and more affordable. 

 

Faculty: Micaela Modiano, Senior Partner Modiano & Partners. Micaela is a qualified European patent and trademark attorney. Micaela holds a BSc in chemistry from Harvard University (USA), an MSc in IP law from Queen Mary University of London (UK) and a post-graduate degree in European patent litigation from the University of Strasbourg (France).

Micaela is a member of the EPI Council (Council of the Bar Association of European Patent Attorneys) and of the European Patent Practice Committee.

 

In Person TBA

Master Class 2 (09.00 – 10.30)

Section 112(a) Enablement and Written Description Issues in Life Science Cases  
 

This master class will discuss how to draft strong patents in light of the recent case law on section 112, both in the context of broad antibody claims (Amgen v Sanofi) and dosing regimens (recent decisions in Novartis/HEC Pharma and Biogen/Viatris). 
 

The lessons to be learned on the number of species required, how much and what type of data needs to be disclosed.  


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. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

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. Adam regularly conducts due diligence on blockbuster pharmaceutical assets, including reviewing and assessing litigation, regulatory, and competitive strategies.

Master Class 6 (11.00 – 12.30)

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 will focus 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. Adam has tried cases before multiple US District Courts, briefed and argued cases before the US Court of Appeals for the Federal Circuit, and has briefed bet-the-company issues before the US Supreme Court.

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. Adam regularly conducts due diligence on blockbuster pharmaceutical assets, including reviewing and assessing litigation, regulatory, and competitive strategies.

March 27th - 16:00 - 17:30 

(Azrieli Round Tower and ONLINE)

Things Your Patent Attorney Doesn’t Want you to Know: The Secret Spices of Patent Appeals

 

Most Applicants believe that the only viable alternatives to receiving a Final Office Action from the U.S. Patent Office are filing a Request for Continued Examination (RCE), filing a new application (such as a
Continuation or Divisional), or abandoning the application altogether. Applicants are frustrated by the prospect of continuing to present the same arguments to the same Examiner, often with the same results. Companies make the mistake of failing to consider appealing the Examiner’s decision to the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB). Most Applicants fail to realize that the appeal process is much shorter, less expensive, and straightforward than they had imagined. This Master Class will provide practical tips and tools for companies to be able to better understand the Patent Appeals process, when it is advisable to opt for an appeal, and what steps are key to succeeding. Join us for a hybrid Master Class that includes the “Dos and Don’ts” of Patent Appeals as well as a live mock appeal court argument.
 

Topics will include:

  • The ABCs of Preparing for an Appeal

  •  The historical avoidance of Israeli firms to appeal during       patent prosecution

  •  Cases in which it is advisable to appeal to the Patent Trial and   Appeal Board (PTAB) after receiving a final rejection including   35 USC 101 considerations

  •  The Pre-Appeal Conference to break the endless examination   loop with the same Examiner

  •  Demystifying the decision-making process of judges and the   changing attitude of the PTAB

  •  The STH steps of appealing to court: Setup of appeal, right   Timing and How the process should work

  •  Whether to have Oral Arguments in front of judges: cost vs.   benefits

 

Faculty:
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.

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* The program may be scheduled to changes.