Patent Success or Failure? The America Invents Act and BeyondA CITP Conference
Date: Friday, May 11, 2012
Time: 10:00 AM – 5:30 PM
Location: Princeton University, Friend Center Convocation Room
Registration has exceeded our expectations and capacity. We are unfortunately unable to accept any more registrations at this time. If you have not already registered for the conference, you will not be permitted to enter.
On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA), the most significant change to the US Patent system since the Patent Act of 1952. The result of years of efforts to revise and reform the laws governing patent practice in the US, many consider the AIA to be a success. However, the AIA is not without its critics. “Patent Success or Failure?” will bring together government officials, judges, lawyers, and academics to consider the effects of the AIA on the patent landscape.
Attorneys: This transitional CLE program has been approved in accordance with the requirements of the New York Continuing Legal Education Board for a maximum of five hours professional practice credit. This program has been approved by the Board on Continuing Legal Education of the Supreme Court of New Jersey for 5.4 hours total CLE credit. Those seeking CLE credit should review the written materials.
Registration and continental breakfast (9:30 AM – 10:00 AM)
Opening Keynote (10:00 AM – 10:30 AM)
- Judge Paul Michel, Former Chief Judge of the United States Court of Appeals for the Federal Circuit
The AIA sets out a protracted timeline for implementing its many provisions, with the last of these provisions taking effect September 16, 2019. This session will focus on major questions of implementation.
Moderator: Marian Underweiser, Counsel, IBM Corporation
- Mark Nikolsky, Partner, McCarter & English
- Arti Rai, Elvin R. Latty Professor of Law, Duke Law
- Robert Sterne, Director, Sterne, Kessler, Goldstein & Fox
Lunch (12:00 PM – 1:30 PM)
- Keynote Speaker: David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
The AIA has the potential to alter the patent landscape significantly. Given the lengthy timeline for fully implementing the AIA, it may be years before we feel the full effects of the legislation. This session will examine the ways in which the AIA has already changed patent law, and look forward to the future effects of the legislation.
Moderator: Jason M. Schultz, Director, Samuelson Law, Technology & Public Policy Clinic; Assistant Clinical Professor of Law, Berkeley Law School
- Joe Matal, General Counsel, Senate Judiciary Committee
- Steven Halpern, Associate, McCarter & English
- Dan Ravicher, Lecturer in Law, Cardozo Law; Executive Director, Public Patent Foundation (PUBPAT)
Break (3:00 PM – 3:30 PM)
Much of the criticism of our patent system can be traced to the feeling that the system does not work equally for all stakeholders, and the AIA is no exception to this. This session will offer a comparative look at the AIA across industries, such as software and biotechnology.
Moderator: Colleen Chien, Assistant Professor, Santa Clara Law
- Andrea Kamage, Senior Patent Counsel, Law Department, Johnson & Johnson
- Suzanne Michel, Senior Patent Counsel, Google
- Julie Samuels, Staff Attorney, Electronic Frontier Foundation
- Dennis Crouch, Assistant Professor, University of Missouri School of Law, and the Patently-O blog
Closing Keynote (5:00 PM – 5:30 PM)
- Judge Randall Rader, Chief Judge of the United States Court of Appeals for the Federal Circuit
Attendees seeking CLE credit should review the written materials.
Professor Colleen Chien is nationally known for her research and publications surrounding domestic and international patent law and policy issues. Her work has been cited by the FTC and in Congress. She has testified before the DOJ/FTC/PTO on patent issues, frequently lectures at national law conferences and has published several in-depth empirical studies, including of patent litigation, patent amicus briefs, non-practicing entities (NPE), and the secondary market for patents. She is an expert on the International Trade Commission (ITC), a topic on which she has authored several articles and co-authors a practice guide, The Section 337 Patent Investigation Management Guide.
Prior to joining the Santa Clara University School of Law faculty in 2007, Professor Chien prosecuted patents at Fenwick & West LLP in San Francisco, as an associate and then Special Counsel. She also served as an advisor to the School of Social Medicine at Harvard Medical School, worked as a spacecraft engineer at NASA/Jet Propulsion Lab, and was an investigative journalist at the Philippine Center for Investigative Journalism as a Fulbright Scholar. She lives in the east bay with her husband and their two sons.
Professor Crouch is Associate Professor of Law at the University of Missouri School of Law. Prior to joining the MU Law Faculty, he was a patent attorney at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, and taught at Boston University Law School. He has worked on cases involving various technologies including computer memory and hardware, circuit design, software, networking, mobile and internet telephony, automotive technologies, lens design, bearings, HVAC systems, and business methods. He is also the editor of the popular patent law weblog: Patently-O.
Mr. Halpern maintains a intellectual property practice with an emphasis on the procurement, management, and enforcement of domestic and international intellectual property rights. His practice focuses on patent prosecution and portfolio management, IP-related agreements, due diligence, and opinions of counsel concerning freedom-to-operate assessments, invalidity, and infringement. He has substantial experience in computer and data communications, software, physics, medical devices, automation systems, radar systems, heating, drive controls, electromechanics, and other technologies.
Andrea Kamage is Senior Patent Counsel for Johnson & Johnson, where she supports the pharmaceutical businesses of J&J for both small molecule and biologic therapeutics. She spend many years in private practice supporting the intellectual property needs of pharmaceutical, biological, chemical and medical device entities, from small startups to universities to large multinational corporations. Her current practice includes a wide range of intellectual property areas such as patent prosecution, due diligence, transactions, and patent litigation support. She recently served as President of the New Jersey Intellectual Property Association; and currently is a member of the Intellectual Property Editorial Advisory Board for Law360 and the Chair of the Pharmaceutical & Biotechnology Issues Committee for The Intellectual Property Owners Association.
David Kappos is the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. In this role, he advises the President, the Secretary of Commerce, and the Administration on intellectual property matters.
Over a 20-year career in intellectual property, Mr. Kappos has accrued deep knowledge of the intellectual property system and broad respect from professionals across the field. Mr. Kappos directs an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and services and safeguard against deception in the marketplace. The Office continues to deal with a patent application backlog of more than 700,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Before joining the USPTO, Mr. Kappos served as Vice President and Assistant General Counsel for Intellectual Property at IBM. Mr. Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide. He has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He has held various other leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.
Mr. Kappos received his Bachelor of Science degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990.
Joe Matal has been a Judiciary Committee counsel to Senator Jon Kyl since 2002, except that he served as the Republican General Counsel of the Committee while Senator Jeff Sessions was the ranking member from 2009 through 2010. He was one of the principal legislative staff involved in the drafting and floor management of the American Invents Act, and recently published the first part of two-part law-review article about the legislative history of the Act. Joe has also worked as an associate attorney at Gibson, Dunn & Crutcher, as a law clerk to a judge on the U.S. Court of Appeals for the Ninth Circuit, and is a 1996 graduate of Boalt Hall School of Law.
Chief Judge Paul R. Michel (Retired)
Paul R. Michel was appointed to the United States Court of Appeals for the Federal Circuit in March of 1988. On December 25, 2004, he assumed the duties of Chief Judge. After his elevation to Chief Judge, he served as one of 27 judges on the Judicial Conference of the United States, the governing body of the Judicial Branch. In 2005 he was appointed by Chief Justice Rehnquist to also serve on the Judicial Conference’s seven-judge Executive Committee. On May 31, 2010, Chief Judge Michel stepped down from the bench after serving more than 22 years on the court.
In his years on the bench Judge Michel judged thousands of appeals and wrote over 800 opinions, approximately one-third of which were in patent cases. Prior to his appointment to the bench, Judge Michel served in the executive and legislative branches for 22 years. Following graduation from Williams College in 1963 and the University of Virginia Law School in 1966, Michel served as Assistant District Attorney and then Deputy District Attorney for Investigations under Arlen Specter in Philadelphia; as Assistant Special Watergate Prosecutor in 1974-1975; from 1975 to 1976 he was an assistant counsel for the Senate Select Committee on Intelligence; from 1976-1978, he served as Deputy Chief of the Justice Department’s Public Integrity Section, where he directed the “Koreagate” investigation; in 1978 he was appointed as an Associate Deputy Attorney General; in 1980 he served as Acting Deputy Attorney General; and from 1981 until 1988, he served on Senator Arlen Specter’s staff, including as Counsel and Chief of Staff.
Judge Michel has been named one of the 50 Most Influential People in the world in intellectual property by Managing Intellectual Property magazine. In 2008 Chief Judge Michel was awarded the first annual Lifetime Achievement Award by the Richard Linn American Inn of Court; the Sedona Conference Lifetime Achievement Award; the first “Outstanding Achievement in the Area of Intellectual Property Law” award given by the Philadelphia Intellectual Property Law Association; and the annual Judicial Honoree Award by the Bar Association of the District of Columbia. In 2010 he received the U.S. Patent and Trademark Offices’ Federico Award for “outstanding contribution to the Patent and Trademark Systems of the United States of America”; the North American Lifetime Achievement Award by Managing Intellectual Property Magazine; the Distinguished Intellectual Property Professional Award from the Intellectual Property Owners Education Foundation; the career achievement award of the American Intellectual Property Law Association (AIPLA); and was one of five global figures inducted into Intellectual Asset Management magazine’s Intellectual Property Hall of Fame. He has been a Member of Honor of FICPI since 2001.
Since retiring from the court, Judge Michel continues to share knowledge gained during his 22 years on the court by speaking out on issues related to the courts and the patent system. He also provides mediation, arbitration, and case evaluation services to private clients.
Judge Michel is also serving as an advisor to a number of organizations. In June 2010, Judge Michel was elected a member of the Board of Directors of the Intellectual Property Owners (IPO) Education Foundation and became a Distinguished Scholar in Residence there. He also serves as Special Advisor to the Patent Reform Task Force and the Council of the Section on Intellectual Property of the American Bar Association, and is a member of the AIPLA Committee on Public Appointments. Most recently he was invited to join the Advisory Committee of the World Intellectual Property Organization’s Networked Innovation project and the Advisory Committee of the Manufacturing Initiative of the U.S. Council on Competitiveness.
Suzanne Michel is Senior Patent Counsel at Google where she focuses on patent policy issues. Before joining Google in 2011, she was Deputy Director in the Office of Policy Planning at the Federal Trade Commission where she worked on patent policy and IP/antitrust issues. At the FTC, she headed the project on the “Evolving IP Marketplace,” including the drafting of the Commission report, released in March 2011. The FTC awarded her the Paul Rand Dixon award and the Excellence in Supervision award.
Before joining the FTC in 2000, Suzanne worked at the U.S. Department of Justice as a patent litigator. Suzanne received her B.S. with honors from Northwestern University and her Ph.D. in Chemistry from Yale University. She graduated from Boalt Hall School of Law at Berkeley, where she was a member of the Order of the Coif and received the prize for best paper published by a graduating student. Following law school, she served as a law clerk to the Honorable Paul R. Michel (no relation) at the Court of Appeals for the Federal Circuit. She is a registered patent attorney.
Mr. Nikolsky is a registered patent attorney in the Intellectual Property/Information Technology law practice group of McCarter & English. His practice focuses on the procurement, licensing, and enforcement of Intellectual Property rights, including patents, trademarks, copyrights and trade secrets.
A substantial portion of Mr. Nikolsky’s practice is devoted to representing clients before the U.S. Patent and Trademark Office to acquire patents covering technologies in the electrical, mechanical, and software arts, including computer software and hardware, digital and analog systems, optoelectronics, semiconductor fabrication processes, business methods, plasma physics devices, telecommunications, distributed computing systems, and other types of technologies. Additionally, Mr. Nikolsky conducts PCT and foreign international filings on inventions, and interacts with clients on a nearly daily basis to draft and refine patent applications and advise on prosecution strategies.
Mr. Nikolsky frequently prepares Intellectual Property opinions including patent validity, patent infringement, patent novelty, and trademark search opinions. He participates in litigation proceedings involving Intellectual Property matters including patent, trademark, and copyright infringement. Additionally, Mr. Nikolsky has experience with patent reexamination, trademark opposition, and trademark cancellation proceedings, as well as negotiating and drafting business-related agreements including technology licensing, confidentiality, and non-disclosure agreements. Mr. Nikolsky has a technical background in Computer Science, and is active in industry associations including the Association for Computing Machinery (ACM) and the Institute for Electrical and Electronics Engineers (IEEE). He also gives presentations to small business and educational entities regarding Intellectual Property protection.
Chief Judge Randall Radar
Randall R. Rader was appointed to the United States Court of Appeals for the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Circuit Judge on June 1, 2010. He was appointed to the United States Claims Court (now the U. S. Court of Federal Claims) by President Ronald W. Reagan in 1988.
Chief Judge Rader’s most prized title may well be “Professor Rader.” As Professor, Chief Judge Rader has taught courses on patent law and other advanced intellectual property courses at George Washington University Law School, University of Virginia School of Law, Georgetown University Law Center, the Munich Intellectual Property Law Center, and other university programs in Tokyo, Taipei, New Delhi, and Beijing. Due to the size and diversity of his classes, Chief Judge Rader may have taught patent law to more students than anyone else.
Chief Judge Rader has also co-authored several texts including the most widely used textbook on U. S. patent law, “Cases and Materials on Patent Law,” (St. Paul, Minn.: Thomson/West 3d ed. 2009) and “Patent Law in a Nutshell,” (St. Paul, Minn.: Thomson/West 2007) (translated into Chinese and Japanese).
Chief Judge Rader has won acclaim for leading dozens of government and educational delegations to every continent (except Antarctica), teaching rule of law and intellectual property law principles. Chief Judge Rader has received many awards, including the Sedona Lifetime Achievement Award for Intellectual Property Law, 2009; Distinguished Teaching Awards from George Washington University Law School, 2003 and 2008 (by election of the students); the Jefferson Medal from the New Jersey Intellectual Property Law Association, 2003; the Distinguished Service Award from the Berkeley Center for Law and Technology, 2003; the J. William Fulbright Award for Distinguished Public Service from George Washington University Law School, 2000; and the Younger Federal Lawyer Award from the Federal Bar Association, 1983.
Before appointment to the Court of Federal Claims, Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary. From 1975 to 1980, he served as Counsel in the House of Representatives for representatives serving on the Interior, Appropriations, and Ways and Means Committees. He received a B.A. in English from Brigham Young University in 1974 and a J.D. from George Washington University Law School in 1978.
Arti Rai, Elvin R. Latty Professor of Law at Duke Law School and member, Duke Institute for Genome Science and Policy, is an authority in patent law, administrative law, and innovation policy. Rai has also taught at Harvard, Yale, the University of Pennsylvania, and the University of San Diego law schools. From 2009-2010, Rai took a leave of absence from Duke Law School to serve as the Administrator of the Office of External Affairs at the U.S. Patent and Trademark Office. Rai’s academic research on innovation policy in areas such as synthetic biology, green technology, drug development, and software has been funded by NIH, the Kauffman Foundation, and Chatham House.
Daniel B. Ravicher
Daniel B. Ravicher is Executive Director of the Public Patent Foundation (“PUBPAT”) and a Lecturer in Law at Benjamin N. Cardozo School of Law. Labeled a modern day ‘Robin Hood’ by Science magazine, and awarded an Echoing Green Fellowship for social entrepreneurship, Professor Ravicher is a registered patent attorney who writes and speaks frequently on patent law and policy, including twice testifying as an invited witness before Congress on the topic of patent reform. As a result of his accomplishments and professional reputation, Professor Ravicher was named to both Managing Intellectual Property magazine’s ’50 Most Influential People in IP’ list and IP Law & Business magazine’s ‘Top 50 Under 45’ list. Professor Ravicher received his law degree from the University of Virginia School of Law, where he was the Franklin O’Blechman Scholar of his class, a Mortimer Caplin Public Service Award recipient and an Editor of the Virginia Journal of Law and Technology, and his bachelors degree in materials science magna cum laude with University Honors from the University of South Florida. Professor Ravicher writes about patent policy issues for the Huffington Post and patent related corporate valuation issues for Seeking Alpha. He is admitted to the United States Supreme Court, the Courts of Appeals for the Federal, 2nd and 11th Circuits, the District Courts for the Southern and Eastern Districts of New York, the State of New York, and the United States Patent and Trademark Office.
Julie Samuels is a Staff Attorney at EFF, where she focuses on intellectual property issues. Before joining EFF, Julie litigated IP and entertainment cases in Chicago at Loeb & Loeb and Sonnenschein Nath & Rosenthal. Prior to becoming a lawyer, Julie spent time as a legislative assistant at the Media Coalition in New York and as an assistant editor at the National Journal Group in D.C. She was also an intern at the National Center for Supercomputing Applications. Julie earned her JD from Vanderbilt University and her B.S. in journalism from the University of Illinois at Urbana-Champaign.
Jason M. Schultz
Jason M. Schultz is an Assistant Clinical Professor of Law and Director of the Samuelson Law, Technology & Public Policy Clinic at the UC Berkeley School of Law (Boalt Hall). Before joining Boalt Hall as a faculty member in the Samuelson Clinic, he was a Senior Staff Attorney at the Electronic Frontier Foundation (EFF), one of the leading digital rights groups in the world. Prior to EFF, he practiced intellectual property law at the firm of Fish & Richardson, P.C. and served as a clerk to the Honorable D. Lowell Jensen of the Northern District of California.
Robert Greene Sterne is a Founding Director of Sterne, Kessler, Goldstein & Fox P.L.L.C. He is a recognized thought leader on the subjects of patent reexamination and concurrent litigation, post issuance proceedings under the new America Invents Act, patent monetization, licensing and enforcement, USITC 337 proceedings, corporate intellectual property best practices including the Chief Intellectual Property Officer (CIPO), and Board of Director responsibility for IP. He has spoken and written extensively on these topics over the past 30 years. With regard to technology, he specializes in cutting edge technologies in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology and business methods. He has handled over 150 reexaminations at the PTO. He is highly rated in peer-review lists, including Chambers, Best Lawyers in America, IAM, Super Lawyers, and others, and is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004).
Marian Underweiser is IBM’s Counsel for IP Law Strategy and Policy. Dr. Underweiser develops IBM’s policy on a broad spectrum of IP matters, including legislative, PTO, and judicial reform. She has worked extensively representing IBM’s position on the America Invents Act throughout the legislative process, and continues to do so through current implementation efforts. Her amicus work includes IBM’s briefs to the Supreme Court in Microsoft v. i4i, eBay v. Mercexchange, KSR v. Teleflex, Bilski v. Kappos, and Quanta v. LG. Dr. Underweiser has held several prior positions at IBM with responsibilities including the management and oversight of IBM’s worldwide patent portfolio and management of the IP department at IBM’s T.J. Watson Research Center. As a member of IBM’s Corporate IP licensing team, Dr. Underweiser negotiated major IP transactions including patent and technology licenses, litigation settlements, and business line divestitures. Before joining IBM, Dr. Underweiser was an attorney at Kenyon & Kenyon, LLP an intellectual property law firm in New York.
Dr. Underweiser is a graduate of Harvard University where she received her AB in Physics. She received her PhD in Physics from UCLA, where she specialized in Condensed Matter Physics, and her JD from Columbia Law School where she was a Stone and Kent scholar. She is admitted to the United States Supreme Court, the District Courts for the Southern and Eastern Districts of New York, and the State of New York. She is a registered patent attorney and is an adjunct professor at the Benjamin N. Cardozo School of Law where she teaches an advanced course in Technology Licensing.
Driving directions to Princeton and campus maps are available on the Princeton Visitor Site.
Please see the Visitor Parking website for information regarding parking in the appropriate visitor lots on campus. You will probably want to park in Lot 21. There is also metered parking along William, Olden, and Prospect.
When coming by train from NYC, take the NJTransit northeast corridor line from New York Penn station to Princeton. When coming by train from Philadelphia, take the SEPTA train from Philadelphia to Trenton. Then take NJTransit northeast corridor line from Trenton Station to Princeton. In either case, you must change trains at Princeton Junction and take a smaller train called the “dinky” to Princeton, or take a cab to campus. When headed home, trains leave from the Princeton station roughly every half hour. Assume about two hours to go from Princeton Station to Philadelphia, New York Penn Station, or to get to your terminal at Newark Airport. If you are going to Newark Airport on NJTransit, be sure to buy the “Newark International Airport (EWR)” ticket rather than the “Newark” ticket — you will use this ticket to ride the airport shuttle train called the “Airtrain” to your terminal.
The E-Quad is within walking distance from the Princeton train station and from most parking lots. CITP’s building, called Sherrerd Hall, and the Friend Center building are both in the E-Quad area between William Street and Prospect Avenue, near Olden Street (the best address for GPS is: 35 Olden Street, Princeton, New Jersey, 08544). If you wish to take a shuttle instead of walking, refer to the shuttle tracking map for details of which shuttle to take. Your stop is the Friend Center building on the corner of Olden and Nassau.
The Hyatt Regency Princeton, 102 Carnegie Center, Princeton, NJ 08540 – Phone: 609.734.4080. The Hyatt Recency does provide shuttle bus service to campus.
The Nassau Inn, Ten Palmer Square, Princeton, NJ 08542 – Phone: 609.921.7500. The Nassau Inn is within walking distance to campus. This hotel most likely will not have availability on May 10th and 11th due to other on-campus events.
The Hyatt Place Princeton, 3565 US Highway 1, Princeton, NJ 08540 – Phone: 609.799.0550. The Hyatt Place does provide shuttle bus service to campus.
The Residence Inn Princeton at Carnegie Center, 3563 US Route 1, Princeton, NJ 08540 – Phone: 609.720.0200. The Residence Inn does provide shuttle bus service to campus.
For more hotel options go to Campus Travel. Click on the left menu option “Hotels” and then select “Princeton Area Hotels.” (Ask for the Princeton rate. You may want to confirm with the hotel that they have shuttle service to campus.)
- Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II (PDF), 21 Federal Circuit Bar Journal 435 (2012)
- Intellectual Property Owners Association, Comparison of Selected Sections Of Pre-AIA and AIA U.S. Patent Law (PDF), October 2012.
- Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Review 29.
- Jason Schultz and Jennifer Urban, Protecting Open Innovation: A New Approach to Patent Threats, Transaction Costs, and Tactical Disarmament, Harvard Journal of Law and Technology, Vol. 26, 2012.
- Colleen Chien, Race to the Bottom, Intellectual Asset Management Magazine, Vol. 51, p. 10, January/February 2012
- Federal Trade Commission, The Evolving IP Marketplace, Aligning Patent Notice and Remedies With Competition, March 2011. (Executive Summary, pp. 7-30)