Thursday, September 29, 2022 - Friday, September 30, 2022
9:00 AM - 4:45 PM | Check-In: 8:30 AM
Minnesota CLE Conference Center
600 Nicollet Mall # 370
3rd Floor, City Center
Minneapolis, MN 55402
New Developments – Identified, Explained, and Applied to Real-World Scenarios
The Midwest IP Institute is your “one stop” for practical updates on the new laws, new rules, new cases, and current trends that private practice advisors, litigators, and in-house counsel need to know.
Impressive Faculty Roster with Diverse Practice Perspectives
The 2022 Institute features an outstanding faculty committed to providing the best and most practical education for you. The conference faculty is drawn from in-house, private practice, and government. This faculty mix leverages diverse insights and perspectives to deliver top-quality education – spotting and analyzing the issues that matter and offering real-world advice and practice tips.
26 Sessions – Cutting Edge and Core Topics
A great line-up! Here are just some of the many sessions and topics at this year's Institute –
And Much More – Including 3 Bonus Post-Institute Webcasts!
8:30 – 9:00 a.m.
Coffee, Continental Breakfast & Conversation!
Enjoy complimentary continental breakfast as you chat with your fellow attendees at the Minnesota CLE Conference Center. Plus, you’ll get a $5 skyway gift card to use for a fancy coffee or tea drink during the Institute or save for a rainy day!
9:00 – 9:10 a.m.
WELCOME & ANNOUNCEMENTS
9:10 – 9:40 a.m.
2022 United States Patent and Trademark Office Update
Damian Porcari, the Director of the Midwest Regional United States Patent and Trademark Office, shares an update on the latest developments and new initiatives at the USPTO.
– Damian Porcari & Terrance C. Newby
9:40 – 10:40 a.m.
IP 2022 – What Happened, Why It Matters and What’s Next
In this session, Felicia Boyd and Greg Brown distill significant changes into topic “buckets” to provide a digestible big-picture look at what’s new. They also discuss the future implications of today’s new developments – and what other changes tomorrow may bring in the IP space.
– Felicia J. Boyd & Gregory C. Brown
10:40 – 10:55 a.m.
10:55 – 11:35 a.m.
Disruption in the IP Space – Part I: A Focus on Emerging Technologies
AI, blockchain, NFTs and the metaverse have already made an impact and will likely continue to change our world in significant ways. A major challenge for IP lawyers is how to keep up with the rapid pace of innovation and government efforts to regulate these groundbreaking technologies. Dan Tysver, partner with Forsgren Fisher McCalmont DeMarea Tysver in Minneapolis, explores how emerging technologies are disrupting IP law and practice, how they might cause further disruption in the future, and how IP lawyers can navigate the challenges ahead.
– Daniel A. Tysver
11:35 a.m.– 12:15 p.m.
COVID mRNA Vaccine Patents: The Unsung Story of a Little Lipid
Messenger RNA (mRNA) has emerged as a new category of therapeutic agent to prevent and treat various diseases. James Velema shares a high-level overview of the groundbreaking mRNA vaccine technology and the IP backstory of the lipid nanoparticles required to deliver them. He will also discuss several recent high-profile patent disputes between the key players.
– James H. Velema
12:15 – 12:30 p.m.
LUNCH – PROVIDED TO ALL ATTENDEES
12:30 – 1:00 p.m.
IP Spotlight – The University of Minnesota’s New Sports and NIL Clinic
Christopher D. Pham will lead the new Sports and NIL Clinic at the University of Minnesota Law School in partnership with Fredrikson & Byron. The clinic will offer name, image, and likeness (NIL) legal assistance to students, including college athletes and social media influencers of all types for help with navigating sponsorships, endorsement deals and image licensing, among other things. The Sports and NIL Clinic will launch in the fall of 2022 and will be open to any collegiate student throughout the country with NIL-related needs in this rapidly evolving area of law.
– Christopher D. Pham
1:00 – 1:15 p.m.
1:15 – 2:15 p.m.
BREAKOUT SESSION A
2022 Patent Law Year in Review – Distilling the Federal Circuit’s Decisions Into Action-Oriented Practice Tips
What better way to tackle the full range of this past year’s precedential Federal Circuit IP decisions than to break the new cases up by major topics, and fit them into the developing case law from prior years – complete with actions you should take and changes and new trends that you should be aware of. That’s the practical, distilled content this session delivers! The expected topics include employee mobility in the context of inventorship and ownership, developing opportunities and challenges in post-grant proceedings including Fintiv discretionary denials, new trends for all forms of patent validity issues, and effect on patent litigation practice and procedure.
– John A. Dragseth & Nitika Gupta Fiorella
Updates to the New Trademark Modernization Act
Tiffany Blofield and Joshua Burke provide updates regarding the new Trademark Modernization Act of 2020 and recent rulemaking which establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made (including setting forth the requirements for the petitions, and elaborating on reasonable investigation); provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board; establishes flexible Office action response periods; and elevates the existing letter-of-protest rule from a regulatory level to a statutory level and indicates that letter-of-protest determinations are final and non-reviewable, and more.
– Tiffany A. Blofield & Joshua J. Burke
How to Mitigate IP and Other Risks in Your Marketing Department’s Social Media Posts
– Heather J. Kliebenstein & William D. Schultz
2:15 – 2:30 p.m.
CUPCAKE BREAK – Who can resist a fresh cupcake? Take a break and have some cake!
2:30 – 3:30 p.m.
BREAKOUT SESSION B
Protecting Your Core Products – Patent Preparation Strategies
Your client’s business plan has a lot riding on your company’s core product line. What is the best way for you to get the maximum amount of protection in today’s patent environment? In this session, a team of experts will help us get our arms around how to frame the key considerations for effective patent drafting and filing for a core product line, and will dive deeper into the following topics –
– Timothy E. Bianchi & Drew Hirshfeld
Evolving Online Threats: What You Need to Know About the Latest Tactics Bad Actors Are Using to Abuse Your Brand
The COVID-19 pandemic further accelerated the shift to online spending and while brands quickly followed suit, infringers were already one step ahead. Marc Trachtenberg from the Chicago office of the Greenberg Traurig firm, Tucker Chambers, Senior Trademark Counsel at Impossible Foods, and Shelby Bruce, Senior Trademark Counsel at 3M, will explore the latest techniques and tactics infringers are using online, as well as the best practices companies are using to bridge the gap and crack down.
– Shelby Bruce, Tucker A. Chambers & Marc H. Trachtenberg
IP and Technology License Agreements: Fundamental Provisions and Industry Norms from Both Sides of the Table
Licensing arrangements can provide IP-generating businesses with a great opportunity for passive revenue, allowing a company to commercialize its technology while maintaining ownership of the underlying intellectual property. Equally positive opportunities can be found by leveraging in-bound licenses rather than developing all IP and technology in-house. While license discussions typically begin based on commonly used provisions and terms, each license negotiation is bespoke due to the uniqueness of the technology and proposed use. This presentation will focus on the fundamental provisions that all license agreements should contain, as well as pitfalls for the unwary and a discussion of industry norms for license agreements from the licensor and licensee perspective.
– Catlan M. McCurdy
3:30 – 3:45 p.m.
BREAK – Grab a beverage, chat and turn in your Prize Drawing Entry Form!
3:45 – 4:45 p.m.
BREAKOUT SESSION C
Patent Infringement Remedies – How to Maximize Your Client’s Remedies by Advanced In-House Planning, Claim Drafting, and Litigation Strategy
This session will identify decisions and considerations that may impact a patentee’s ability to obtain certain types of remedies after establishing infringement, starting with early in-house decisions about patent ownership, licensing, and notice, continuing to portfolio development and claim scope drafting, and ending with litigation strategies and evidentiary requirements. The session will cover a wide range of topics, all which may impact the availability and likelihood of securing various types of remedies, including injunctive relief, lost profits, and a reasonable royalty. The goal will be to ensure that all attorneys involved in the decision tree leading up to a patent enforcement action are able to flag issues that may impact the availability of remedies at its conclusion.
– Samuel T. Lockner
2022 Trademark Law Year in Review
Three trademark law experts will discuss a wide range of recent decisions shaping trademark law in 2022, including cases involving NFTs of Hermès handbags, application of the first sale doctrine, interpretation of the Madrid Protocol, jurisdictional due diligence and more.
– Daniel J. Kelly, Susan A. Perera & Timothy D. Sitzmann
Top Tips for Handling IP Cease-and-Desist Letters
You are either sending them or getting them: cease-and-desist letters for alleged IP infringement. Get our top tips for handling demands and responses effectively, dodging missteps, dealing with NPEs, leveraging unconventional approaches, and best advocating for you or your client’s position. Join us for a fast-paced session packed with the insights of two highly experienced IP attorneys whose backgrounds run the gamut of contentious IP matters, including those involving trademarks, copyrights, patents, and trade secrets.
– Shannon Bjorklund & Evan P. Everist
4:45 – 6:00 p.m.
WELCOME-BACK RECEPTION AT FOGO DE CHAO!
courtesy of the sponsoring firms
A Celebratory Reception with a Whole New Look!
To celebrate the return to in-person learning, Thursday’s reception will take place downstairs from the Conference Center at Fogo de Chao. Fogo Minneapolis is located in the famous Hennepin Theatre District at City Center within walking distance of Target Center, museums, art galleries and hotels.
Food, Fun and a Chance to Win Big Prizes!
Register for a chance to win a Specialized Turbo Como Electric Bike or 1 of 3 Apple Watches. The prize drawing will take place at the reception on Thursday, September 29, and you must be present at the reception during the prize drawing to win. Any person may receive and submit an entry form on Thursday, September 29, at the Institute registration desk until the reception begins at 4:45 p.m. Registration for the 2022 Midwest IP Institute is not required. The following individuals are not eligible to win: employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
8:30 – 9:00 a.m.
Coffee, Hip Donuts & Healthy Stuff, Too!
Enjoy a fun range of breakfast foods – and coffee, tea, and juice – as you chat with your fellow attendees at the Minnesota CLE Conference Center.
9:00 – 10:00 a.m.
Inside Minnesota IP: Meet the Inventors and Entrepreneurs
Join this panel for a fun, behind-the-scenes exploration of three local IP stories. You’ll hear from two lawyers turned entrepreneurs: One who started a mission-centric gourmet cookie business and another who developed an app designed to de-escalate conflict in interactions between police and citizens. You’ll also meet an inventor who made an innovative refinement to a simple medical device.
– Sahr A.M. Brima, Jazz A. Hampton, Amanda M. Prose, Allisa Song & Mark D. Stignani
– Lukas Toft (moderator)
10:00 – 10:05 a.m.
10:05 – 10:50 a.m.
Disruption in the IP Space – Part II: Political, Economic and Practice Focus
Intellectual property practice is not immune from the market forces, political turmoil and societal changes that are disrupting our world in 2022. Tim Kenny, Co-Head of IP, United States at Norton Rose Fulbright, and Patrick Bottini, General Counsel at Jack Link’s Protein Snacks share their perspectives and discuss how these developments are disrupting IP practice both directly and indirectly, and how IP lawyers can anticipate them and respond proactively.
– Patrick C. Bottini & Timothy M. Kenny
10:50 – 11:00 a.m.
BREAK – On the way to your breakout session, turn in today’s Prize Drawing Entry Form!
11:00 a.m. – 12:00 p.m.
BREAKOUT SESSION D
The New Unified Patent Court and The Million-Dollar Question – When Should a Client NOT Apply for a Unitary Patent?
The new European Unified Patent Court is likely to begin operations by early 2023. The question of the hour is – “What do I advise a client as to when and whether to apply for a unitary patent as opposed to continuing what they are already doing?” To help you answer that question, this session provides the expert nuanced insights of European patent lawyers Richard Ebbink and Mark van Gardingen, in conversation with experienced in-house counsel, Todd Messal.
– Richard Ebbink & Mark van Gardingen
– Todd Messal (moderator)
2022 Copyright Law Year in Review
This presentation will update you on important developments in U.S. copyright law over the past year, including a Supreme Court decision on the consequences of mistakes made by the copyright holder when applying to register a copyright and a circuit split related to the copyrightability of house floor plans. Dan Booth, a Copyright Claims Attorney at the U.S. Copyright Office, will provide an update on the proceedings of the newly formed Copyright Claims Board.
– Dan Booth, Adrianna M. Chavez & Abigail E. Flores
Trademark Clearance and Registration – Essential Know-How for In-House Counsel
Experienced trademark lawyers – one in-house counsel, one private practitioner – provide practical insights on trademark clearance and registration:
Plus, you’ll leave with a trademark clearance checklist, a sample trademark clearance opinion, and other helpful resources!
– Patrick J. Gallagher & Mayura I. Noordyke
12:00 – 12:05 p.m.
A Perfectly-Timed Prize Drawing! – Your Chance to Win 1 of 5 $50 Restaurant Gift Certificates!
The prize drawing will take place at the start of the lunch break on Friday, September 30. Any person may receive and submit an entry form on Friday, September 30, at the Institute registration desk until 11:30 a.m. Registration for the 2022 Midwest IP Institute is not required. The following individuals are not eligible to win: employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
12:05 – 1:00 p.m.
LUNCH BREAK – ON YOUR OWN
1:00 – 2:00 p.m.
BREAKOUT SESSION E
Standard-Essential Patents – Practical Strategies for the Rapidly Evolving Legal Landscape
The legal landscape for standard-essential patent licensing and FRAND disputes seems to evolve daily around the world, creating uncertainty around innovation in multi-billion-dollar industries. This session will explore practical strategies for SEP innovators and implementers to position themselves to navigate this dynamic international landscape. Topics include what constitutes a FRAND license and rate, standing and jurisdictions for FRAND disputes and rate setting, and the availability of injunctive relief for hold out and hold up.
– Aaron R. Fahrenkrog & Emily J. Tremblay
When Are Product Resales Protected (and Not Protected) Under the First Sale Doctrine?
The First Sale Doctrine – and its close cousin the Exhaustion Doctrine – limits IP owners’ ability to control their respective IP following an initial authorized sale, but determining when the doctrine applies can be extremely confusing. If your client deals with the secondary market in any fashion, either as a purchaser/seller, or as an IP owner seeking to safeguard its rights, this presentation will provide you the critical information needed to successfully navigate the murky waters of the First Sale Doctrine.
– O. Joseph Balthazor Jr. & Michael M. Lafeber
What Every (Yes, Every!) In-House Counsel at the 2022 IP Institute Needs to Know About Patent Litigation
You’re not patent counsel, but that doesn’t insulate you or your in-house business clients from the potential impacts of patent litigation. Maybe you negotiate contracts that include language about patents, conduct due diligence or contribute to strategic discussions involving patents, or even find yourself on the receiving end of a letter accusing your company of patent infringement and threatening litigation. You can only fully understand what’s at stake – and weigh potential benefits and potential risk – if you know what you’re facing if claims of patent infringement ensue. This session discusses the decision points, costs, challenges, and possible outcomes in patent litigation with the specific goal of enhancing your ability to advise your clients in everyday matters.
– Nicholas S. Boebel, Aaron A. Myers & Michael D. Okerlund
2:00 – 2:15 p.m.
2:15 – 3:15 p.m.
BREAKOUT SESSION F
Claim Drafting Pitfalls and How to Avoid Them
A discussion of possible claim drafting pitfalls and strategies to avoid these pitfalls. Some of the pitfalls that will be discussed include means-plus-function in light of Williamson v. Citrix, Section 101 and Alice, and multiple infringers and inducement. We will look at actual claim examples and discuss how to modify the claim examples to avoid these pitfalls.
– Boyd B. Black
An Inside Look at the USPTO’s Post Registration Audit Program
Through its Post Registration Audit Program, the USPTO audits trademark registrations to weed out deadwood and improve the integrity of the trademark register. Although trademark practitioners may have a general understanding of the audit process, Montia Pressey, a Senior Attorney at the USPTO and the manager of the Audit Program, will provide insight into what happens during an audit that can help brand owners prepare their registrations now for an audit.
– Montia Givens Pressey
Data Privacy and Security – Recurring Themes for High-Stakes Issue-Spotting Including Overcoming Challenges in the Hybrid Workplace
It’s perhaps no surprise that the worlds of IP and data privacy and security sometimes overlap. To deepen your knowledge on the data privacy and security side of things, here’s a practical overview of the incredibly dynamic data privacy and security legal landscape, identifying major themes around data collection, security, sharing and other use, and incident response to help alert you to possible issues – including overcoming data security and privacy challenges in the hybrid workplace.
– Karen A. Brennan & Lisa B. Ellingson
3:15 – 3:30 p.m.
Break & Final Prize Drawing – Your Chance to Win 1 of 3 $100 Restaurant Gift Certificates!
The prize drawing will take place during the 3:15 p.m. break on Friday, September 30. Any person may receive and submit an entry form on Friday, September 30, at the Institute registration desk until 3:00 p.m. Registration for the 2022 Midwest IP Institute is not required. The following individuals are not eligible to win: employees of Minnesota CLE and the Minnesota State Bar Association, as well as family members of those employees.
3:30 – 4:30 p.m.
Ethics: Pitfalls and Privilege – Issues to Avoid When Seeking and Rendering Opinions of Counsel
1.0 ethics credit applied for
It is common practice for in-house counsel to seek advice from their outside lawyers on questions of patent infringement, patent validity, and trademark use and registrability. Written opinions of counsel can provide valuable strategic guidance for in-house counsel and the companies they serve, but they also raise thorny questions about waiver of attorney-client privilege – for example, when a company wants to use its advice of counsel as a defense to a claim of willful patent infringement. This presentation considers the law surrounding attorney-client privilege and waiver, as well as the strategic implications of that law on best practices for seeking and rendering opinions of counsel on patent, trademark, and other IP issues.
– Sanjiv P. Laud
As a special bonus, Institute attendees may attend the following 3 webcasts for free! A coupon code, along with instructions on how to register for free, will be provided at the Institute.
Tuesday, November 1, 2022
12:00 – 1:00 p.m.
Transformative Approaches to Intellectual Capital Management – A Fireside Chat with Bill Elkington
The preponderance of companies’ equity value resides in its intellectual capital; most experts calculate this to be at 60-90 percent. Yet often, there is no cadre of business experts charged with leading the management of intellectual capital in enterprises today. In this fireside chat, thought leader Bill Elkington will discuss how to overcome this problem – and how an organization’s businesspeople and its legal department can most successfully work together in this joint approach. Bill draws on his career in three Fortune 500 companies, a startup, and now in his consulting company; his work when he was president and chair of the Licensing Executives Society USA and Canada and chair of its Standards Board; and his time as one of a dozen people sitting on a government/industry committee to examine the US’s laws and regulations regarding intellectual capital transactions in Department of Defense contracting.
– Bill Elkington & Craig J. Lervick
Thursday, November 3, 2022
9:00 – 10:00 a.m.
How to Button Up Your Non-Disclosure Agreements to Protect Trade Secrets
In what circumstances do you need an NDA to protect trade secrets? And how do you draft, negotiate, and implement NDA’s that meet your client’s objectives? A teaching team of trade secrets advisors and litigators answer these questions, including lessons learned from new cases.
– Kerry L. Bundy, Randall E. Kahnke & Bryan K. Washburn
Thursday, November 3, 2022
12:00 – 1:00 p.m.
Career Opportunities in the IP Space: A Roundtable Discussion
The IP space is rich with options and opportunities for attorneys to use their skills and knowledge. Hear from a panel of lawyers who have held a wide variety of positions from private practice and in-house IP roles to teaching and joining the bench. Discover the paths that led them to their current roles, the challenges they faced along the way, what it takes to succeed, and advice for those considering career changes.
– Judge Rachel C. Hughey, Phillip W. Goter & Emily M. Wessels
– Anneliese S. Mayer (moderator)
Thursday & Friday, September 29-30, 2022
Minnesota CLE Conference Center
600 Nicollet Mall, Suite 370
Seventh Street & Nicollet Mall, Third Floor City Center
LIVE SIMULCAST – NO LONGER AVAILABLE
Thursday & Friday, September 29-30, 2022
Tuesday & Wednesday, October 25-26, 2022
Online replay includes all plenary and breakout sessions. A moderator will be available to answer questions by email.
$495 MSBA members / $495 paralegals / $595 standard rate
Other discounts that may apply:
Need-based scholarships are available for in-person and online seminars. For further information or to obtain a scholarship application, contact us at 800-759-8840 or email@example.com.
Minnesota CLE is applying to the Minnesota State Board of CLE for 12.0 CLE credits, including 1.0 ethics credit. The maximum number of total credits attendees may claim for this program is 12.0 credits.
Minnesota CLE is applying to the Minnesota State Board of CLE for 1.0 standard CLE credit for each post-Institute webcast.