Previous Events & CLE Programs
April 24, 2008
CLE Program
VC Financing of Technology Companies: A Look Under the Hood

Sponsored by:
Corporate Law Committee
Intellectual Property Law Committee

Venture capital investments in technology companies play a significant role in our New England economy, with almost $4 billion invested by VCs in New England in 2007 alone. This program will provide attendees with an insider’s view into VC transactions involving technology companies. The seminar will be presented by a panel of both legal experts and industry insiders, including in-house attorneys, venture capitalists, and entrepreneurs.

Click here for complete program description.
April 17, 2008
Committee Meeting
Dealing With the Changing Landscape of Patent Law: A View from the Life Sciences and the University/ Non-Profit Perspective

Please join David S. Resnick, Nixon Peabody LLP, as he helps make some sense of these "interesting times" in patent law. Specifically we will discuss recent changes generally and how they particularly affect the life sciences and university/ non-profits.
March 11, 2008
Committee Meeting
The Computer Fraud and Abuse Act: An Overview and Discussion of a Recent First Circuit Case

Sponsors
Computer & Internet Law Committee
Intellectual Property Law Committee

Join John Bauer, Robinson & Cole LLC, and Scott J. Nathan, to learn more about the Computer Fraud and Abuse Act and its impact on your day to day practice. We will also discuss the implications of a recent first circuit case, EF Cultural Travel BV v. Zefer Corporation and Explorica, Inc.
November 15, 2007
Committee Meeting
The Top 9 Legal Mistakes Authors (And Their Lawyers) Make

Sponsors
Intellectual Property Law Committee
Arts, Entertainment & Sports Law Committee

Howard G. Zaharoff, Morse, Barnes-Brown & Pendleton, P.C., will discuss the most common mistakes authors and their lawyers make when submitting a proposal, engaging a collaborator or agent, or signing on with a publisher. Come learn what these mistakes are and how to avoid them.

Mr. Zaharoff is a former co-chair of the Boston Bar Association's Arts and Entertainment Law Committee, Computer and Internet Law Committee, and Intellectual Property Section. He serves on the faculty for the Harvard Medical School Department of Continuing Medical Education annual Publishing Books, Memoirs and Other Creative Non-Fiction Course, and has also lectured on publishing law topics for the Copyright Society, National Writers Union, Society of Children's Book Writers and Illustrators, and MCLE, among others. He is a frequent contributor to Writer's Digest and has also written on publishing law topics for Publishers Weekly, Folio: and The Writer. He is the author of Stump Your Lawyer! (Chronicle Books 2007).
October 10, 2007
Committee Meeting
Enhanced Damages and Opinions of Counsel in the Wake of Seagate
Sponsors
Intellectual Property Litigation Committee
Intellectual Property Law Committee

Susan Glovsky, a Principal at Hamilton Brook Smith Reynolds, will discuss the recent Federal Circuit decision in Seagate, which creates a new standard for awarding enhanced damages for willful infringement in patent cases. The talk will include a discussion of opinions of counsel, privilege waiver, and the new significance of preliminary injunction motions.
September 20, 2007
Committee Meeting
Innovating with Regime Change - The Patent Offices New Rules

Ramon K. Tabtiang of Fish & Richardson P.C. will introduce the fundamental aspects of the USPTOs new regulations limiting continuation practice and claim examination and will describe some strategic approaches for patent prosecution under the new regime.

Mr. Tabtiang is one of the leaders of Fish & Richardsons task force to adapt prosecution practice for the new regulations.
March 27, 2007
Committee Meeting
Patent Licensing Strategies After MedImmune v. Genetech

David M. McIntosh and Charles D. Larsen of Ropes & Gray LLP will discuss the January Supreme Court decision MedImmune v. Genetech which changed the rules of the patent licensing game. This decision allowed a licensee to bring a declaratory judgment action challenging the validity of a licensed patent without being in breach of the license agreement. Specifically, they will address:
- What the rules are now
- What provisions licensors should be seeking
- What is enforceable
- What your best arguments for them are at the negotiating table
- What your best arguments are against them if you are representing a licensee
Come with your ideas, strategies and war stories, have some pizza and beer (or a soft drink), and brace yourself for what should be a lively discussion.
March 20, 2007
Committee Meeting
Mega Deals – Terms and Issues

Sponsors
Intellectual Property Law Committee
Life Sciences Committee

Dr. Frances Toneguzzo, Director of Corporate Sponsored Research at Massachusetts General Hospital, will discuss the terms and issues of mega deals.

Dr. Toneguzzo has been involved in several negotiations involving important therapeutic patent portfolios with pharmaceutical companies and with large biotech companies that in recent years have evolved into pharmaceutical companies. She is in an excellent position to analyze legal issues that have arisen that may be unique to mega deals, and may also be relevant to deals more typical of universities.
February 15, 2007
Committee Meeting
Biogenerics and their Impact on the US Patent System
Gregory Sieczkiewicz, Ph.D., an associate at Proskauer Rose LLP will discuss advances in the field of biogenerics and the potential impact of these products on the patent system. Specifically, he will discuss the recently introduced legislation entitled, “Access to Life-Saving Medicines Act.”
November 16, 2006
Committee Meeting
Post eBay: What are the Courts doing?

Denise W. DeFranco, a partner at Foley Hoag LLP, will discuss the Supreme Court’s eBay decision regarding permanent injunctions and analyze the likelihood of obtaining them in the post eBay world.
October 19, 2006
Committee Meeting
The CREATE Act: Creating or Solving Problems?

The CREATE Act amends Section 103 of the Patent Statute to expand its safe harbor provisions. Thomas J. Engellenner and Reza Mollaaghababa of Nutter McClennen & Fish LLP will discuss the Act and its implications for patent prosecution as well as various types of agreements.
October 18 , 2006
Committee Meeting
"Trademarks 101"

**This meeting is co-sponsored with the Intellectual Property Litigation Committee and New Lawyers Section**

William J. Morris of Bromberg & Sunstein LLP will discuss the basics of trademark practice before the USPTO.
September 21, 2006
Committee Meeting
Recent Developments In Trademark Law

John F. Ward of Bromberg & Sunstein LLP will lead a discussion of recent federal trademark decisions and changes to Massachusetts trademark statute.
June 15, 2006
Committee Meeting
How the Proposed USPTO Rule Changes Will Affect Your Clients and What You Can About It

Edward A. Gordon and David P. Halstead, both with Ropes & Gray LLP, will describe the U.S. Patent Office’s proposed changes to the rules which govern how one obtains a patent in the United States. They will also discuss the impact these changes will have on a client’s ability to fully exploit its intellectual property and will suggest methods for mitigating the potential downsides of the rules.
May 18, 2006
Committee Meeting
Prejudgment Interest in Patent Damages Cases

Professor Roy J. Epstein Ph.D , an Adjunct Professor of Finance at Boston College, will discuss the principles relevant for determining the amount of prejudgment interest in patent damages cases. He will explain the key economic considerations and apply them to a number of interesting recent cases. What may come as a surprise is that the prime rate is too high in many cases, even though it is often advocated as conservatively low. For lengthy damages periods and/or large damages awards, use of the wrong interest rate can have significant financial implications.

Professor Epstein will draw upon his article in the Winter 2006 IPL Newsletter titled Prejudgment Interest Rates in Patent Cases Don’t Compound an Error.
April 20, 2006
Committee Meeting
Advising Clients on Contractual Prohibitions on Reverse Engineering

Karen F. Copenhaver, of Choate, Hall & Stewart, will discuss how advisors can preserve credibility with their clients when the law appears to impose impractical limitations on legitimate business interests. Recent case law has fundamentally changed the rules regarding competitive analysis in the software industry. Standard provisions in mass market software contracts prohibiting reverse engineering may restrict even a visual inspection of software screens. Once a sacred practice promoting innovation, reverse engineering is fast becoming a clandestine operation.
November 17, 2005
Committee Meeting
Maximizing the Value of Corporate IP Assets: Licensing and Tax Strategies and Pitfalls

David M. McIntosh, an IP attorney at Ropes & Gray LLP, and Stephen E. Shay,a tax Partner at Ropes & Gray LLP, will lead a discussion of licensing and tax strategies and pitfalls designed to help your company or client maximize the value of its IP assets. The discussion will examine several common examples of IP asset ownership and licensing structures, identify pitfalls associated with each, and articulate strategies for avoiding those pitfalls and maximizing value from both a tax and IP lawyer’s perspective.

Topics discussed will include:
- How different licensing structures among related companies (or lack thereof) can impact a company’s ability to assert and collect damages for third party infringement of its IP;
- U.S., state and international tax consequences of such structures;
- How the terms of intra-company licenses matter from both an IP and tax perspective;
- Strategies to achieve tax efficiency (or at least avoid pitfalls) without undermining the enforcement value of the IP; and
- Advanced planning for divestitures and spin outs.
September 15, 2005
Committee Meeting
Click here for meeting materials
Practical Strategies for Negotiating and Structuring Academic-Industry Technology License Agreements
In cooperation with the College & University Law Section.

Jonathan Lourie, Partner at Edwards & Angell LLP and Maryanne Fenerjian, Ph.D., J.D., Licensing Manager, Harvard Medical School Office of Technology Licensing will lead a discussion of major issues that typically arise in negotiating and structuring license agreements between academic institutions and for-profit companies. A case study will be used to illustrate key considerations in the negotiation of a technology license agreement from both the University and company perspectives.

Meeting Materials
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