28th Annual Intellectual Property Seminar: The Evolving Landscape of IP

MCLE Credits: 8.0
Ethics Credits Included: 2.0

Live on Site: Friday and Saturday, October 21 and 22 / Williamsburg
Registration: Friday: 12:30 p.m.
Program: Friday: 1:00 p.m. - Saturday: 12:45 p.m.
MCLE Credit: 8.0 (Ethics: 2.0)
Live-Interactive Credit: 8.0 Live Interactive MCLE Credit Symbol
Video on Site Options


Why Attend?

  • Explore the important changes and trends in all areas of intellectual property law
  • Network with your colleagues, and develop new contacts
  • Enjoy our social events and free time at the Williamsburg Lodge in Colonial Williamsburg

Cosponsored with the Intellectual Property Section of the Virginia State Bar

The last several years have brought significant changes to the world of intellectual property law. One example is that Congress has now passed a federal trade secret law: The Defend Trade Secrets Act. These changes will have significant impact on our clients and on the practice of IP law. This conference will cover many of these changes, as well as look at the road ahead for additional changes that could be on the horizon. The agenda will include discussion of the new trade secret law, changes in patent law, trademark law, copyright law, FTC enforcement, and PTAB practice, as well as two hours of ethics discussion.


Can't Attend?
Attend one of the 7 video replays offered statewide in December.
E-mail distance_ed@vacle.org to be notified when/if this program is made available as an online or USB seminar.
E-mail publications@vacle.org to be notified when/if this program's seminar materials are made available for sale.



Friday, October 21

12:30 Registration
1:00 Welcome and Introduction
Matt Osenga
1:10 Ethics in Settlement Negotiations
Moderator: Robert Tyler
Panelists: Judge Miller, Simon Davidson, Dana McDaniel


This panel will discuss ethical issues facing lawyers involved in negotiations in business transactions and litigation (including mediation). Topics to be covered:

  • Acceptable levels of deception during negotiations
  • Silence about the law and facts
  • Dealing with adversaries' substantive mistakes and scriveners’ errors
  • Privilege and work product waiver issues
  • The judge's role and expectation in mediation
  • Confidentiality
  • Enforceability of term sheets and settlement agreements
2:10 Ethics and Conflicts from Prosecution to Litigation to Inter Partes Review
Prof. Hricik
  • Conflicts of interest in patent litigation, prosecution, and opinion practice, focusing on Rule 1.7 and LEO 1774
  • Ethical duties of disclosure under the USPTO rules, including 37 CFR 42.11, and comparison with FRCP 11
3:15 Break
3:30 Federal Trade Commission Enforcement in Advertising
Lesley Fair
  • Advertising substantiation, POM Wonderful v. FTC, and the science of compliance
  • Linking and Liking: Counseling clients who market with social media
  • Going Mobile: The dos and don’ts of doing business on the small screen
  • The Internet of Things: Product innovation and consumer privacy
  • What FTC v. Wyndham means for the future of data security law enforcement
4:30 Best Practices: Filing Letters of Protest and Post-Publication Amendments (Including Changing Application Basis)
Colleen Kearney


This presentation will address the best practices for filing petitions, letters of protest, and other submissions concerning trademark matters to the Director of the United States Patent and Trademark Office.  In particular, the presentation will explain the procedures for seeking review of a USPTO action; requesting that supervisory authority be exercised; petitioning for a waiver of trademark rules of practice in extraordinary circumstances; submitting post-publication amendments of trademark applications; and protesting third-party applications.

5:30 Session adjourns
5:45 Cocktail Reception.  Sponsored by Thomson CompuMark.

Saturday, October 22

8:30 Copyright: Recent Developments
Tobey Marzouk
  • Protecting what’s protectable under copyright law
  • Copyright best practices:
    • Registration
    • Fair use
    • Statute of limitations
    • Retroactive licenses
    • Attorney fees
    • Other tips
9:30 Patent Law: Recent Developments and the Road Ahead
Prof. Wasserman Rajec
  • Recent Supreme Court rulings:
    • Patent damages (Halo/Stryker)
    • PTO rulemaking regarding claim interpretation in post-issuance reviews (Cuozzo)
  • What to expect from the Supreme Court next term:
    • Extra-territoriality regarding liability under section 271(f) for the manufacture and export of a component of infringing machines (Life Tech.)
    • Inducement infringement in importation (Suprema)
  • Developments at the Federal Circuit, including:
    • Interpretation of a "sale" for the purposes of applying the on sale bar under the America Invents Act (Hospira)
    • Recent patentable subject matter cases showing the Federal Circuit’s developing interpretation of Mayo and Alice
10:30 Break
10:45 A Look Inside the PTAB—Structure, Decision Making, and Discussion of Ex Parte and Inter Partes Proceedings
Judge Moore, Jason Eisenberg
  • Board structure and assignment of cases for ex parte and inter partes proceedings
  • The role of oral hearing on the overall process in ex parte and inter partes proceedings—and how it influences the Board as compared to the briefing
  • What is the most important evidence a Petitioner or Patent Owner can provide in an AIA proceeding for Institution Decision and Final Written Decision?
  • What influences a decision to deny or grant institution in an AIA decision?
  • AIA statistics and hot topics at the Board
11:45 Defend Trade Secrets Act of 2016
Prof. David S. Levine
12:45 Seminar adjourns
1:00 Closing Luncheon



Hon. Douglas E. Miller, U.S. District Court, Eastern District of Virginia / Norfolk
Hon. James T. (Jay) Moore, U.S. Patent Trial and Appeal Board / Alexandria
C. Simon Davidson, McGuireWoods LLP / Charlottesville
Jason D. Eisenberg, Sterne, Kessler, Goldstein & Fox PLLC / Washington, DC
Lesley Fair, Bureau of Consumer Protection, Federal Trade Commission / Washington, DC
Prof. David Hricik, Mercer University School of Law / Macon, GA
Colleen Kearney, U.S. Patent and Trademark Office / Washington, DC
Prof. David S. Levine, Elon University School of law / Greensboro, NC
Tobey B. Marzouk, Marzouk & Parry / Washington, DC
Dana D. McDaniel, Spotts Fain PC / Richmond
Robert M. Tyler, Office of the University Counsel University of Virginia / Charlottesville
Prof. Sarah R. Wasserman Rajec, William & Mary Law School / Williamsburg


Matthew R. Osenga, Goodman Allen Donnelly / Richmond

Locations, Dates and Fees

LIVE REGISTRATION FEES (All registrants will receive access to a complete set of downloadable e-book seminar materials.)

$285* regular registration (without printed materials).
$315 regular registration plus printed materials.
$265* preregistering VSB Intellectual Property Section member (without printed materials).
$295 preregistering VSB Intellectual Property Section member plus printed materials.
$330 on-site registration (if space is available) (printed materials included).

*Available until 3 business days before the program


Williamsburg / Friday and Saturday, October 21 - 22
Williamsburg Lodge (Venue Website / Google Map)
310 South England Street
(757) 229-1000

Accommodations: We have arranged for a limited number of rooms at The Williamsburg Lodge for the special rate of $169. To reserve, please call (800) 261-9530 and mention that you are attending the Virginia CLE® seminar.

Click here if you wish to register three or more people from the same firm.

A special 15% discount and free shipping on Virginia CLE®–published books will be available for purchases made at the seminar site.

Lower Registration Fee and Greater Functionality with Downloadable E-Book Seminar Materials

ALL seminar registrants will receive access to a complete set of downloadable e-book seminar materials. E-book materials are searchable, easily accessible, and efficient to use.

When registering, please be sure to provide a legible, valid e-mail address to which Virginia CLE® can send a link to the e-book materials.

Registrants who elect a registration option that includes downloadable e-book seminar materials only and not the printed materials will receive, at the seminar, a short, printed seminar outline with space to take notes.

Printed Materials: You still have the option of receiving a complete set of printed materials for a higher registration fee. Registrants who choose this option will receive printed materials at the program.


To receive access to the downloadable e-book materials BEFORE the seminar AND register for the lower fee, your registration must be received no later than 5:00 p.m. three business days before the seminar. A link to the downloadable e-book materials will be e-mailed to you two business days before the seminar. Once you download the materials, you can review them and print the portions you want to bring with you to the seminar.

After 5:00 p.m. THREE BUSINESS DAYS BEFORE the seminar, only the registration options that include printed materials will be available.

Cancellation/transfer requests will be honored through 5:00 p.m. of the DAY BEFORE the seminar.  You will, however, be charged $90 for the materials if you cancel your registration for the seminar, or transfer registration to a different seminar, after the link to the materials has been e-mailed by Virginia CLE®.

If you have a disability that requires special accommodation, please contact Virginia CLE® well in advance of the program date.

Private recording of this program is prohibited.

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