20th Annual Virginia Intellectual Property Legal Institute 2019 (Online Seminar)

MCLE Credits: 7.0
Ethics Credits Included: 2.0

MCLE Credit: 7.0 (Ethics: 2.0)
Live-Interactive Credit: 0.0
Price: $329 (Includes a downloadable audio version.)
Viewable Through: 9/30/2020


A pre-recorded streaming VIDEO replay of the October 2019 live seminar, 20th Annual Virginia Intellectual Property Legal Institute.

This popular, long-running program is an update of the legal developments over the past year in intellectual property laws that are most important to practicing attorneys and their clients.

It is designed for attorneys practicing in the fields of intellectual property, high technology, computer law, Internet law, outsourcing, e-commerce, and software licensing, development, distribution, and procurement.

Note: This is the same program that in past years was titled the "Virginia Information Technology Legal Institute." The program’s focus is, and has been, more on intellectual property than information technology, and the name change simply reflects that focus.

Topics covered:

  • Ethics Issues Related to IT/IP Practice
  • Cyber Security and Technology Update
  • Developments in Licensing, SaaS, and Other Technology Agreements
  • Beat the Clock: IP Tips and Tricks
  • Copyright Developments
  • Patent Developments
  • Trademark and Domain Name Developments
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Ethics Issues for IP/IT Practitioners—Part I
Jim McCauley
  • The weather is “cloudy with meatballs”—virtual law offices, client portals, choosing a reliable cloud provider
  • E-mail “bugs” or tracking—is it ethical?
  • Outsourcing—use of alternative legal services providers and legal process optimizers
  • Law firm’s duties in the event of cyberbreach
  • Duty to encrypt email communications with clients
  • Oops, I didn’t mean to send you that! New proposed Rule 4.4(b) re: inadvertent delivery of privileged documents
Ethics Issues for IP/IT Practitioners—Part II
Linda McLeod
  • Trademark clearance analyses and advertising firms—risk of losing the attorney-client privilege
  • Changes to USPTO trademark rules of practice for foreign-domiciled trademark applicants and registrants
  • New cases on USPTO signature requirements, including electronic signatures
  • Paralegals, legal assistants, trademark filing businesses, and the unlawful practice of law
  • When timeliness and client communication issues violate ethics rules
Cybersecurity and Technology Developments Update
Tom Hibarger
  • Year in Review—notable cyber incidents
  • Sacrificing security at the altar of convenience
  • Law firm cyber preparedness—multi-factor authentication and other steps to consider
  • Why training matters—Spear Phishing and other social engineering techniques
  • Latest thinking on how to prepare your firm and your clients for a data breach
  • What to do when a client suffers a data breach
Recent Developments in Licensing, SaaS, and Other Technology Agreements
Ward Classen
  • Online terms—enforceability and customer self-protection
  • Customer data, vendor use, and limitation of liability for data breaches: What’s appropriate post-GDPR?
  • Compliance with laws—who should be responsible for what?
  • Cloud escrows—Justified? Practical?
  • Indemnification—what is the market in four key areas?
40 Quick Tips from Our Panel of IP/IT Legal Specialists
Faculty Panel
  • Our faculty share practice and law tips in quick nuggets
Patent Developments
Scott Kelly
  • Patentable subject matter—is the long nightmare finally over?
  • Still Prior Art—giving up your patents through “secret sales”
  • Can cease-and-desist “love letters” create personal jurisdiction in the accused’s jurisdiction?
  • Time bars in IPRs—the clock starts and it doesn’t stop
  • Who can seek PTAB review?  An update on the permissible players
  • Big changes to PTAB Reviews—are IPRs still worth it?
Copyright Developments
Tobey Marzouk
  • Register, Register, Register—Supreme Court requires copyright registration to sue for infringement
  • Compilation Registration v. Group Registration—maximizing (or minimizing) damages
  • Copyright statute of limitations—Accrual of Claims v. Accrual of Damages
  • The two-edged sword—attorney fees and costs in copyright litigation
  • What’s fair is fair—using (and abusing) the Fair Use Defense
  • Protection of databases—what role does the copyright act play?
  • State Code Annotations—can they be copyrighted?
Trademark and Domain Name Developments
John Farmer
  • New TTAB pilot program for cancellation proceedings citing abandonment or nonuse
  • How solid are trademark licenses in bankruptcy after recent Supreme Court decision?
  • The expanding universe of what constitutes a generic, merely informational, or merely descriptive mark
  • Can you use real-world facts in USPTO likelihood-of-confusion cases?
  • Registering dirty words and disparaging names as trademarks—implications and inconspicuous obstacles



John B. Farmer, Leading-Edge Law Group, PLC / Richmond


H. Ward Classen, Discovery Education, Inc. / Silver Springs, MD
John B. Farmer, Leading-Edge Law Group, PLC / Richmond
Thomas J. Hibarger, Stroz Friedberg / Washington, DC
Scott M. Kelly, Banner & Witcoff, Ltd. / Washington, DC
Tobey B. Marzouk, Marzouk & Parry / Washington, DC
James M. McCauley, Virginia State Bar / Richmond
Linda McLeod, Kelly IP, LLP / Washington, DC


H. Ward Classen, Discovery Education, Inc. / Silver Springs, MD (Expand/Collapse Bio)

Ward Classen is a graduate of Trinity College in Connecticut and received a Master of Business Administration from the Wharton School of the University of Pennsylvania. He received his Juris Doctor from the Catholic University of America in Washington, DC, where he was a member of the Catholic University Law Review and editor-in-chief of The Journal of Contemporary Health Law and Policy. He serves as the Senior Legal Advisor to Discovery Education in its spin-off from Discovery Communications, Inc. Mr. Classen also serves as an expert witness in software licensing disputes where he has supported both plaintiffs and defendants in federal and state courts as well as in arbitration. Ward’s book, A Practical Guide to Software Licensing for Licensees and Licensors, published by the American Bar Association, now in its sixth edition, has been widely cited and quoted both by courts and academic institutions including the American Law Institute in its treatise Principles of the Law of Software Contracts.

John B. Farmer, Leading-Edge Law Group, PLC / Richmond (Expand/Collapse Bio)

John B. Farmer is a member of the Leading-Edge Law Group, PLC, an intellectual property (“IP”) boutique law firm in Richmond, Virginia. He served as chairman of the Trademark Public Advisory Committee of the United States Patent and Trademark Office. He writes a monthly IP and technology law column for the Richmond Times-Dispatch. He is listed in the top rank of Virginia IP attorneys by Chambers USA and listed for IP in Best Lawyers in America. He is a past chair of the IP Section of the Virginia State Bar. He is a past president of the Greater Richmond Intellectual Property Law Association. He graduated from the University of Virginia and its law school. After graduation from law school, he clerked for the Hon. Donald S. Russell, Judge of the U.S. Fourth Circuit Court of Appeals, and for the Hon. James C. Cacheris, Judge of the U.S. District Court for the Eastern District of Virginia, Richmond Division.

Thomas J. Hibarger, Stroz Friedberg /Washington, DC (Expand/Collapse Bio)

Thomas Hibarger is the Managing Director in charge of Stroz Friedberg’s Washington, DC, office, where he directs engagements involving cybercrime and data breach response, digital forensics, and electronic discovery. Additionally, drawing on his extensive experience as Chief of the Criminal Division of the United States Attorney’s Office for the District of Columbia, Mr. Hibarger leads investigations relating to the Foreign Corrupt Practices Act, anti-bribery and corruption, due diligence, internal corporate fraud, employee misconduct, and theft of intellectual property. Prior to joining Stroz Friedberg, Mr. Hibarger served as an Assistant U.S. Attorney (AUSA) in the U.S. Attorney’s Office in Washington, DC, for nearly 25 years, most recently as Chief of the Criminal Division. As Criminal Chief, he oversaw all federal investigations and criminal cases brought by the U.S. Attorney’s Office in Washington, DC. Mr. Hibarger supervised approximately 80 AUSAs responsible for major cases of fraud and public corruption, cybercrimes, intellectual property prosecutions, RICO conspiracy investigations, national security matters, asset forfeitures, and money laundering. He provided strategic advice and legal guidance, while also briefing the U.S. Attorney and Department of Justice Officials on high-profile, sensitive matters. Before his term as Criminal Chief, Mr. Hibarger was a Computer Hacking and Intellectual Property (CHIP) prosecutor for three years. Mr. Hibarger investigated and prosecuted significant cases involving botnets, online identity theft, phishing, DDOS attacks, computer intrusions, webpage defacement, and copyright infringement. Mr. Hibarger is a member of the Georgetown University Law Center Cybersecurity Law Institute Advisory Board. He recently authored a chapter on incident response in the PLI treatise Cybersecurity: A Practical Guide to the Law of Cyber Risk, and he lectures frequently on cybersecurity.

Scott M. Kelly, Banner & Witcoff, Ltd. /Washington, DC (Expand/Collapse Bio)

Scott M. Kelly’s practice is focused on intellectual property issues relating to a wide range of computer software, networking, and business methods. He has worked with technologies including user interfaces, gesture-based input, mobile devices, cloud computing, algorithms, virtual and augmented reality, network routing, interactive television program guides, and video games. Mr. Kelly is a former Examiner with the U.S. Patent and Trademark Office where he examined patents in class 715—Presentation Processing of Documents and Operator Interface Processing. During his time at the USPTO, Mr. Kelly examined patents relating to a variety of technologies, including word processing, spreadsheets, markup languages, input validation, display rendering, and assistive technologies. Mr. Kelly also examined business method patents, including several directed to the process of drafting a patent.  Mr. Kelly received a Bachelor of Science degree in honors from Virginia Tech, where he majored in Computer Science with minors in Physics and Mathematics. He received his J.D. from the University of Virginia School of Law, where he served on the Editorial Board of the Virginia Journal of Law and Technology. Mr. Kelly is the chair of the Digital Games and New Media Committee of the American Bar Association’s Intellectual Property Law section. He is an assistant editor at PatentArcade.com and a contributing author to the ABA Legal Guide to Video Game Development (2d ed. 2016). He serves on the Editorial Board of the Interactive Entertainment Law Review and is a member of the Video Game Bar Association.  Mr. Kelly has been named to Washington, DC, Super Lawyers’ “Rising Stars” since 2017.

Tobey B. Marzouk, Marzouk & Parry /Washington, DC (Expand/Collapse Bio)

Tobey Marzouk formed the law firm of Marzouk & Parry in 1986 with a focus on Information Technology law counseling and litigation.  He has been listed in the Best Lawyers in America® in the fields of Copyright Law and Information Technology Law (2010–2018 and was named Copyright “Lawyer of the Year” in the 2013 Best Lawyers Washington, DC.  Mr. Marzouk has also been listed in the 2012–2018 Super Lawyers (Washington, DC) in the field of Intellectual Property.  He serves as Consulting Editor to Internet Law and Business and the Computer Law Reporter, leading legal journals of the high technology industry.  Mr. Marzouk has lectured extensively and served as an expert witness on copyright, licensing and information technology law and has authored three books on technology licensing and software and computer law, as well as numerous articles in national and international trade and legal journals. Over the past 30 years, he has served as an Arbitrator on the Technology Panel of the American Arbitration Association, having arbitrated and litigated over 150 technology cases. Mr. Marzouk received his undergraduate degree from Princeton University and his law degree from Harvard Law School.

James M. McCauley, Virginia State Bar /Richmond (Expand/Collapse Bio)

James M. McCauley is the Ethics Counsel for the Virginia State Bar, and manages the staff counsel serving the Standing Committees on Legal Ethics, Unauthorized Practice of Law, and Lawyer Advertising and Solicitation. He and his staff write the draft advisory opinions for the Standing Committees and provide informal advice over the telephone to members of the bar, bench, and general public on matters involving legal ethics, lawyer advertising, and the unauthorized practice of law. Mr. McCauley frequently lectures and publishes articles on matters relating to legal ethics and the unauthorized practice of law. He teaches Professional Responsibility at the T.C. Williams School of Law at the University of Richmond.

Linda McLeod, Kelly IP, LLP /Washington, DC (Expand/Collapse Bio)

Linda McLeod’s unique experience makes her one of the most sought-after lawyers to handle cases before the Trademark Trial and Appeal Board (TTAB). During her years as a TTAB Administrative Trademark Judge and interlocutory attorney, Ms. McLeod issued hundreds of decisions in opposition and cancellation proceedings and ex parte appeals from registration refusals. She also gained extensive trademark prosecution experience as an examining attorney at the U.S. Patent and Trademark Office (USPTO). As lead counsel, Ms. McLeod has won numerous opposition and cancellation proceedings before the TTAB and Court of Appeals for the Federal Circuit. She has extensive experience litigating cases through trial and under accelerated case resolution (ACR) before the TTAB. She has obtained favorable “fame” decisions for major brand owners, enhancing their future enforcement efforts. Ms. McLeod has successfully negotiated worldwide trademark agreements resolving contentious proceedings in multiple jurisdictions. She has received numerous accolades for her expertise. She is recognized as an "IP Star" by Managing Intellectual Property (2015–2017), and she was awarded “Best in Trademark” at Legal Media Group America’s Women in Business Law Awards (2012–2013). Ms. McLeod is consistently ranked by the World Trademark Review, Guide to the World’s Leading Trademark Law Practitioners, and several other publications, as one of the top trademark lawyers for both contentious and non-contentious trademark matters. According to the Legal 500 U.S., clients say that Ms. McLeod is a “very bright, skilled, strategic thinker ...” who “provides exceptional advice." In the World Trademark Review 1000, clients praise Ms. McLeod for her "super skills" and "always being on top of the latest trademark law developments" in TTAB and USPTO matters. She was appointed by the Secretary of Commerce to serve as a member of the USPTO's Trademark Public Advisory Committee (TPAC) (2011–2014). She is a member of INTA's Trademark Office Practices Committee (2016–2017). Before joining Kelly IP, Ms. McLeod was a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC.

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