21st Annual Virginia Intellectual Property Legal Institute 2020

MCLE Credits: 7.0
Ethics Credits Included: 2.0

Friday, October 9, 8:00 a.m. - 4:25 p.m. ET
  • Live Webcast
  • Live Telephone
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MCLE Credit: 7.0 (Ethics: 2.0)
Live-Interactive Credit: 7.0 (all dates, all formats) Live Interactive MCLE Credit Symbol
Registration Fee: $309

Information

Why Attend?

Learn the latest on:

  • Ethics Issues Related to IT/IP Practice
  • Cyber Security and Technology Update
  • Developments in Licensing, SaaS, and Other Technology Agreements
  • Copyright Developments
  • Patent Developments
  • Trademark and Domain Name Developments

This popular, long-running program is an update of the legal developments over the past year in intellectual property law 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.

 

Discounts available for Virginia CLE webcast-telephone-live seminars Follow link to learn about the Virginia CLE Online Bundle with savings up to 45% Follow link to learn about coupons for lawyers in First Year in Virginia practice Follow link to learn about discount for New Virginia Lawyers (first 3 years) Follow link to learn about Government Employee discount Follow link to learn about Legal Aid discount

Follow link to learn about coupons for lawyers in First Year in Virginia practice Follow link to learn about coupons for lawyers in First Year in Virginia practice Follow link to learn about Government Employee discount Follow link to learn about Legal Aid discount

Registration Deadlines:
Webcast: 10 minutes prior to seminar. If you register for a webcast the day of the seminar, your e-mail receipt will include a link to launch the seminar and download the materials.
Telephone: Online registration ends at 11:59 p.m. the day preceding the seminar
Call (800) 979-8253 to register up to one hour prior to the seminar

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

Full refunds or transfers are available up to two days after a webcast in the unlikely event that you experience technical difficulties.

MCLE Credit Caveat: The MCLE Board measures credits by the time you spend in attendance. If you enter a seminar late or leave it early, or both, you must reflect those adjustments accurately in the credits you report on your credit reporting form. A code will be given at the end of the seminar, which must be written on your MCLE form.


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Schedule

COURSE SCHEDULE (October 9) (Eastern Time)

8:00 Ethics Issues for IP/IT Practitioners—Part I
Jim McCauley
  • Revision to Virginia’s rule on unintentional disclosure of privileged material to opposing counsel—Rule 4.4(b)
  • New LEO 1891 on contacting represented persons including government officials
  • Ethical issues special to virtual law offices—LEO 1872
  • Preserving client confidences when using Zoom and personal devices
  • Ethics issues when practicing law during the COVID-19 pandemic
  • Proposed amendments to LEO 1850 on outsourcing legal and law related services
9:00 Break
9:10 Ethics Issues for IP/IT Practitioners—Part II
Linda McLeod
  • Supplying an email address for your client in trademark filings—where things stand
  • Ethical issues with electronic and other signatures on court and USPTO filings
  • Failure to supervise paralegals and legal assistants and the unlawful practice of law
  • Misrepresentation, duty of candor, and gross misconduct before the USPTO
  • Trademark declarations of use, USPTO post registration audits, and the duty to investigate
  • Are communications between patent agents and clients privileged?
  • Attorney discipline, grievances, and complaints
10:10 Break
10:20 Cybersecurity and Technology Developments Update
Tom Hibarger
  • Year in review—notable cyber incidents
  • Cost of a data breach 2020
  • In re Capital One consumer data security breach litigation (EDVA)
  • NYDFS enforcement action—First American Title Insurance
  • Ransomware variants—maze and data exfiltration
11:20 Break
11:30 Recent Developments in Licensing, SaaS, and Other Technology Agreements
Ward Classen
  • Obtaining the rights you need through the wording of the license grant and use case
  • Force majeure clauses: Once considered boilerplate, now receiving a lot more attention
  • Term, termination, and termination assistance: What to look for
  • Warranties and services levels: Duplication or a required necessity?
  • Compliance with laws: Who should be responsible for what?
  • Limitations of liability: Caps, super caps, no caps
12:30 Lunch Break
1:00 Trademark and Domain Name Developments
Speaker: John Farmer
  • Is willfulness a prerequisite to recovering damages for mark infringement?
  • When is a name generic? The Supreme Court pulls the reins on the USPTO
  • Did the Supreme Court stop the USPTO from recovering its attorney fees if you appeal to District Court?
  • Can you use real-world facts in USPTO likelihood-of-confusion cases?
  • Can you phase out a mark and still stop others from taking it up?
  • Is “defense preclusion” a real bar to later-filed trademark litigation?
  • When can you NOT sue an intent-to-use mark-registration applicant in federal court?
2:00 Break
2:10 Copyright Developments
Tobey Marzouk
  • Best practices in copyright registration: A new registration type and a new trap for the inexperienced
  • Recovering statutory damages: Registering early enough and the impact of defendant’s recklessness
  • Can you sue a state for copyright infringement? The Supreme Court weighs in
  • Recent developments in the effect of copyright statute of limitations on copyright claims
  • Can the government claim annotations to state codes as copyright property?
  • Can embedding a social media post constitute copyright infringement?
3:10 Break
3:20 Patent Developments
Scott Kelly
  • What’s patentable subject matter in 2020? The USPTO and the Federal Circuit still disagree, SCOTUS remains silent
  • Not Throwin’ Away Your Shot: Collateral estoppel on both sides of the v. in patent cases
  • Prior publications as invalidating prior art—how available must it be?
  • Recovering attorney fees, whatever the source (or party)
  • Arthrex: The great undoing (and redoing) of Inter Partes review and Ex Parte re-exam decisions
  • Substance and procedure at the patent trial and appeal board: What can you appeal to Federal Court?
  • Will IPRs fall out of favor for defendants? Patentee-friendly shifts at the PTAB
4:20 Final Comments
4:25 Adjourn
  • Q&A will be handled via chat room for Webcast attendees.
  • Q&A will be handled via e-mail for telephone seminar attendees.

Faculty

COURSE PLANNER AND MODERATOR

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

FACULTY

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

ABOUT THE SPEAKERS

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. He serves as staff liaison to the Virginia State Bar’s Standing Committee on Legal Ethics and manages the staff in the Legal Ethics Department and the Legal Ethics Hotline. Mr. McCauley served on the faculty of the Virginia State Bar’s Mandatory Professionalism Course from 2004-2010. For 15 years Mr. McCauley taught Professional Responsibility at the T.C. Williams School of Law in Richmond, Virginia and served on the American Bar Association’s Standing Committee on Legal Ethics and Professionalism from 2008-2011.  In 2018, Mr. McCauley was elected “Leader of the Year” in the Virginia Lawyers Weekly “Leaders in the Law” awards program. He serves on the Planning Committee for the ABA’s Center for Professional Responsibility Annual Conference and the Lawyer Advertising Committee for the Association of Professional Responsibility Lawyers.  Mr. McCauley is a Fellow of the Virginia Law Foundation and American Bar Foundation.  He is also on the Board of Directors for the Virginia Judges and Lawyers Assistance Program (VJLAP).

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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