22nd Annual Virginia Intellectual Property Legal Institute 2021

MCLE Credits: 7.0
Ethics Credits Included: 2.0

Friday, October 22, 8:00 a.m. - 4:30 p.m. ET
Learn more about Virginia CLE webcast format
Learn more about Virginia CLE telephone format
MCLE Credit: 7.0 (Ethics: 2.0)
Live-Interactive Credit: 7.0 (all formats) Live Interactive MCLE Credit Symbol
Designation Credit: 2.0 Ethics (Designations Information)
Webcast/Telephone Registration Fee:

$329 regular registration (eBook).


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

Please note: The live-on-site option in Fairfax has been canceled, but the webcast/telephone options will still be presented as previously scheduled.

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.

The webcast/telephone registration options ARE eligible for discounts.


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.

Can't Attend?
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.


COURSE SCHEDULE (October 22) (Eastern Time)

8:00 Program Introduction
8:05 Ethics Issues for IP/IT Practitioners—Part I
Seth Guggenheim
  • Accepting Cryptocurrency as Fees Payment—Is It Permitted, and What Are the Rules?
  • Ethics Boundaries in Practicing Remotely from the Jurisdiction in Which You Are Admitted
  • Is It Ethical to Reply to All to an Email from the Other Side of a Case When It Includes the Other Side’s Represented Parties?
  • Ethical Issues Concerning Departing Lawyers—Docking Equity Repayment, Forbidden Jumpstarts, and Potential Civil Claims
  • Do the Rules of Professional Conduct Affect How a Lawyer May Respond to a Negative Online Review?
9:05 Break
9:15 Ethics Issues for IP/IT Practitioners—Part II
Michael McCabe
  • Where USPTO Ethics Rules Diverge from State Ethics Rules—Dealing with the Differences
  • The Flood of Mark Registration Applications from China—The Impact on U.S. Trademark Attorney Ethics
  • Ethics Concerns When IP Attorneys Work with Foreign Associates
  • Is Your Patent or Trademark Paralegal Engaging in Unauthorized Practice of Law?
  • Identifying and Resolving IP Subject Matter Conflicts of Interest
10:15 Break
10:25 Cybersecurity and Technology Developments Update
Alex Reynolds
  • Computer Fraud and Abuse Act—The Supreme Court Narrows the Zone of Covered Acts. How Should Businesses Respond?
  • Privacy Law Update—New and Potential State Laws, the Appetite for a Federal Privacy Law, and Major Updates in Europe
  • Information Security Trends—The White House Has Been a Flurry of Activity. Are New Cybersecurity Requirements Imminent?
  • Data Openness—Inside the Battle Between Financial Institutions and Data Aggregators
  • Certifying Privacy Class Actions and Assessing Article III “Injury”—Transunion v. Ramirez
11:25 Break
11:35 Recent Developments in Licensing, SaaS, and Other Technology Agreements
Ward Classen, Tobey Marzouk
  • Trends in IT Agreements
  • Trends in Light of COVID-19
  • Obtaining the Rights You Need
  • Predicting the Future
  • Web-Based Contract Terms
  • Security Processes
  • Warranties vs. Service Levels in Services Agreements
  • Google v. Oracle: What Does It Mean for Licensing?
12:35 Lunch Break
1:05 Trademark and Domain Name Developments
John Farmer
  • A Flood of Mark-Registration Applications Swamps the USPTO, Principally Fake Applications from China
  • The Trademark Modernization Act—Are the New Cancellation Procedures Worthwhile?
  • USPTO Failure-to-Function Refusals (Mainly) for Commonplace Phrases—Can You Overcome Them, and Where Are the Borders?
  • USPTO Aggressiveness in Finding Terms Generic—How Far This Has Gone, and How to Deal With It
  • Company Principals Applying for and Owning Company Marks—Permissibility, Practicality, and Pitfalls
  • Contributory Liability for Mark Infringement by Others—Can You Stop Infringements by Going After Landlords and Marketplaces?
2:05 Break
2:15 Copyright Developments
Tobey Marzouk
  • The New Copyright Small Claims Court—Is It Worthwhile? Will It Be Effective?
  • Invalidating a Copyright Registration and Is Fraud Required?
  • Supplementing and Correcting a Copyright Registration: Words of Caution
  • How Many Statutory Damage Amounts Can Be Recovered Within in a Distribution Chain?
  • The Amorphous Concept of Copyright Fair Use
  • Recent Developments Involving Copyright Statute of Limitations
3:15 Break
3:25 Patent Developments
Scott Kelly
  • The Current State of What Is Patentable—Recent Movement in Where the Lines Are
  • When Is a Printed Publication Sufficiently Public to Constitute Prior Art?
  • Supreme Court Narrows Bar on Patent Attacks by Inventors—How Does This Affect Patent Assignment Drafting?
  • Unconstitutionality of PTAB Judges Appointment Method—What Practical Effect?
  • When Can the PTAB Decline a Timely Filed Case Because of the Progress of Federal Court Litigation?
  • When Does an Interested Party Have to Be Included as a Plaintiff in a PTAB Challenge?
4:25 Final Comments
4:30 Adjourn


  • Q&A will be handled via chat room for Webcast attendees.
  • Q&A will be handled via e-mail for telephone seminar attendees.



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
Seth Guggenheim, Virginia State Bar / Richmond
Scott M. Kelly, Banner & Witcoff, Ltd. / Washington, DC
Tobey B. Marzouk, Marzouk & Parry / Washington, DC
Michael McCabe, McCabe Ali LLP / Potomac, MD
Alex Reynolds, Davis, Wright, Tremaine 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. His 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

Mr. Farmer 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.

Alex Reynolds, Davis, Wright, Tremaine LLP / Washington, DC (Expand/Collapse Bio)

Alex Reynolds' strategic data protection practice centers on providing holistic, tailored, and actionable advice that is understandable to lawyers and non-lawyers alike. He draws on his years of experience advising clients across diverse industries—from nonprofits offering after-school programs, to healthcare systems, to large technology companies—and uses this experience to help clients benchmark their compliance efforts and accurately assess risk.

Mr. Reynolds' core expertise is the application of general data protection statutes (such as the CCPA and GDPR) to transactions, product development, and advertising technology. He is also well-versed in data security, including implementation of standards such as the ISO 27000-series and responding to data breaches.

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, he 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.

Seth Guggenheim, Virginia State Bar / Richmond (Expand/Collapse Bio)

Seth Guggenheim has practiced law in both the public and private sectors for over 40 years. He has held leadership positions in the Alexandria Bar Association, and lectures frequently on legal ethics and professional regulation to bar associations and other groups. He is an adjunct professor at the Washington College of Law at American University, having taught a course for nine years entitled Ethics for Trial Lawyers. He also volunteers to judge law students at mock trial competitions.

Between February of 2000 and April of 2012, Mr. Guggenheim was a prosecutor for the Virginia State Bar. He is now assistant ethics counsel for the Bar, giving Ethics Hotline advice to attorneys, presenting at seminars, and reviewing lawyers’ proposed advertising. He has assisted the Bar’s Standing Committee on Legal Ethics in the generation of legal ethics opinions. Before serving the Virginia State Bar, Mr. Guggenheim defended the District Columbia in civil matters as an assistant corporation counsel in what is now known as the District of Columbia Office of the Attorney General.

Mr. Guggenheim attended the George Washington University and Boston University, where he earned a Bachelor of Arts degree. He is a graduate of the Washington College of Law at American University, where he was awarded a Juris Doctor degree. He is an active member of the Virginia State Bar and an inactive member of the District of Columbia bar.

Michael McCabe, McCabe Ali LLP / Potomac, MD (Expand/Collapse Bio)

Michael E. McCabe, Jr. is a registered patent attorney specializing in ethics advice and representation of intellectual property professionals before the Office of Enrollment and Discipline (OED) of the U.S Patent and Trademark Office and in related State Bar matters in Maryland, Virginia, and the District of Columbia. He has proudly represented more IP professionals in ethics matters before the USPTO than any other lawyer or firm. His practice encompasses every type of ethics proceedings before the USPTO, including character and fitness inquiries, ethics investigations, settlements, disciplinary trials, and appeals. He has represented over 200 patent and trademark practitioners in the U.S. His clients' matters involve the gamut of IP professionalism issues, including ethics and disciplinary inquiries resulting from criminal misconduct or convictions, reciprocal state bar proceedings, and scores of matters relating to the provision of patent or trademark legal services.

Mr. McCabe is the creator of IPethics & INsights, an award-winning law blog he started in 2014 as a resource for the intellectual property bar as well as law firm risk managers, in-house counsel, and legal malpractice insurers. He is regularly invited to speak at bar association meetings and for private clients on all types of matters relating to best practices in patent and trademark law and to assist his attorney and other legal professional clients when an ethics investigation is commenced or disciplinary complaint is filed.

Patent and trademark attorneys and in-house IP counsel frequently engage Mr. McCabe for help in identifying problems in their practices, either internal to an organization or with clients or others. He is a team player who works constructively with his attorney clients to develop practical solutions while ensuring their practices comply with the standards of professional conduct governing intellectual property practitioners. He has helped guide his patent and trademark lawyer clients faced with ethics and liability issues on most every procedural matter that can arise in an intellectual property case, including ethics and disciplinary issues arising from claims or adjudications of inequitable conduct, sanctions orders, Rule 11 and Rule 37 violations, fee-shifting orders under Octane Fitness, disqualification orders, protective order violations, client complaints, conflicts of interest, missed deadlines, and other alleged improper behavior that can arise in an IP practice. HE has had the pleasure of representing some of the country's most respected IP lawyers and law firms whenever their professional behavior or ethics are called into question.

Mr. McCabe has practiced law for over 27 years, with a strong background in federal litigation. From 1992 until 1995, he was a litigation associate at Shapiro & Olander in Baltimore, Maryland, where he represented clients in commercial and insurance litigation matters in federal court and before state and federal agencies.

Locations, Dates and Fees

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

$329 regular registration.

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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