Wednesday, November 30, 2011

December Meeting

WHEN: Thursday, December 8, 2011 11:30 am to 2:00 pm

Lunch will begin at 11:30 am and end no later than 12:30 pm, with program to
follow. We will strive to end lunch at noon to allow greater program flexibility.

WHERE: The Athletic Club of Columbus, 136 E. Broad St.

TOPIC: Top 10 "Do's and Don'ts" for IP Counsel: Experience and Practice Pointers from within the Columbus Intellectual Property Community Please join us for this informative panel presentation from leading legal practitioners on tips for both outside attorneys working with in-house counsel, and sound in-house counsel practice, including best practices, practices to avoid, and interaction with the USPTO. Panel members will cover trademark and patent practices, as well as general pointers for practitioners.


Scott Linek, Associate Vice President, Associate General Counsel, Marketing & Intellectual Property at Nationwide Insurance; Adjunct Professor – Intellectual Property at Capital University Law School

Tom Reidy, Vice President, General Counsel, Corporate Secretary at Highlights For Children, Inc.

Mike Steffensmeier, Assistant General Counsel – IP and Director of IP Strategy at The Ohio State University

C. Michael Gegenheimer, Associate IP Counsel at Battelle Memorial Institute.

CLE: This course has been approved by the Supreme Court of Ohio Commission on Continuing Legal Education for 1.50 total CLE hours instruction.

COST: $30 Members/$40 Non-members (lunch included with RSVP)

RSVP: Before 5pm December 5, by email (


1. Perspectives from an in-house IP counsel/general counsel view in working with outside counsel
2. Senior IP attorneys advice to junior in-house IP attorneys
3. Practice tips in general
4. Best practices
5. Worst practices

Assistance in establishing global strategies
How to handle communications in changes in the law, newsletters, etc.
Establishing patent and brand strategies
How to establish a mutually satisfactory communications process
Communications directly with staff
Extensions of time, including ethical issues
What if a filing deadline is missed – how to address
Fee Arrangements
Patent enforcement
Licensing and Contracting
How can outside counsel best assist in-house counsel
What do you look for in written opinions
Managing large patent and trademark portfolios, including payment of annuities, maintenance fees, and renewal fees
Marketing vs. legal issues
Trademark clearance parameters
Help with brand protection, policing trademark usage
Establishing effective trademark guidelines
Assistance in establishing global strategies
How to handle communications in changes in the law, newsletters, etc.
Understanding the corporate culture
Handling electronic filings and sign off on applications
What are the most important criteria you look for in hiring outside IP counsel
What are the best practices for a junior in-house IP attorney
Product design clearance
Work around issues
Patent novelty searches, patentability of inventions, freedom to practice, and patent infringement studies
Foreign filings assistance
Post issuance and ex parte and inter partes matters, reexaminations, patent term extension applications, reissues and interferences, opposition proceedings

No comments: