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Protecting Your Client's Intellectual Property: What Every Lawyer Needs to Know


Level: Advanced
Runtime: 61 minutes
Recorded Date: December 18, 2019
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Agenda


  • IP Overview
  • Protecting Patents
  • Trade Secrets
  • Copyright
  • Trademark
  • IP Transactions
  • IP Litigation
  • Q&A
Runtime: 1 hour, 1 minute
Recorded: December 18, 2019




Description

As trusted advisors, attorneys are asked many questions about legal matters outside their area of practice. One area of law that most lawyers do not have practical experience with is IP Law. To help you understand your clients' questions or issues and how to move forward.

This program was recorded on December 18th, 2019.

Provided By

American Bar Association

Panelists

Isheeta Patel

Associate Attorney
Brooks Kushman P.C.

Isheeta Patel is an experienced patent attorney with a passion for providing her clients high-quality, strategic intellectual property advice with an eye for detail and current technological trends.

Isheeta focuses her practice on the preparation and prosecution of domestic patent applications in the chemical engineering and materials arts. Isheeta also has experience in advising her clients on intellectual property strategies by providing opinions on whether they have freedom to operate and by assessing validity of patents. She has experience working with clients of various sizes, ranging from Fortune 100 companies to small start-ups.

Isheeta has multi-faceted experience working extensively within a variety of industries, with an emphasis on technologies related to chemical engineering and advanced materials. Her prosecution and opinion experience is focused on advanced coatings, nanocomposites and composite systems, polymer chemistry and coagulants, heat transfer and thermal management materials, battery components and controls, catalyst structures, fluid flow control and related coatings, additive manufacturing, paints and specialty coatings, and consumer products.

Isheeta provides reliable insight to clients regarding business-critical decisions such as whether to patent an inventive concept, whether they have freedom to operate, the validity of granted patents, and determining the state of the art and any white space in a specific technology market. Isheeta also has experience supporting intellectual property negotiations, settlements, and litigation.

Isheeta previously served as a patent clerk with Honda Patents & Technologies North America and Ohio State’s Technology Commercialization Office. Before entering the intellectual property industry, she held engineering positions with Owens Corning developing wind turbine blade technology and with H.R. Technologies, Inc., a tier-two automotive materials supplier.

Isheeta holds a Juris Doctor from The Ohio State University Moritz College of Law where she served as Issue Editor for the technology journal I/S: A Journal of Law and Policy for the Information Society (now the Ohio State Technology Law Journal), as well as President of both the Intellectual Property Law Society and the South Asian Law Students Association. She holds a Bachelor of Science in Chemical Engineering from the University of Michigan.

Outside of Brooks Kushman, Isheeta is the immediate Past-President of the South Asian Bar Association (SABA) of Michigan and currently serving on the Board of Director’s for SABA North America and SABA Michigan. In her spare time, she enjoys spending time with her family on the lake, checking out new restaurants, and traveling (when it’s not football season). Although she attended Ohio State for law school, Isheeta is true to her undergraduate degree from Michigan and can regularly be found sporting University of Michigan gear, especially every Saturday of football season at the Big House with her husband watching the Wolverines play.

Deanna J. Kossaras

Intellectual Property Counsel
HARMAN International

As Intellectual Property Counsel on the HARMAN Global Patent Team, I am responsible for managing intellectual property assets, leveraging Harman's Patent Portfolio, and avoiding the unlicensed adoption of innovative Harman solutions.

Amy Hsiao

Partner
Adsero IP

China has unique trademark laws and procedures. The danger for many companies doing business in the ‘Middle Kingdom’ is that “you don’t know what you don’t know.” Known for her talent to spot issues that appear harmless in Western legal systems, Amy brings a wide array of IP experience and strong language and cultural fluencies to the table. Put simply, she gives peace of mind when it comes to IP in China.

Amy focuses her practice on advising Western companies on trademark, copyright, and international business transactions in China and other Asian countries. Amy has pursued cases through all levels of China’s system and had achieved over 100 opposition wins. She has worked with policy-makers from the U.S. and Europe on trademark arbitrations, criminal counterfeit seizures, and product recalls. She often assumes the role of a business advisor because of her ability to articulate differences between Eastern and Western systems and to turn large volumes of raw data into meaningful, actionable branding strategies.

Amy has drunk hot tea in August in Shanghai with AIC and PSB officials to push for raid actions. She has worked through freezing blizzards in Beijing to win landmark cases and set important precedents in China’s unfair competition law. Because of her wide array of IP experience, she was selected by China’s former Deputy Secretary-General of China’s Trademark Association as the only Western attorney to work on China’s very first trademark textbook for the Western world.

Amy is a unique blend of both Western and Chinese cultures. As one general counsel put it: “China is a wild west; IP strategies are like a whack-a-mole game. Often, the advice from counsel offers little guidance to business. Amy is the rare exception. She does not just say, ‘this is how China does it,’ she actually tells you why, and then provides legal strategy and steps that make sense. I can now finally have an intelligent conversation with my business executives.”

Christopher A. Suarez

Associate
Steptoe & Johnson LLP

Christopher Suarez focuses his practice on high-tech patent trials and appeals before federal district courts, US courts of appeals, the US Patent Trial and Appeal Board and other administrative tribunals. He represents clients in a wide range of industries and a variety of electronic technologies including semiconductors, smartphones, internet-of-things technologies, voice control computers, wireless standards, graphical user interfaces, media content matching, MEMS components, optics, data processing, marine seismic surveying technologies, and more. Chris has represented high-tech clients at the intersection of antitrust and IP, including in Fair Reasonable and Non-Discriminatory (FRAND) litigation. He also assists clients in the life sciences industry, including in Hatch-Waxman patent litigation, and in privacy-related litigation including claims arising under statutes such as the Fair and Accurate Credit Transactions Act (FACTA).

Chris's experience spans all phases of litigation, including drafting discovery requests and responses, taking and defending fact and expert depositions, arguing motions and appeals, and participating in trials. His transactional experience includes negotiating contracts, licenses, joint ventures and other agreements for high-tech and other companies.

He is also active in several bar associations, including the American Bar Association (ABA), the Giles Rich American Inn of Court, and the Federal Circuit Bar Association. In 2019, he co-edited and contributed multiple chapters to a cutting edge treatise published by the ABA titled The Internet of Things: Legal Issues, Policy, & Practical Strategies.

Chris maintains a robust pro bono practice where he has represented criminal defendants before the US Court of Appeals for the Fourth Circuit, K-12 students facing educational injustices under the Individuals with Disabilties Education Act (IDEA), and federal employees under the employment discrimination laws.

Franklin Graves

Commercial Counsel
Eventbrite, Inc.

Franklin Graves is Commercial Counsel at Eventbrite in Nashville, TN, where he supports the overall mission of bringing the world together through live experiences. At Eventbrite, Franklin manages a diverse set of stakeholders and deal structures in support of a growing sales organization and technology commercial contracts with the company's most high profile event organizers in music, sports, and more.

He previously worked as Corporate Counsel for Naxos Music Group, the world's leading classical music company. He currently serves as a Young Lawyer Fellow for the American Bar Association's Section of Intellectual Property Law were he recently received an "Outstanding Leadership Contribution Award." He has published numerous articles across multiple publications, including the ABA's Landslide Magazine, and frequently presents on intellectual property law and technology CLE panels with local and national bar associations. He is an active member of the American Bar Association, Nashville Bar Association, Tennessee Bar Association, and Association of Corporate Counsel.

Franklin earned his J.D. degree, with a certificate in Entertainment & Music Business Law, from Belmont University College of Law in Nashville, TN, and his B.A. degree from Samford University in Birmingham, AL.


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