Greater Washington, D.C., LES Chapter presents:
Symposium on Patenting in 2019
Expert Panel Discussion and Networking Event
Wednesday, January 23
3:00 - 7:30 pm
Sidley Austin LLP
1501 K Street, NW #600
Washington, DC 20005
Before January 18
LES Member: $15.00
After January 18
LES Member: $25.00
The last year ended with ongoing turmoil over patent rights, particularly with the Supreme Court Oil States decision. New leadership at the USPTO, however, has tried to turn the tide toward Positivity regarding Patents. The speakers include Laura Peter, the new Deputy Director at the USPTO, Sanjay Prasad, an IP consultant in Silicon Valley, Bob Held, an IP Strategist and current President of LES, and Raymond Van Dyke, an IP Practitioner and LES Washington, DC Chapter Chair. New USPTO Guidelines as well the latest Supreme Court case will also be discussed.
Heavy appetizers, drinks, reception
3:05 Bob Held, The Importance of Patents in Licensing
3:20 Ken Porter, Perspectives from Tech Transfer
3:30 Sanjay Prasad, Software, Inventions, and New Ventures
3:50 Everardo Ruiz, Startups and Patents
4:10 Mark Larouesch, Perspectives from the Intellectual Property Owners
4:30 USPTO Deputy Commissioner Laura A. Peter
6:00 Raymond Van Dyke, the Historical Significance of Patents
Laura A Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
|Laura Peter is the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO). In this role, she is responsible for all agency operations and managing approximately 13,000 employees.
Prior to joining the USPTO, Ms. Peter was the Deputy General Counsel of A10 Networks, where she oversaw daily legal matters related to commercial agreements, litigation, and intellectual property (IP) portfolio development. In 2014, she helped shepherd the company through its initial public offering.
Ms. Peter has practiced IP law for over 20 years. Previously, she was Vice President and General Counsel of Immersion Corporation, where she led all aspects of the company’s legal issues, including its IP portfolio. She was also Assistant General Counsel and Director of Intellectual Property at Foundry Networks, where she built a successful patent portfolio and litigation program. She began her career as a commercial and IP litigator at Townsend, Townsend and Crew (now Kilpatrick Townsend & Stockton LLP).
Ms. Peter received a Bachelor of Science in industrial engineering from Cornell University and a master’s in public policy from the University of Chicago. She also holds a Juris Doctor from Santa Clara University School of Law and a Master of Law degree in international business law from King’s College London.
Sanjay Prasad, Principal, Prasad IP
Sanjay Prasad has a diverse background in intellectual property strategy including leadership positions in IP strategy, management and IP deal development, negotiation and monetization. He has practiced in law firms in Boston and Silicon Valley, served as chief patent counsel to Oracle Corporation, headed up the India office of IPVALUE Management and served in several senior roles at Intellectual Ventures where he led the development of licensing programs, multiple acquisitions, and licensing and sale transactions.
Sanjay has been repeatedly recognized by Intellectual Asset Management Magazine as one of the world’s leading IP strategists. He has testified before a U.S. Congressional Subcommittee on patent legislation, is a frequent speaker on topics pertaining to IP law and has served in leadership capacities on several IP association boards.
Sanjay is admitted to practice in California, Massachusetts, the U.S. Patent and Trademark Office and various federal courts. Sanjay earned his law degree from Syracuse University College of Law where he was an editor of the Syracuse Law Review. He also earned an MS in Computer Engineering and a BS in Electrical Engineering, both from Boston University..
Robert Held, President, Held Intellectual Property, LLC
LES President and Chairman of the Board
Specialties: Intellectual property strategy, expert witness, management and consulting to DOD and commercial companies and universities, IP & patent monetization, business management, strategic alliances, international standards, intellectual property education.
Bob has been a Certified Licensing Professional (CLP) since the inception of the CLP program in 2008. In 2015, 2016, 2017 & 2018 Bob was nominated and received the honor of being named an Intellectual Asset Magazine (IAM) 300 World's Leading IP Strategists. He has extensive experience assessing the commercial significance of intellectual property, inventions and technology in the DOD and commercial space, conducting due diligence, developing a strong and enforceable intellectual property portfolio, building and analyzing financial models, developing licensing programs, building and managing successful intellectual asset businesses and teams, conducting training programs, and realizing value.
Bob currently serves on the Board of Trustees of the Licensing Executives Society (LES) as President and Chairman of the Board, and served as Chair of the High Technology Sector (HTS) of LES 2013-2014.
Ray VanDyke, Founder, VanDyke Law
Ray has over 25 years of experience in all facets of intellectual property law, and is the Founder of Van Dyke Law. As a practitioner, he counsels clients on IP and business matters – advising them on strategies, the preparation and prosecution of patent and trademark matters, the licensing and leveraging of IP assets, and litigation of same in the district courts and the ITC. His clientele come from many technological areas and include domestic and foreign, small and large firms and companies.
Ray complements his extensive IT/software background (B.S. and M.S. in Computer Science), with his knowledge of chemistry and life sciences, providing a unique interdisciplinary focus. He obtained his law degree from the University of North Carolina at Chapel Hill in 1990, is registered to practice before the U.S. Patent & Trademark Office, and admitted to various federal and State Bars, including New York, New Jersey, Texas, Washington, DC and Maryland. He is the Greater Washington, DC Chapter Chair for the Licensing Executives Society, former Chair of the Professionalism & Ethics and other Committees for the AIPLA, which recently made him a Fellow, and Co-Chair of the Intellectual Property Section of the Bar Association for Montgomery County.
He is also active in various other bar and technical groups, e.g., the Inventors Network of the Capital Area (INCA), a group of innovators, the Patent Lawyers Club of Washington, DC, and was a Board member of the Association for Computing Machinery (ACM) for Washington, DC and a Board member of the International Technology Law Association. For nearly 20 years he has taught an IP history and basics course at Southern Methodist University, and taught at Texas Tech University, University of Texas at Dallas, and the National Institute of Health (NIH), and has written extensively and spoken across the world on various subjects, e.g., professionalism, ethics, patent, trademark, copyright, licensing, energy, nanotechnology, biotech, Internet, ITC 337, and many other topics. He has testified on IP matters and represented groups across the world on treaties and intellectual property matters, e.g., at the United States Patent & Trademark Office, at Congress, at the World Intellectual Property Office in Geneva, Switzerland, Buenos Aires, Argentina, Strasberg, France, Munich, New Delhi, India, Beijing, Hong Kong and Shanghai China, and elsewhere.
For more see his website www.rayvandyke.com
Prof. Ken Porter, Director, UM Ventures - College Park at the University of Maryland, AUTM Board of Directors
|Ken became interested in intellectual property when he and a team of chemists at Duke University invented a DNA sequencing technology for the Human Genome Sequencing Project (see US Pat. Nos. 5,683,869, 5,859,231, and 6,376,178). He entered the technology transfer profession at Duke, then moved to the University of Colorado to lead the tech transfer office at CU-Boulder. In 2007, he moved to San Antonio to build the first multi-institutional technology management office at the University of Texas. He has formed a company to create networks of institutions, with the aim of streamlining early stage technology development by utilizing computer support and expert networks. He provided leadership at Innovate Calgary as VP for Intellectual Property Management and Director for Social/Clinical Innovation, and is currently Director of the Office of Technology Commercialization at the University of Maryland, College Park.
Ken is on the AUTM Board of Directors, has served in several roles that support Canadian professionals through AUTM.
Mark Lauroesch, Executive Director at Intellectual Property Owners Association (IPO)
As a senior level Global IP-Legal executive, Mark has provided strategic legal and business advice at a Fortune 500, $10 billion multi-national corporation with a $725 million RD&E budget, by developing close working partnerships with senior managers in business, research, and other functional areas. He has shown an ability to quickly grasp new technologies and has consistently been a key player in shaping early stage R&D programs, launching new products, and developing business models due to IP’s criticality in a broad range of innovation-dependent, complex technologies in telecommunications, environmental products, life sciences, specialty materials, and liquid crystal display industries.
Mark brings tremendous value as a global IP leader through his keen awareness of country-specific laws/best practices and delivering broad-based IP services throughout the US, Europe, China, Taiwan, Korea, and Japan. He has played an active role in advocating for and promoting improvements to many IP laws, rules, and regulations both in the U.S. and abroad. His diverse technology expertise, his strong negotiation skills in bringing closure to complex transactions, and his strength as a global litigation strategist have enabled Mark to be positioned as a high impact technology executive.
Early in his career he was an associate with Finnegan, Henderson, Farabow, Garrett & Dunner, a judicial law clerk for Chief Judge Paul Michel at the U.S. Court of Appeals for the Federal Circuit, and a senior research engineer at Northrop Grumman Corporation.
Everado Ruiz, Managing Director, Energy Transition Partners
Everardo Ruiz has over two decades of expertise as a PE/VC investor, entrepreneur, director, product manager, system and design engineer, researcher, and inventor spanning the fields of medical diagnostics, wireless handsets and infrastructure, optical networks, 3D Printing, semiconductor, and genetic engineering. He holds US and foreign patents in wireless architecture, networking, semiconductor, telecom, and computing.
Everardo’s patent investments in patents and emerging companies have driven fund returns. His patent acquisitions have driven deals with Apple, Samsung, Amazon, eBay, Adobe, Microsoft, SAP, Intel, Xilinx, et. al. His venture capital investments include: Calgene (IPO; acquired by Monsanto); SnapTrack (acquired by Qualcomm); K2 Optronics (acquired by Emcore); LightConnect (acquired by NeoPhotonics); Lightsmyth (acquired by Finisar); Peregrine Semiconductor (IPO).
Everardo earned his MS Management & Engineering from MIT Sloan School of Management & MIT School of Engineering. He also holds a Ph.D. in Electrical Engineering (high-speed networking and supercomputing) from University of Texas Dallas, an MS in Electrical Engineering (wireless and fiber optics) from University of Texas Arlington, and a BS Electrical Engineering (digital communications and wireless) from University of California Davis. He also has completed programs at Harvard Business School in Private Equity / Venture Capital Funds and Intellectual Property).
This event is generously sponsored by:
The Washington, D.C., Chapter uses online registration for members and non-members and accepts payment by credit card. Members should login to the registration page with their LES online account.
Cancellations are non-refundable after January 18. Substitutions will be accepted. Contact Chapter Relations at (703) 234-4058 for assistance.
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