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Intellectual Property and International Law Issues in Representing a Globally Expanding Company
Presented by the ISBA International and Immigration Law, co-sponsored by Intellectual Property Law, General Practice, Solo and Small Firm and Corporations, Securities & Business Law Sections

Chicago
Thursday, June 12, 2008
ISBA Regional Office
20 S Clark Street
Suite 900 (map and directions)
Register Now!

6.0 MCLE hours, including 1.25 * hours PMCLE credit

Program Coordinator:
Pradip Sahu, USG Corporation, Chicago

This program addresses the needs of attorneys who represent clients that are interested in growing their business internationally and provides an overview of major issues that a practitioner may face when representing globally expanding clients.  Because a business’s technology and brands are among its most important assets, it is crucial to protect the intellectual property surrounding these assets everywhere business is conducted.  Illinois attorneys can assist their clients, who are looking to protect their intellectual property in the United States and in other countries, by tactfully filing patent and trademark applications, entering into strategic relationships, and litigating when necessary.  This program will also cover practical tips on effective representation that every attorney must know to help develop the client’s business while building the attorney’s law practice.

 

8:45 – 9:00 a.m.  Welcome and Introductions

9:00 – 10:00 a.m.  International Technology Protection Strategies
Whether the client is in the biotech, energy, computer hardware, consumer products or construction industry, they likely have technology that helps differentiate their products or services from their competitors.  As the client’s operations grow globally, it is necessary to protect their intellectual property from infringement and misappropriation.  Knowing this, a comprehensive strategy must be tailored to the client and implemented to protect their valuable intellectual property.  The attendee will learn basic components of effective strategies such as filings for patents and other IP protection, physical and computer security measures, strategic partnerships, joint ventures, licenses and confidentiality agreements.
Michael M. Geoffrey, Reed Smith LLP, Chicago

10:00 – 10:15 a.m.  Break

10:15 – 11:00 a.m.  International Brand Protection Strategies
This session will cover the basics of how to assist clients in protecting their brands internationally.  The attendee will learn how to assist the client in developing an overall brand protection strategy that includes careful brand development, strategic trademark filings, selective customs registrations and litigation.
Mary M. Squyres, Brinks Hofer, Chicago

11:00 – 11:45 a.m.  Domain Name Registration Strategies for Globally Expanding Businesses
This session will cover issues relating to the intersection of intellectual property law, business and cyberspace.  The attendee will learn strategies in registering and protecting domain names throughout the world to support a client’s business, as well as measures that can be taken should a domain name dispute arise.
Marc H. Trachtenberg, Ladas and Parry, Chicago

11:45 a.m. – 12:30 p.m.  Lunch on your own

12:30 – 1:00 p.m.  Effective Anti-Counterfeiting Strategies
Counterfeiting is a global problem that affects many United States businesses.  Counterfeit products come to the United States from all over the world, but mostly from East Asia and Latin America.  The attendee will learn strategies and techniques to protect a client from counterfeiters and importers of gray-market goods.
Adam S. Weiss, Schiff Hardin LLP, Chicago

1:00 – 1:30 p.m.  Alternative Dispute Resolution Clauses and Their Implications in International Contracts *
Alternative dispute resolution is gaining wider acceptance in all types of contracts, including in international contracts.  The attendee will learn strategies to draft and negotiate effective arbitration, mediation, and dispute resolution clauses.  The attendee will also learn the implications of the clauses when disputes arise.
Peter V. Baugher, Schopf & Weiss, LLP, Chicago

1:30 – 1:45 p.m.  Break

1:45 – 2:15 p.m.  Corporate Compliance in International Enterprises
Publicly traded companies that do business in other countries must comply with applicable laws, rules and regulations such as the Foreign Corrupt Practices Act and Sarbanes Oxley.  The attendees will learn the basics about the compliance issues so that they may guide their clients appropriately.
Robert W. Kent, Jr., Baker and McKenzie, Chicago

2:15 – 3:00 p.m.  Protecting the Attorney-Client Privilege in International Litigation *
International litigation is extremely complex and an added layer of complexity arises when trying to protect the attorney-client privilege.  The attendee will learn how to protect the privilege, the implications of waiver of privilege, and ethical considerations such as compromise with Rule 1.6 of the Illinois Rules of Professional Conduct.
Glen P. Belvis, Brinks Hofer, Chicago

3:00 – 3:15 p.m.  Break

3:15 – 4:00 p.m.  Comparison of the Patent Laws of the United States, Germany and Japan
Often a United States client is involved in a dispute that arises with implications outside of the United States.  The attendee will learn basic differences in litigating patent cases in the United States versus in Germany and Japan, where many disputes between U.S. and non-U.S. companies arise.
Thomas Burton, Brinks Hofer, Chicago
Gary M. Ropski, Brinks Hofer, Chicago

4:00 – 4:30 p.m.  Compliance with United States Export Controls
This session includes an overview covering the ramifications of international agreements relating to information security, foreign disclosure and technology transfer.  The speaker will review various statutory and regulatory provisions, including 22 USC 2767 (Authority to Enter into Cooperative Projects with Friendly Foreign Countries), 10 U.S.C. 2350(a) (Cooperative Research and Development Projects), and Dept. of Defense Directive 5530.3.  These provisions are critical to any attorney handling the transfer of technology to a foreign entity (e.g., a defense contractor working with a Chinese concern).
Richard T. Ruzich, Duane Morris LLP, Chicago

4:30 – 4:45 p.m.  Closing Summary
The attendee will be provided with a brief review of the main topics covered during the program.
Pradip Sahu

 

* Subject to review
Please note: Supreme Court Rules on MCLE require lawyers to earn at least 4 hours of Professional Responsibility MCLE every reporting period