U.S. IP and Related Issues: Practical Guidance for Taiwanese Companies (美國智慧財產權及相關議題：台灣企業實務指南)

Seminar | April.19.2017 - April.20.2017 | 9am - 5pm (Taipei Standard Time)

Taipei (19 April), Hsinchu (20 April)

(中文版請見下方)

Orrick, Herrington & Sutcliffe and the National Chiao Tung University School of Law invite in-house counsel and executives to attend this complimentary one-day seminar. Industry experts, including in-house counsel and IP litigators will discuss the latest trends and developments in U.S. IP litigation, PTAB proceedings, and licensing, as well as related business and legal issues relevant to Taiwanese companies including antitrust, corporate and international trade issues.

When

Taipei: 19 April 2017, 09:00 – 17:00
Hsinchu: 20 April 2017, 09:00 – 17:00

Complete location details are below.

Agenda
This program will cover the following topics:

Current Developments in U.S. Patent Law, Litigation, and Licensing
Antitrust Issues in Joint Ventures and Other Competitor Collaborations Involving IP
How to Avoid Antitrust Issues in IP Licensing Transactions
Structuring Transactions and Your Supply Chain to Minimize Risks of Infringement
Integrating Patent, Trade Secret and Copyright Protection in IP Enforcement Strategies
Key IP Issues in Acquisitions of U.S. Businesses
U.S. Investment and Trade Challenges for Taiwanese Companies
Patent Damages Workshop: Constructing and Defending a Royalty Approach in Licensing or Litigation
Patent Licensing Workshop: Practical Licensing Advice and the Lost Profits Analysis

Speakers
Orrick partners Denise Mingrone, Robert Benson, Dr. Jeffrey Johnson, Harry Clark and Richard Smith, as well as of counsel Dr. Hsiwen Lo and Howard Ullman will lead these sessions, which will feature guest speakers Dr. Professor Dean Shang-Jyh Liu (NCTU School of Law) (Hsinchu program only), Dr. Alan Cox (Managing Director and Chair of NERA’s IP Practice) and Mr. Chris Bakewell (Managing Director, Leader of the IP Services Practice, Duff & Phelps).

Taipei:
19 April 2017 (Wednesday)
09:00 – 17:00 (complimentary lunch is included)

The Westin Taipei
"Yong Le" Function Room (B3 Floor)
133 Nanjing East Road, Section 3
Taipei 104, Taiwan

Hsinchu:
20 April 2017 (Thursday)
09:00 – 17:00 (complimentary lunch is included)

National Chiao Tung University
CPT Building, 1F, International Conference Hall
1001 University Road, Hsinchu, Taiwan

The seminar is complimentary for all in-house counsel and executives.

Questions?
If you'd like to submit a question for the speakers, please email Robert Benson at [email protected]. The speakers will address the common themes during their presentations.

For questions about the seminar, please contact Elina Lin at +886 2 8758 2758 or [email protected].

The Taipei and Hsinchu programs are being sponsored by Orrick, Herrington & Sutcliffe LLP.

The Hsinchu program is being co-sponsored by NCTU School of Law.

Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the State of California. This continuing legal education course has been approved in accordance with the requirements of the State Bar of California for a maximum of 6 credit hours, of which 6 credit hours can be applied to the general requirement.
This program qualifies for New York MCLE credit through the New York CLE Board's approved jurisdiction policy. This course is approved in California, which is an approved jurisdiction in New York.

美國奧睿律師事務所與國立交通大學科技法律學院誠摯邀請各界企業法務與主管參加本次為期一天的高峰論壇（費用全免）。知名企業法務和多位智慧財產權訴訟及相關專業律師等專家將深入討論美國智慧財產權訴訟、專利審判及上訴委員會（PTAB）法律程序和授權的最新趨勢發展以及與台灣公司息息相關的商業及法律問題。議題包括反壟斷、企業和國際貿易等。

日期及時間
台北： 2017年4月19日，09:00 – 17:00
新竹： 2017年4月20日，09:00 – 17:00

論壇地點資訊，詳情請見下方。

議程
本論壇將涵蓋下列議題：

美國專利法、訴訟與授權的當前趨勢
合資企業與其他涉及智慧財產權的競爭者合作協議所涉之反壟斷問題
如何避免智慧財產權授權交易中的反壟斷問題
商業交易與供應鏈建置：如何避免專利侵權
智慧財產權保護策略：交互運用與最佳實務
收購美國企業的重要智慧財產權問題
台灣企業在美國面臨的投資和貿易挑戰
專利損害賠償議題研討：在授權或訴訟中，對權利金方式的建構和防護
專利授權議題研討：實用授權建議與利潤損失分析

講者
本次研討會將由多位奧睿律師主講，包括合夥人：Denise Mingrone律師、Robert Benson律師、Jeffrey Johnson博士、Harry Clark律師和Richard Smith律師，以及高級法律顧問：羅喜文博士和 Howard Ullman律師。本次更榮幸邀請到：國立交通大學科技法律學院院長劉尚志博士（新竹研討會）、諾恆經濟諮詢執行董事及智慧財產權業務部主席Alan Cox博士及道衡執行董事及智慧財產權服務業務部主席Chris Bakewell先生擔任客座講者。

台北
2017年4月19日（星期三）
09:00 – 17:00（敬備午餐）

台北市中山區南京東路三段133號
台北威斯汀六福皇宮飯店
永樂宮（地下三樓）

新竹
2017年4月20日（星期四）
09:00 – 17:00（敬備午餐）

新竹市大學路1001號
國立交通大學光復校區
交映樓一樓國際會議廳

本研討會歡迎各公司法務和高管免費參加。

台北及新竹研討會由美國奧睿律師事務所主辦。

新竹研討會由國立交通大學科技法律學院協辦。

美國奧睿律師事務所是加州律師公會認可的MCLE課程提供機構。按照美國加州律師公會之要求，本持續法律教育課程已被批准可獲最多6個學分，其中6個學分可用於常規要求。

本研討會通過紐約持續法律教育局的認可司法管轄區政策而獲批紐約MCLE學分。本課程獲加州認可，而加州屬紐約認可的司法管轄區。

CLE Credits Available: Y

Speakers

Denise Mingrone Senior Counsel, Geistiges Eigentum, Trade Secrets Litigation

Silicon Valley

See my bio

D:+1 650 614 7682
E: [email protected]

Practice:

Technology & Innovation Sector
Geistiges Eigentum
Trade Secrets Litigation

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Denise Mingrone Senior Counsel

Silicon Valley

No stranger to the courtroom and having handled complex litigations for technology giants including Synopsys, Brocade, Applied Materials and Oracle, Denise seamlessly and efficiently manages large teams to secure victory. Clients appreciate her transparent collaboration and instinct for developing a strategy that ensures the right evidence is presented in the best manner.

The jury verdict Denise’s team obtained in the Netgear v. Ruckus Wireless patent trial, for example, surprised most because the team took over the case just weeks before jury selection, earning the number one place on that week’s “Top Jury Verdicts.” Prior to the Ruckus trial, Denise’s team similarly received accolades as “Top Verdict of the Year” for its jury win on behalf of Brocade against A10 Networks involving patent and copyright infringement. These victories were preceded by a trade secret win for MGA in the “Barbie v. Bratz” epic battle against Mattel, which earned Denise the “California Lawyer of the Year” award for her contributions.

In addition, Ms. Mingrone has led numerous software piracy matters, obtaining full relief whether through negotiation or litigation. Her work in this area encompasses both confidential as well as public investigations, all designed to ensure clients secure the protection of their intellectual property rights and receive appropriate relief when those rights are infringed.

As a former law clerk to several federal judges, Denise appreciates that cases do not turn on facts alone. She has waged and won numerous courtroom battles both obtaining and defending pre-trial injunction motions. As one opponent noted, “She’s a fierce advocate who will go to the mat for her client’s position.”

Harry Clark Partner, International Trade and Investment, Mergers & Acquisitions

Washington, D.C.

See my bio

D:+1 202 339 8499
E: [email protected]

Practice:

Technology & Innovation Sector
International Trade and Investment
Mergers & Acquisitions
Environmental, Social & Corporate Governance (ESG)
Strategic Advisory & Government Enforcement (SAGE)

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Harry Clark Partner

Washington, D.C.

Harry is experienced in areas such as CFIUS/Exon-Florio examinations of foreign investment, military and “dual use” export control regulations (ITAR/EAR), economic sanctions administered by the U.S. Treasury Department (OFAC), customs regulations, the Foreign Corrupt Practices Act, anti-money laundering rules, anti-boycott requirements and defense industrial security requirements. He executes internal corporate investigations regarding trade and investment rules and advises on such rules in the context of corporate transactions.

Additionally, Harry has extensive experience with government contracting matters. His government contracting work has included, for example, design and implementation of U.S. Defense Department renewable energy projects. He also represents broad industry coalitions on major trade litigations and international negotiations. His experience in these areas includes a leading role in what is often considered the largest-ever international trade dispute: the controversy regarding unfair softwood lumber imports from Canada. It has involved myriad administrative proceedings before federal agencies, NAFTA panel appeals, WTO dispute proceedings, judicial proceedings and international settlement agreements.

Harry has represented a coalition of major U.S. oil companies in antidumping and countervailing duty litigation. As a related matter, he pursues policy issues with congressional and executive branch officials and advises on international trade rules (e.g., GATT, WTO agreements and NAFTA).

Chambers 2022 recognizes Harry as a leader in the field of export controls and economic sanctions (Chambers Global and Chambers USA), as well as CFIUS (Chambers USA). Previous editions have also recognized Harry’s achievements regarding his work related to the Foreign Corrupt Practices Act. Clients note that Harry provides “accurate, straightforward guidance incredibly efficiently” and “he has an ability to translate complex legal requirements and rules into business-friendly jargon.”

Richard Smith Partner, Mergers & Acquisitions, Capital Markets

San Francisco

See my bio

Practice:

Mergers & Acquisitions
Capital Markets
Technology Companies Group
Japan
Taiwan

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Richard Smith Partner

San Francisco

Richard has advised on more than 500 M&A transactions and has represented clients in all aspects of mergers and acquisitions transactions involving public and private companies, including negotiated mergers, auction bid processes, cross-border transactions, distressed asset sales (including 363 sales), leveraged buyouts, tender offers and exchange offers, going private transactions, SPACs and reverse mergers, mergers of equals transactions, going dark transactions, hostile takeovers, proxy contests, takeover and activist defense, purchases and sales of divisions and subsidiaries and joint ventures. He co-authored a1,500-page book by Bloomberg, Mergers and Acquisitions of Privately Held Companies: Analysis, Forms and Agreements.

Richard also has represented clients in a wide range of SEC-registered, underwritten and privately placed stock and debt offerings, and he has assisted companies in connection with issuer tender offers (both equity and debt), recapitalizations, restructurings, share repurchase programs, and rights offerings. He regularly represents clients in the preparation and filing of periodic SEC reports, proxy statements and Williams Act reports. He also advises clients on compliance with the Sarbanes-Oxley Act of 2002, Dodd-Frank Act of 2010 and JOBS Act; reporting under and compliance with Section 16 of the Securities Exchange Act of 1934; disclosure and reporting issues; sales of restricted securities and sales of securities by insiders; universal proxy cards; and NYSE/NASDAQ rule compliance and inquiries.

Related Areas

Markets

Taiwan