Practice Makes Perfect

I attended the sixth Best Practices in Intellectual Property Conference on Monday.

carpetThe conference was similar to the previous ones. Focused on practical patent advice for in-house counsel, there were sessions of prosecution, licensing and litigation. The conference was in the same hall as always, and we were pleased to see that the Sheraton have finally replaced their grotty conference room carpet, but note that the adhesive was still curing, and there was an ambience of acetone that was rather unpleasant.

 

 

 

 

full houseThere were more tables squashed in than in previous years, and there were few empty seats. So I think that  the claimed attendance of 170 was about right.

 

 

 

The audience was not just large, but was also high-quality, with a very high number of IP managers, licensed patent attorneys and IP litigators in attendance, including several that had flown in specially from China, India, Us and Europe.

Due to traffic, I missed breakfast and the keynote lecture given by Erich Andersen, VP and Chief IP Counsel of Microsoft. I did, however, hear presentations by IP counsel of Google and other major players. It was nice to see that the main cases are still Alice, Mayo and Myriad, so I haven’t missed any major US patent decisions over this past year.

This was, perhaps, part of the problem. Due perhaps to Brexit, the European Unitary patent and patent court has not exactly happened, so there was no session on that. There also hasn’t been a groundbreaking Supreme Court Ruling in the US that required major discussion, so although the presentations were topical, there wasn’t any groundbreaking developments that needed discussion.

professional_adam-p-samanskyjeff berkoqwitzAn interesting experiment was a mock PTAB appeal on 101 subject matter inellegibility that was fought between Adam Samansky (Mintz Levin) and Jeff Berkowitz (Finnegan). Both are tall, formally dressed American Jewish red-heads which made following who was defending and who was attacking the subject matter validity of a computer enabled business method patent claim a little difficult. What I and others in the audience found bemusing was why someone would challenge such a claim on 101 grounds, when it clearly lacked novelty and non-obviousness. One of the panelists noted that former director of the USPTO David Kappos had tried a pilot scheme that stayed the subject matter issues whilst US 102 and 103 issues were discussed, and this resulted in the patent applications being abandoned or the claims rewritten so that the 101 issues simply went away. It seems to be that software is a field of creative endeavour that deserves patent protection. A lot of the case-law has developed around appeals for patent claims that were poorly drafted and defended minor technical advancement. Still the session was a reasonable attempt to give the audience an understanding of how such proceedings occur.

ilI was particularly pleased that a couple of my criticisms have been addressed. In particular, in the past, I have noted that the Best Practice Conference tends to ignore Israel IP prosecution and litigation, which is short-sighted since disgruntled employees can become competitors, and with inventor compensation being an issue that comes up more frequently.  These issues were addressed by Dr. Ronen Lahav, a senior examiner from the Israel Patent Office giving an overview of fast tracking options at the Israel Patent Office, and using Israel filing of the priority application as a fast track to reduced fee PCT filings. Since the America Invests Act brought US patenting more into line with the rest of the world, it makes far less sense filing US provisional patent applications, and there are definite advantages of starting with an Israel Application. Dr Yoav Oestreicher from Meitar (Liquorice) gave an overview of patent litigation in Israel. Whilst I disagree with his assertion that there is so little of it, that all the important case-law is thirty years old, noting the Plavix ruling, for example, by and large, the presentation was a fair and reasonable overview of litigation in Israel. We note that Tal Band also presented. However, I missed his session due to the parallel program and the need to choose which lectures to attend.

As always, the conference was a good opportunity to see old friends and make new ones. I was particularly impressed that competent and experienced practitioners like Greg Kirsch (Ballard Spahr – US) and Michael Jaegar (Withers & Rodgers, UK), who, despite not lecturing themselves, or even having colleagues from their firms that were presenting, flew in to enjoy the conference, and not for the first time. There was also a number of patent attorneys from the larger firms that attended the conference and/or the master classes. I am pleased that the larger Israel patent firms realize that the IPR conference is an annual feature, and instead of boycotting, are beginning to benefit from the program.

There wasn’t a lot of swag available, but what some of the freebies were quite useful. Mintz Levin were giving out rather nice back-packs suitable for computers. Although superficially similar to the S. Horowitz sponsored bag given out at the AIPPI conference two years ago, they were a much better quality. This is in no way an indication that Mintz Levin’s IP skills are better or worse than those of S. Horowitz. I merely note that their backpacks are better made.  Also noteworthy, Greenberg Traurig were giving out rather nifty electronic scales for weighing suitcases and hand-luggage. That too wasn’t particularly well made. It failed completely when a heavy-weight patent attorney and blogger tried to weigh himself.

Lexis Nexis had a nice freebie as well, with a photographer doing professional portrait photos. I took the opportunity to get a graphic image showing that I really do support Kim’s efforts to educate the Israel IP community.

just desserts

Just desserts

Slicing the IP thin.jpgThe food, was, as always, of a very high quality, particularly the endless selection of desserts that came out at the coffee breaks and with the lunch, and were different each time. I take my reviewing seriously, and can assure readers that these didn’t just look good, but tasted good as well.

Lunch included a well-stocked salad bar with cold meats, cold seared tuna and other odds and ends followed by beef, salmon or chicken , with rice, roast potatoes and various cooked vegetables.

searchOver lunch, I attended a special session given by Daniel Ovadya of Questel Orbit that very convincingly demonstrated how poor search strategy could result in totally wrong results regarding patent families and national protection, despite the fact that all the commercial software ploughs the same databases.

This conference is a difficult one in that its focus is practical rather than academic, and the audience though varied, includes a lot of very experienced, competent practitioners. By offering parrallel sessions, there is an attempt to cater for all, but I did hear a couple of pharma attendees complaining about a computer bias to the program. Unlike INTA, the conference is not merely a party.  Although it is a good time to see old friends, the participants come to learn and want to go away with valuable tips. The fact that so many come back year after year, testifies to the high standard of the program.

2 Responses to Practice Makes Perfect

  1. Thank you for the review Michael and it is gratifying to note that you speak about the excellent quality of the program year after year as this is our aim: to provide Advanced IP Training for the in house practitioner as well as insight for the firm patent attorney acting as in house in many smaller companies. I am delighted to know that you as well as nearly 200 participants this year agree with you! :-) Just a note of fact: this is the 6th Annual BPIP Conference and wait until you see what we have in store for you next year!!

    • Michael hi,

      Thanks for your thorough review of Kim’s recent conference,. After being disappointed for a number of years, this was my first year of NOT attending… From what you wrote, I should reconsider favorably next year.

      Best Regards,
      Haim

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