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Intellectual Property: A Roadmap for Securing Your I.P. When Expanding Overseas


Product Code - LGA244
Speaker(s): Lothar Determann, Baker & McKenzie LLP; Pamela T. Church, Baker & McKenzie LLP; Lisa W. Rosaya, Baker & McKenzie LLP; Richard V. Wells, Baker & McKenzie LLP
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An article and webinar series in cooperation with Baker & McKenzie LLP

Innovation is the product of costly research and development and the lifeblood of technology companies today. The faculty presenting this program will explore the practical ways technology companies can secure and protect their technology and brands when expanding into new jurisdictions, including how to secure trademark rights, ensure that content and software developed abroad belongs to the company, properly structure transactions to protect I.P. and know-how in developing technology, and avoid common pitfalls.

The program will address trademarks, domain names, copyrights, and patents as well as other rights, including those to databases. Learn what you need to know in order to help your clients effectively – and safely – expand into international markets.

This webinar is the second in a planned series to help you advise and counsel your business clients who desire to expand successfully into international markets. Subsequent planned webinars are:
• Legal Considerations for Selling Abroad: May 21
• Establishing Foreign Presences: June 19
• Litigation and Arbitration: July 16

Educational Objectives:

• Understand best practices for planning, negotiating, consummating, and implementing cross-border transactions so that intellectual property will remain protected.
• Learn the difference between commercial versus I.P. goals.
• Find out how to select an appropriate transaction structure such as a license or service agreement.
• Discover how to determine a form of I.P. appropriate for the new market(s).

Who would benefit most from attending this program?

Corporate counsel including both generalists and attorneys specializing in international matters; intellectual property practitioners.

Program Level: Intermediate
Prerequisite: A general understanding of international business and intellectual property law.
CPE Delivery Method: Group Internet-Based Live
Field of Study: Specialized Knowledge and Applications
Recommended CPE Credit: 1.0 credits
Anticipated CLE Credit: 1.0 credits (may vary based on from which jurisdiction requested)

For additional information, please see the “CE Credit” tab.

Lothar Determann, Baker & McKenzie LLP; Pamela T. Church, Baker & McKenzie LLP; Lisa W. Rosaya, Baker & McKenzie LLP; Richard V. Wells, Baker & McKenzie LLP

Moderator: Lothar Determann, Baker & McKenzie LLP
As a partner in Baker & McKenzie’s Palo Alto, California office, Lothar Determann’s practice focuses on counseling companies on taking their products, data, intellectual property and contracts international as well as related commercial and compliance matters. Dr. Determann has been a member of the Association of German Public Law Professors since 1999, and he teaches data privacy law, computer law and internet law at the University of California, Berkeley School of Law (Boalt Hall), Hastings College of the Law, Freie Universität Berlin, and Stanford Law School. He frequently presents on international and intellectual property law topics and has authored more than 80 articles and treatise contributions as well as four books, including Determann’s Field Guide to International Data Privacy Law Compliance.

Dr. Determann is admitted to practice in Germany and California. He is recognized as one of the top 10 copyright attorneys in California by the San Francisco Daily Journal and as one of the top 25 intellectual property attorneys in California by the Los Angeles Daily Journal; listed in the World’s 250 Leading Patent and Technology Licensing Practitioners by the Intellectual Asset Management (IAM) Magazine; and ranked as a leading lawyer in Chambers USA, Legal 500 USA and California Super Lawyers.

Pamela T. Church, Baker & McKenzie LLP
Pam Church is a partner with her firm. She concentrates on intellectual property matters involving the development, exploitation and transfer of IP rights, including licensing, technology transfer, research and development, franchising, print and electronic publishing, e-commerce, outsourcing and IP securitization transactions. She counsels major media publishing, entertainment, motion picture, financial services, luxury goods and technology companies in the establishment and implementation of comprehensive IP protection, licensing, merchandising, enforcement, and anti-piracy programs. Her practice also includes general corporate counseling, M&A, joint ventures and business reorganizations in fields in which I.P. rights are key.

Ms. Church earned a J.D. from New York University School of Law and is admitted to practice in the State of New York. She was a Rotary Foundation Graduate Fellow at the University of Bonn in Germany and earned a B.A., cum laude, from Yale University.

Lisa W. Rosaya, Baker & McKenzie LLP
Lisa Rosaya, a partner with Baker & McKenzie, advises and represents clients on intellectual property matters. She counsels clients on global trademark portfolio and brand management matters, including trademark selection, trademark prosecution, trademark opposition and cancellation proceedings, copyright and trademark licensing, enforcement and infringement matters, domain name issues and disputes and labeling and advertising issues.

Ms. Rosaya formerly served as a trademark examining attorney in the U.S. Patent and Trademark Office, where she examined and ruled upon trademark applications for registration, advised applicants, and represented the office in ex parte appeals before the Trademark Trial and Appeal Board. She is currently the Treasurer of the New York State Bar Association's I.P. Section and was formerly the co-chair of the Section’s Trademark Committee for five years. She served on the International Trademark Association’s (INTA's) Internet Committee and Dilution and Well Known Marks Committee, respectively, for four year terms and currently serves on INTA’s Rights of Publicity Subcommittee. Ms. Rosaya also served on ICANN’s GNSO-chartered Registration Abuse Policies Implementation Drafting Team and has authored numerous articles and spoken at various industry events on trademark, Internet and domain name issues, including the rollout of the new generic top-level domain names.

Ms. Rosaya earned a J.D. from the University of San Diego School of Law and a B.A., cum laude, from Boston University. She is licensed to practice in the District of Columbia, New York, and New Jersey as well as before several U.S. District Courts and Courts of Appeal.

Richard V. Wells, Baker & McKenzie LLP
Richard Wells is a partner in Baker & McKenzie's Intellectual Property Practice Group. He has more than 10 years of experience practicing intellectual property law with a focus on patents including litigation, counseling, and prosecution. Prior to rejoining Baker & McKenzie, Mr. Wells served as intellectual property counsel for WesternGeco, a subsidiary of Schlumberger, in Oslo, Norway.

Mr. Wells’ practice is focused on patent litigation, including matters before the International Trade Commission. In addition, he regularly handles I.P. due diligence and valuation assessments of potential acquisition targets and investment opportunities. He further provides clearance evaluations on new products entering markets worldwide, including preparation of patent-related opinions.

Mr. Wells earned a J.D. from the University of Houston Law Center and a B.S. in Mechanical Engineering from the University of Texas at Austin. He is admitted to practice in the District of Columbia and Texas as well as before the U.S. Patent & Trademark Office.

This program’s CLE-credit eligibility varies by state. Bloomberg BNA is an accredited provider in the states of New York*, California, Pennsylvania, Texas and Virginia, and most other jurisdictions grant CLE credit on a per-program basis. At this time, Bloomberg BNA does not apply directly to the states of Florida, Rhode Island, Montana and Hawaii although credit is usually available for attorneys who wish to apply individually. Additionally, the following states currently do not grant credit for Bloomberg BNA OnDemand programming: Arkansas, Ohio, Nebraska, and Delaware. All requests are subject to approval once the live webinar has taken place or the customer has viewed the OnDemand version. Please contact the Bloomberg BNA accreditations desk if you have specific questions that have not been addressed.

*Bloomberg BNA is an accredited provider in New York for experienced attorneys only.

Hardship Policy
For information regarding Bloomberg BNA’s Hardship Policy, please visit the Continuing Education Information page.

Questions
Individual programs, subjects, and formats may not receive credit in some states and there may be specific rules regarding who may earn credit or the maximum number of credit hours that may be earned with specific formats. For specific questions, contact your state MCLE regulatory entity for specific questions about your MCLE rules or visit the American Bar Association’s website for general information on accreditation.

If you have further questions regarding a specific state or how to file for CE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the CLE Accreditation Coordinator or send an email to accreditations@bna.com.