2024 Foley Tokyo IP Conference

Navigating the Business of Innovation: Insights on Patent Eligibility, AI, and Other Key IP Developments

The way of doing business globally continues to change at a rapid pace. For instance, the rise of digital transformation and the rate of technological advancement poses new legal challenges, such as subject matter eligibility and IP ownership, and raises other strategic considerations concerning ethics and liability. Knowing how to navigate these changes is essential for risk management, opportunity-spotting, and commercial resilience in our ever-evolving business landscape.

Please join us on Wednesday, September 25, for the 2024 Foley Tokyo IP Conference — “Navigating the Business of Innovation: Insights on Patent Eligibility, AI, and Other Key IP Developments” — a half-day educational seminar that will guide you through the latest IP legal developments and their practical implications for business in the United States. Conference participants will explore a range of topics, including key considerations for Section 101 challenges, trends in IP litigation, developments at the Patent Trial and Appeal Board (PTAB), patent portfolio management best practices, and the impact of generative artificial intelligence (AI) on business practices.

There is no cost to attend this upcoming event, but space is limited and advance registration is required. To express interest in attending, click here.

NOTE: Both Japanese and English versions of the presentation materials will be shared with attendees before the program and copies will also be available on-site.

Why Attend the Foley Tokyo IP Conference?

• Hear from more than 10 seasoned Foley partners with diverse IP focuses who have dedicated much of their careers to supporting Japanese innovators and will travel to Tokyo to present live, in-person at this seminar
• Gain valuable technology-focused insights across the IP life cycle — from counseling and prosecution to transactions and litigation
• Network face-to-face with your peers and freely ask questions of Foley speakers and hosts during the post-conference reception

Presentation Topics

PLENARY SESSIONS:

Effectively Responding to Patent Infringement Allegations

• General observations about U.S. patent litigation
• Important considerations in evaluating a patent litigation
• Resolving a patent litigation early, including the timing for bringing Section 101 patent-eligibility challenges
• Utilizing potential counterclaims as leverage

Recent Trends and Cases in IP Litigation

• Recent patent litigation trends
• LKQ v. GM Global (design patents)
• Sonos v. Google (prosecution laches)
• Columbia University v. Gen Digital (litigation misconduct)
• Amarin Pharma v. Hikma Pharmaceuticals (skinny labeling)

Inter Partes Review Updates

• Background: A brief overview of inter partes reviews (IPRs) and post-grant reviews (PGRs)
• Overview of significant proposed changes to PTAB rules for IPRs
• IPR strategies involving parallel district court cases in fast-to-trial jurisdictions
• Strategic considerations for claims, including potentially indefinite means-plus-function terms in IPRs and parallel litigation

Generative AI: The Current Legal Landscape

• Overview of generative AI platforms and how AI is already integrated into our daily lives
• Copyright and generative AI – the current legal landscape
• Incorporating generative AI into your business – opportunities and risks
• Creating and following company AI usage guidelines – how to avoid legal liability

Timing Considerations and Practical Advice for Patent Portfolio Management Over the IP Life Cycle

• Timing factors and budgeting
• Continuation and reissue decision-making
• Transactions considerations
• Maintenance review

BREAKOUT SESSIONS:

Pharma and Biotech

• In re Cellect (effect of obviousness-type double patenting on patent term adjustment (PTA))
• Strategies for prosecuting pharma patents that are Orange Book-listable and able to withstand the new Federal Trade Commission (FTC) de-listing actions
• New terminal disclaimer rules proposed by the U.S. Patent and Trademark Office (USPTO) and their potential impact on prosecution strategies

Electronics

• Overview of standard essential patents (SEPs)
• Update on U.S. policy developments
• Issues in U.S. SEP litigation: Wilfulness, injunctive relief, FRAND royalty
• Practice tips for maximizing the value of SEP patents during prosecution

Program Agenda

All times listed in Japan Standard Time (JST)

Continuing Legal Education (CLE) Credit

For attendees who are licensed to practice law in the United States and seeking CLE credit for this program, applications for accreditation will be submitted to Colorado, Florida, New York, and Wisconsin for up to 5.0 credit hours (50-minute hour) and California, Illinois, North Carolina, Texas, Utah, and Virginia for up to 4.25 credit hours (60-minute hour). Uniform Certificates of Attendance will be provided to attendees seeking credit in other jurisdictions.

Foley & Lardner LLP is an approved MCLE provider in California, Colorado, Illinois, New York, Texas, and Utah.

For purposes of New York CLE credit, this program is appropriate for experienced attorneys only. Certificates of attendance will be distributed to eligible participants approximately eight weeks after the program via email.