SABA-DC’s IP Section Presents:
IN-HOUSE PATENT COUNSEL PERSPECTIVES
IN THE POST-AIA WORLD
As the impact of the America Invents Act has now set in, in-house patent counsel have encountered both challenges and opportunities in evolving their pre-AIA patent practices to the new and continually shifting U.S. patent laws. For example, the first-inventor-to-file system has resulted in some greater clarity, but also urgency, for companies striving to gain or preserve an IP edge over competitors. Likewise, IPRs provide both novel tools and new obligations to companies seeking to avoid costly litigation. Moreover, the courts, PTAB, and USPTO have all continued to release new interpretations, rules, and regulations for implementing the AIA. How do in-house counsel manage and capitalize on these and other changing issues on the macro and micro levels, and how can outside counsel best assist?
Please join us for a round table discussion of how in-house patent counsel have changed, renewed, or augmented their patent practices and goals as the AIA and subsequent shifts in patent law have settled in.
Rishi Nangia – Senior Counsel, Intellectual Property, The Advisory Board Company
Mr. Nangia exercises his intellectual property law expertise in managing patent portfolio growth and development, as well as other IP-related issues, for The Advisory Board Company. He is also experienced in providing corporate legal advice for commercial transactions, as well as in developing and managing start-up companies. Prior to working at The Advisory Board Company, Mr. Nangia was corporate counsel for Oracle Corporation, where he drafted and negotiated technology contracts. In his years of private practice before going in-house, he gained significant experience in prosecuting, commercializing, and litigating patents.
Rajiv Shah – Assistant General Counsel - Patents, Johnson & Johnson
Mr. Shah currently serves as Group Leader – Cardiovascular and Metabolism (CVM) at Johnson & Johnson and is a member of its Intellectual Property Management Committee as well as the CVM Senior Leadership Team. Mr. Shah joined the Johnson & Johnson Law Department in 2010 to provide counsel and legal support to Johnson & Johnson’s pharmaceutical franchise. He has since worked on a number of significant transactions and has been a core member of a number of research and development teams. Mr. Shah regularly provides strategic counsel to the pharmaceutical franchise on a variety issues, including collaboration and alliance related matters. Additionally, Mr. Shah is involved in issues related to global data protection, and works with external organizations to understand and help shape the legal landscape for the same.
Rikesh Patel – Attorney, Bookoff McAndrews
Mr. Patel’s practice focuses on all aspects of patent counseling and patent prosecution in relation to a wide variety of medical device, electrical, and computer technologies. Prior to joining Bookoff McAndrews, Mr. Patel worked as in-house patent counsel at a Fortune 500 global medical technology company gaining experience in preparing and prosecuting patent applications for mechanical and electrical medical device technologies, growing and managing an IP portfolio for the company’s largest division, and counseling directors of various business units on patent portfolio strategies that would maximize the value of their assets.
Thara Russell – Attorney, Bookoff McAndrews
Ms. Russell helps her clients to assess and manage IP portfolios in multiple technological fields, including medical implants and imaging technologies, pharmaceutical and biological products, medical and educational software systems, and payments processing technologies. Prior to joining Bookoff McAndrews, she represented clients through pre-trial, trial, and post-trial procedures as a patent litigator in U.S. district courts. She also assisted clients with due diligence procedures and pre-litigation correspondence. Ms. Russell also interned for the Honorable Susan G. Braden at the U.S. Court of Federal Claims, where she conducted legal research for patent damages cases.
Lunch will be provided for those that RSVP.
Thursday, November 17, 2016, Noon-1:30pm
2401 Pennsylvania Avenue, NW, Suite 450
Washington, D.C. 20037
Please RSVP no later than Tuesday, November 15. Limited space is available for this event. Please note this event is RSVP only.
Akarsh Belagodu, SABA-DC IP Section, firstname.lastname@example.org