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Key Takeaways from the Sixth Annual Best Practices in IP Conference

May 3, 2018

The Sixth Annual Best Practices in IP Conference in Tel Aviv, which covered global best practices for issues affecting companies' IP, was another great success. Attendees benefited from top-notch educational opportunities and introductions to innovative companies.

The day started with a fascinating plenary keynote address by Erich Andersen, Corporate Vice President and Chief IP Counsel at Microsoft, on intellectual property issues related to artificial intelligence. The day concluded with a presentation on patent prosecution acceleration options around the world. In taking in these and the other presentations in between, I was struck by three key points:

1. International concern about eligibility in the United States persists.
After the keynote, the rest of the morning was dedicated to this issue, split between two different sessions - a roundtable on eligibility and obviousness, and a mock Patent Trial and Appeal Board (PTAB) hearing involving a MedTech claim straddling the eligible/non-eligible boundary. While the roundtable included a European perspective from Stephen McDonald, an IP portfolio manager from the University of Manchester, the onus fell on the U.S. members of the roundtable to explain the current trend in the United States. The mock hearing was mostly dedicated to arguments on both sides of the eligibility debate concerning the claim on appeal.

2. The PTAB Judge's Perspective.
If Trenton Ward, former PTAB Judge and now partner at Finnegan, is representative of current PTAB judges, the attendees gained valuable insight into the kinds of issues judges are facing and how they are approaching them. These judges are handling the same uncertainties and ambiguities as the advocates arguing before them. They are very knowledgeable about the issues brought to them and are grappling with these issues under tough circumstances.

3. Legal budgets are being scrutinized everywhere.
Every company around the world is concerned about its legal budget. Several afternoon sessions were dedicated to this issue in some shape or form. From conveying to a company the role and importance of IP counsel, to making decisions on licensing or litigation, to determining in-house responsibilities vis-à-vis outside counsel, the underlying theme was about productivity and strained legal budgets. The panelists, led by my colleague Nels Lippert, gave important insight into how the issues are being addressed.

As always, we are looking forward to our next visit to Israel and the 2019 version of Best Practices in IP Conference. This was our third year attending and presenting at this important and informative conference. Due to its size and composition of attendees, it provides both an opportunity to learn as well as teach. As always, we were privileged to be invited to attend.

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