Law Seminars International Presents: Second Annual Advanced One-Day Seminar on

Departing Employees and Intellectual Property
Strategies and practical tips for managing voluntary and involuntary departures

(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)

May 19, 2010
InterContinental Mark Hopkins Hotel in San Francisco, CA

Who Should Order This Homestudy

In-house and private practice attorneys,human resource professionals, CIOs and all intellectual property professionals

Why Order

For some employers, more than fifty percent of their assets walk out the door every day, hopefully to return the next day. Employees are the heart of intellectual property - patents, copyrights and trade secrets. They conduct, and have access to, research; take part in new product development planning and create the designs, artwork and copy. Their ongoing contacts with customers, distributors and suppliers reach to every outside link of the company and fuel the ongoing enterprise.

Our economic upheaval is not over. Whether recession or recovery, employee departures often occur at a greater rate during turmoil. During periods of job loss these departures are often involuntary on the employee's part, triggered by layoffs, salary reductions and relocations. As business and employment positions open up, on the other hand, pent-up frustrations and visions of economic opportunity encourage voluntary employee departures, sometimes at the employer's expense.

Departed employees and changed employers, "abandoned" research, and aggressive competition over a smaller pie: What implications do these all have for intellectual property protection? Our distinguished faculty will explore this question, along with effective security measures for maintaining trade secrests, post-employment non-solicitation provisions, criminal issues and practical solutions. Attendees will learn ways to manage risks and participate successfully in this new era.

~ Peter P. Chen, Esq. and Robert W. Payne, Esq., Program Co-Chairs

What You Will Learn


Wednesday, May 19, 2010

8:00 am

Registration and Continental Breakfast

8:30 am

Introduction and Overview

Peter P. Chen, Esq., Program Co-Chair
Latham & Watkins LLP / Menlo Park, CA

Robert W. Payne, Esq., Program Co-Chair
LaRiviere, Grubman & Payne, LLP / Monterey, CA

8:45 am

Managing Voluntary and Involuntary Departures: Effective Security Measures for Maintaining Trade Secrets

Best practices for preserving confidentiality of proprietary information; structures and processes for limiting access; what to do after the resignation or termination notice; intellectual property issues in managing layoffs

Rebecca Edelson, Esq.
Steptoe & Johnson LLP / Los Angeles, CA

9:30 am

Preplanning for Responding to Misappropriation: Getting the Toolbox Ready for Tailoring the Response to the Situation

Looking at the context (raiding, individual defection and mass migration); causes of action; and practical alternatives to suing (such as structuring the departure to facilitate things like withholding pay) that may be more effective

Roland M. Juarez, Esq.
Hunton & Williams LLP / Los Angeles, CA

10:15 am


10:30 am

Practical Approaches for Identifying Risky Departures; Monitoring Misappropriation

Who to watch and how to do it effectively

Robert H. Sloss, Esq.
Farella Braun & Martel LLP / San Francisco, CA

11:00 am

Who Owns What After the Departure

Post-termination assignment obligations; patent ownership in the absence of an express assignment; copyright ownership in software; work made for hire; shop and trade secret rights

Peter P. Chen, Esq., Program Co-Chair
Latham & Watkins LLP / Menlo Park, CA

Pitfalls and opportunities with abandoned research and partially completed projects

Robert W. Payne, Esq., Program Co-Chair
LaRiviere, Grubman & Payne, LLP / Monteray, CA

12:15 pm

Lunch (on your own)

1:30 pm

Remedies for Trade Secret Theft: Criminal Prosecution of Departing Employees

Federal and California criminal enforcement procedures; what the prosecutor needs from the employer; common problems that prevent or interfere with prosecution; effect on civil actions; available remedies

Matthew A. Parrella, Esq., Assistant U.S. Attorney, Chief of the Computer Hacking and IP Unit
U.S. Attorney's Office / San Jose, CA

Pros and cons of cooperating with the government from a business perspective; civil vs. criminal remedies; seizure of records and computers

Neil A. Smith, Esq.
Sheppard Mullin Richter & Hampton LLP / San Francisco, CA

2:45 pm


3:00 pm

Issues Between the Departed Employee and the Employee's New Employer

Exit interviews; contacting the new employer; intellectual property audits; inevitable disclosure doctrine

Bradford K. Newman, Esq.
Paul, Hastings, Janofsky & Walker LLP / Palo Alto, CA

Darren Weingard, Esq., Vice President and Associate General Counsel
Yahoo! Inc. / San Francisco, CA

4:15 pm

Update on Aspects of Employment Agreements Relating to Intellectual Property

Importance of having & updating employment agreements; affect of Labor Code sections 2860 & 2870; employee rights in absence of an agreement; limits on confidentiality clauses & requiring or modifying an agreement after hire; wrongful termination issues

Marc L. Jacuzzi, Esq.
Simpson, Garrity, Innes & Jacuzzi, PC / South San Francisco, CA

5:00 pm

Evaluations and Adjourns



There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

Law Seminars International is a State Bar of California approved MCLE provider. This program qualifies for 6.75 California MCLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.


Our complete Homestudy Course, consisting of a DVD recording and the course materials (either a binder or searchable CD), is available for $705. The course materials alone are available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or from the date we receive payment.
Order Homestudy

Faculty Bios

Peter P. Chen, Program Co-Chair, partner in the Litigation Department at Latham & Watkins LLP, focuses on intellectual property litigation and related strategic counseling and licensing, as well as a range of issues involving intellectual property management and licensing, standards organization, information security and open source licensing. He is listed in The Best Lawyers in America.

Robert W. Payne, Program Co-Chair, partner at LaRiviere, Grubman & Payne, LLP, focuses on intellectual property litigation and licensing. He is Chair of the Patent Litigation Committee of the American Intellectual Property Law Association. Previously, he was Chair of the Executive Committee of the Intellectual Property Section of the State Bar of California and currently is advisor to that Committee.

Rebecca Edelson, partner at Steptoe & Johnson LLP and leader of its trade secret practice, counsels businesses on protecting proprietary rights and information, inside and outside of the litigation context. She is a co-editor and author of the treatise, "Trade Secret Litigation and Protection in California".

Marc L. Jacuzzi, partner at Simpson, Garrity, Innes & Jacuzzi, PC, focuses on employment law matters, including all aspects of the employer/employee relationship. He advises regarding hiring and termination issues, wage and hour requirements, employee classification issues, civil rights/discrimination issues, commission plans, employment contracts and confidential information agreements.

Roland M. Juarez, partner in the Employment Group at Hunton & Williams LLP, focuses on employment and labor law, including discrimination and harassment litigation, wage and hour litigation, noncompetition and trade secret cases, employment agreements, and preventative counseling and training. He is Co-Head of the firm's National Unfair Competition and Information Protection Task Force, which represents clients at risk of information theft and unfair competition by current and former employees.
Full bio and contact info for Roland M. Juarez at Hunton & Williams LLP

Bradford K. Newman, partner and chair of the International Employee Mobility and Trade Secret practice at Paul, Hastings, Janofsky & Walker LLP, litigates, advises and publishes on national issues relating to trade secrets theft and protection and employee mobility. He is founder and editor of the Employee Mobility, Restrictive Covenants and Trade Secrets chapter in the ABA Business Law Section's National Annual Review. He is listed in Chambers USA and is a Northern California Super Lawyer.
Full bio and contact info for Bradford K. Newman at Paul, Hastings, Janofsky & Walker LLP

Matthew A. Parrella, Assistant U.S. Attorney, is Chief of the Computer Hacking and Intellectual Property (CHIP) Unit for the U.S. Attorney's Office for the Northern District of California, which investigates and prosecutes complex trade secret thefts, economic espionage, computer intrusions, criminal copyright violations, and other high tech and intellectual property crimes.

Robert H. Sloss, partner at Farella Braun & Martel LLP, represents domestic and foreign companies in connection with all aspects of intellectual property protection and enforcement. In addition to litigating intellectual property disputes in state and federal courts, he provides clients with pre-litigation counseling on patent, copyright, trademark and trade secret matters.
Full bio and contact info for Robert H. Sloss at Farella Braun & Martel LLP

Neil A. Smith, partner in the Intellectual Property Practice Group, Sheppard Mullin Richter & Hampton LLP, focuses on litigation and counseling in trademark, patent, copyright and unfair competition matters.He is listed in Chambers USA, Best Lawyers and Who's Who Legal.
Full bio and contact info for Neil A. Smith at Sheppard Mullin Richter & Hampton LLP

Darren Weingard, Vice President and Associate General Counsel at Yahoo! Inc., is responsible for worldwide commercial litigation involving Yahoo! Inc. and its international subsidiaries. Previously, he was a Senior Attorney for Sprint Corporation.