Law Seminars International Presents

A Two Day Conference on

Protecting & Exploiting Internally Developed Software

March 22 & 23, 2004
The Mid-America Club in Chicago, IL
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Who Should Order Homestudy

Lawyers and business executives involved in managing software portfolios and negotiating software licensing and distribution deals

Why Order

"In an ever-competitive global economy, software products have almost unlimited potential to add profitability to companies, but evaluating strengths and weaknesses in a product before it hits the market is crucial. Any successful corporate intellectual property program needs a roadmap to identify the market opportunities and potential customers, assess the value of the portfolio, establish the corners of contracts and determine what it will take to distribute the product.This two-day conference will convene leading industry executives and practitioners to discuss the trends in software development, production and marketing, as well as strategies for protecting and defending your patents. They will address issues of forming strategic business alliances, offer practical tips for incorporating open source code, identifying licensing regulatory restrictions,developing patent protections that stick, and navigating the unique software patent claim formats, and will also present a special workshop on software developed at universities." ~ Program Co-Chairs: Scott L. Glickson, Esq. and Timothy C. Meece, Esq.

What You Will Learn

- Essential Elements of a Corporate IP Program - Trends in Business Models - The Most Effective Business Structures: Mergers,Acquisitions, Joint Ventures, Strategic Alliances? -Techniques to Evaluate the Value of Your Portfolio - Identifying Potential Customers - Software Sales vs. Exclusive Use of Software - Resolving Ambiguities of Your Right to License Open Source Code - Regulatory Restrictions on Your Right to License Distribution Planning - Patents as Basis for a Spin-Off - Valuation - Protection Strategies - Patent Law and Claim Formats - Defending Agains tInfringement Claims - Key Elements for Customer Contracts - Whether to Outsource - Software Developed at Universities

What Attendees Said

"Use of real permits good learning tool." "Test questions are good learning tool. " ' Mixing zone diagrams good." " Elegant dramatic presentation. "

Agenda

Monday, March 22, 2004
8:30 am Introduction and Overview
  Scott L. Glickson, Esq., Program Co-Chair
 Gordon & Glickson LLC / Chicago, IL
  Timothy C. Meece, Esq., Program Co-Chair
 Banner & Witcoff, Ltd. / Chicago, IL
8:45 am Know Thy Market I: Where is the Software Industry Heading? What are Your Opportunities?
  Industry perspective on trends in business models
  Dennis C. Garcia, Esq., Regional Counsel
 Microsoft Corporation / Chicago, IL
  Mergers, acquisitions and divestitures, joint ventures and strategic alliances: A legal perspective on the most effective business structures
  Brian F. Richards, Esq.
 Katten Muchin Zavis Rosenman / Chicago, IL
10:15 am Break
10:30 am Know Thy Market II: What Do You Have to Sell? Who Will Buy It? Do You Want to Sell It to Them?
  Techniques for evaluating your software portfolio to determine what you have of value
  Maurice J. Pirio, Esq.
 Perkins Coie, LLP / Seattle, WA
  Techniques for identifying potential customers and determining whether potential revenues from software sales outweigh the competitive advantage from exclusive use of the software
  Yar R. Chaikovsky, Esq
 Weil, Gotshal & Manges LLP / Redwood Shores, CA
12:00 pm Lunch (on your own)
1:15 pm Getting Your House in Order
  Essential elements of a successful corporate Intellectual Property program
  John F. Hornick, Esq.
 Finnegan, Henderson. Farabow, Garrett & Dunner, L.L.P. / Washington, DC
2:00 pm Resolving Ambiguities about Your Right to License Your Software
  Jointly developed software: What additional contract terms do you need when one or both parties plans, or wants the option, to sell the resulting software? For previously developed software, how do you determine
  Matthew J. Kelly, Esq., Chief Intellectual Property Attorney
 Chicago Mercantile Exchange, Inc. / Chicago, IL
  Open source code: Practical tips for determining the extent to which your software incorporates open source code; strategies and approaches for obtaining the right to use open source code in commercial applications
  Mark H. Webbink, Esq., Sr. VP, GC, and Secretary
 Red Hat, Inc. / Raleigh, NC
3:15 pm Break
3:30 pm Identifying Regulatory Restrictions on Your Right to License Your Software
  A checklist for determining whether export controls, technology transfer restrictions, or other regulatory limitations apply to your product or potential customers
  Jose Antonio Santos, Esq.
 Concepcion Rojas & Santos LLP / Coral Gables, FL
4:15 pm Planning for Distribution
  Distribution expertise: Identifying what kind of help you need and finding a partner to help get your product ready for market; key elements of a Distribution Agreement
  Robert M. Conway, Esq.
 Duane Morris LLP / Philadelphia, PA
5:00 pm Reception

Tuesday, March 23, 2004
8:30 am Business Structures
  Options, including strategic alliances and software patents portfolios as a basis for a spin-off; approaches for evaluating the options
  Wayne Parrish Sobon, Esq., Director of IP
 Accenture / Palo Alto, CA
9:15 am Pricing Strategies
  Valuation techniques
  Brian Oliver, Managing Director
 InteCap, Inc. / Chicago, IL
10:00 am Break
10:15 am Basic Software Protection Strategies
  Overview of available copyright, trade secret, and patent protections; tips for evaluating their strengths and weaknesses
  George Gerstman, Esq.
 Seyfarth Shaw LLP / Chicago, IL
11:00 am When and How to Persue a Patent Protection Strategy
  Overview of patent law and cases as they relate to software
  Joseph P. Krause, Esq.
 Vedder, Price, Kaufman & Kammholz, P.C. / Chicago, IL
  Patent claim formats unique to software; practical tips for compiling a software patent portfolio
  Charles L. Miller, Esq.
 Banner & Witcoff, Ltd. / Chicago, IL
12:00 pm Lunch (on your own)
1:15 pm Defending Against Patent Infringement
  What to do when the infringement letter arrives; negotiating points for dealing with valid claims; strategies for dealing with junk patents, sham patents, and extortion demands
  Timothy C. Meece, Esq., Program Co-Chair
 Banner & Witcoff, Ltd. / Chicago, IL
2:15 pm After the Transaction: Handling Ongoing Support and Maintenance Obligations
  Key elements for your contract with your customers; common provisions for warranties, indemnifications, and other boilerplate terms
  Diana J.P. McKenzie, Esq.
 Gordon & Glickson LLC / Chicago, IL
  Items to consider in determining whether to outsource customer support and maintenance; what you want in your contract with the vendor
  Kenneth Michael Massaroni, Esq.
 Scientific-Atlanta, Inc. / Lawrenceville, GA
3:15 pm Break
3:30 pm Workshop on Special Issues Surrounding Software Developed at Universities
  Overview of key issues in public/private partnerships
  Bruce A. Zivian, Esq.
 Baker & McKenzie / Chicago, IL
  University perspective
  John T. McEntire, MBA, Assistant Director—Copyright/Software
 University of Illinois / Urbana, IL
  Business perspective
  Rob Schultz, Senior Director
 IllinoisVENTURES LLC / Champaign, IL
5:00 pm Adjourn

Cancellation

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

Continuing Education Credits

Law Seminars International self-certifies CLE credits for Washington, California, and Alaska. For other locations, we automatically seek CLE credit approval for the state in which a seminar is held. On request, we will apply for credits from other bar associations or the accrediting bodies for other professions. The current credits status for this program is CA 13.5 | GA 13.3 | IA 13.25 (23504| IN 13.3 (0076734) | KS 15.5 (30529) | MO 15.9 | MN 13.25 | NC 13.25 (S2488,C2) | NY 15.5 (nontransit'l) | OH 13.25 (000140052) | PA 13 (57996) | VA CLE 13.5 | WA 13.25 (116625) | WI 15.5

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $905. The course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (which ever is later).
Order Homestudy

Faculty Bios

Scott L. Glickson,Program Co-Chair, is a partner at Gordon & Gllickson LLC where he advises software, technology-consulting, telecommunications, life science technology companies in business organization, corporate finance, and commercial matters, including mergers, acquisitions, and divestitures.

Timothy C. Meece, Program Co-Chair, is a partner at Banner & Witcoff, Ltd. where he concentrates his practice in patent litigation, as well as copyright litigation involving computer software. Mr. Meece’s experience includes litigating a number of cases to judgment including a jury trial to verdict, all victorious

Yar R. Chaikovsky, is Counsel in the IP Counseling Group at Weil Gotshal & Manges LLP. He specializes in providing legal advice to various companies involved in a wide range of technologies, with a particular expertise in patent, trade secret, copyright, Internet and corporate legal matters.

Robert M. Conway is a partner at Duane Morris LLP and Affiliates, practicing in the area of intellectual property law with emphasis on software and technology licensing and information technology business transactions. Mr. Conway also practices in the areas of commercial contracting, antitrust, mergers/divestitures and computer litigation and has comprehensive experience in the telecommunications, computer and manufacturing industries.

Dennis C. Garcia serves as Microsoft Corporation’s Regional Counsel for its Sales, Marketing & Services organizations in the central United States. In this role Garcia manages and coordinates the provision of legal support across a 17 state region and Microsoft’s Automotive & Industrial Equipment vertical unit

George Gerstman is a partner at Seyfarth Shaw LLP. As a former U.S. Patent Examiner, he examined approximately 700 patent applications. As a patent attorney, he participated in the preparation and prosecution of hundreds of patents, also handling numerous Patent Office appeals, interferences, reissues, and reexamination proceedings. Mr. Gerstman has been lead counsel in the litigation of numerous patents.

John F. Hornick is a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Mr. Hornick has broad experience in the areas of software licensing, copyrights, trade secrets, trademarks, IP litigation, and security interests in IP. Mr. Hornick leads litigation teams in trade secret, software, copyright trademark, and patent infringement actions.

Matthew J. Kelly is the Chief Intellectual Property Counsel at the Chicago Mercantile Exchange, Inc., where he is responsible for patents, trademarks, trade secrets, technology licensing and intellectual property litigation.

Joseph P. Krause is a shareholder at Vedder, Price, Kaufman & Kammholz, P.C. and a member of the firm’s Intellectual Property Practice Area. Mr. Krause focuses his practice on counseling clients in the exploitation of IP rights, evaluating and avoiding IP rights of others and the procurement of patents, trademarks and copyrights.

Kenneth M. Massaroni is Vice President and Deputy General Counsel at Scientific-Atlanta, Inc., and is responsible for all of Scientific-Atlanta’s intellectual property matters and government relations. Previously, Mr. Massaroni was in the Intellectual Property Department at Motorola.

John T. McEntire is the Assistant Director over Copyright and Software in the Office of Technology Management at the University of Illinois. Mr. McEntire’s experience concentrates in the marketing, licensing and commercialization of intellectual property.

Diana J. P. McKenzie is a senior partner and member of the Management Committee of Gordon & Glickson LLC. She also serves as co-chair of the Commercial Information Technology and e-commerce Practice and chair of the Healthcare Technology Practice. Ms. McKenzie focuses her practice on providing advice to clients on significant technology, privacy, HIPAA, and e-commerce transactions.

Charles L. Miller is a partner at Banner & Witcoff, Ltd. where he concentrates on patent prosecution and litigation matters primarily in the electrical, computer and business method arts. Mr. Miller has also provided clients with infringement, validity and patent-ability opinions in several different technical areas.

Brian Oliver is a Managing Director of InteCap, Inc. and specializes in the valuation, strategic management and licensing of intellectual property.

Maurice J. Pirio is a partner at Perkins Coie LLP. Mr. Pirio’s practice focuses on patent procurement, computer-related patents and litigation, software protection, and Intellectual Property law.

Brian F. Richards is a partner at Katten Muchin Zavis Rosenman where he concentrates in the areas of mergers and acquisitions and venture capital. Mr. Richards represents private equity backed companies in their financings, mergers, acquisitions, dispositions, and initial public offerings. Previously, Mr. Richards was the Vice President and General Counsel of a software development company.

Jose Antonio Santos, is a shareholder in the office of Concepcion Rojas & Santos LLP. He practices principally in the area of international commercial transactions. His clients include multinationals, technology companies, Internet-based companies, and providers of technology services.

Wayne P. Sobon is the Director of Intellectual Property at Accenture. Mr. Sobon is responsible for its intellectual property issues, including its IP program for capturing, protecting and exploiting Accenture’s innovations.

Mark H. Webbink joined Red Hat, Inc. as its first general counsel in May, 2000. He was subsequently elected Corporate Secretary and Sr. Vice President. His work has focused on intellectual property transactions, including software and patent licensing

Bruce A. Zivian is a partner at Baker & McKenzie. Mr. Zivian’s areas of practice are venture capital & private equity, mergers & acquisitions, and general corporate.