IP Assignment Strategies and New State Protections: Key Provisions, Mitigating IP Risks, Implications for Litigation

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Wednesday, December 20, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE will guide counsel on IP assignments and the impact of new state protections that have been put in place. The panel will compare the requirements of the states that now have additional protections as well as potential litigation. The panel will also provide best practices for assignment strategies.
Faculty

Ms. Li focuses her practice on patent, trademark, and trade secret litigation, counseling, patent procurement, freedom-to-operate, and due diligence. She litigates in both federal and state court, has been lead counsel in IPR proceedings, and has also successfully represented clients at the International Trade Commission (ITC). Her practice covers an array of technologies, with a special emphasis on biotechnology, Hatch-Waxman, medical device, and hand-held electronics industries. Her experience includes patent litigation, trade secret misappropriation, trademark enforcement, false advertising, and unfair competition cases.

Mr. Saxe provides management-side labor and employment litigation defense before federal and state courts in class and collective actions, single-plaintiff litigation, and administrative agency proceedings. In addition to litigation defense, Mr. Saxe provides counsel to a variety of workforce sizes, including but not limited to, those with modest in-house counsel presence, in connection with a broad array of employee relations issues, including wage and hour, human resources management, employment mobility, and equal employment opportunity matters. He advises management on complex issues arising in employment actions (including, but not limited to, individual or group terminations from employment), and he prepares and reviews personnel policies, employee handbooks, employment agreements, and other employment-related materials to ensure a compliant and effective employment platform.

Mr. Potts is a thought leader in developing and monetizing intellectual property assets in the biotech field. With well over a decade of experience as an intellectual property attorney both in-house and as outside counsel, Mr. Potts has built and led IP departments at major publicly traded, multinational companies. Currently, he is the CEO of a startup cell therapy development company that is focused on developing adoptive cell therapies for the treatment of solid tumors such as ovarian, breast, pancreatic, and kidney cancers.
Description
Recently, several states, including New York, California, and Illinois, have enacted legislation that impacts the enforceability of companies' IP assignment provisions. The legislation provides employees with additional safeguards when they are creating protectable IP.
With many companies having employees working remotely in some capacity, the lines are becoming blurred regarding work hours, equipment, and more. Companies located in or with employees working in the impacted states should review their agreements and update the assignment provisions to meet the requirements under the new state laws. If companies fail to properly draft IP assignments, they could lose the rights to IP they believe is theirs.
Listen as our authoritative panel of IP attorneys examines IP assignment provisions and the implications of the recent state protections that have been put in place. The panel will compare the 10 states that now have additional protections as well as potential litigation. The panel will also provide best practices for assignment strategies.
Outline
- IP assignments and implications of recent state protections
- Potential pitfalls when structuring assignments
- Key provisions in assignment agreements
- Potential litigation
- Risks
- IP assignment strategies
Benefits
The panel will review these and other key issues:
- How have the new state laws changed the playing field for companies seeking to protect their IP?
- What key provisions should counsel include in employee assignment agreements?
- What strategies should counsel employ when drafting IP assignments to ensure ownership of employee-created inventions?
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