Innovative IP Strategies for AI Development, Monetization & Protection

Artificial Intelligence - AIThe IP for AI Summit, scheduled for Nov. 13-15, 2018, in Washington, DC, aims to uncover the latest secrets and explore best practices to harness and deploy valuable Artificial Intelligence IP assets successfully and effectively.

Organizers are now accepting speaker proposals for the forum. Anyone with a unique story may submit the title of the proposed talk with a brief description of the session objectives at

The 2018 Forum features the following Key Themes:

-What are the Most Vital Elements to Building a Strong Artificial Intelligence IP Portfolio?

-How to Facilitate and Implement AI Innovation within your Organization

-Can’t We All Just Get Along? Bridging the Gap Between your Inventors and IP Team

-Patent Eligibility According to the Experts Post-ALICE

-Building the most effective defense for your Portfolio

-De-mystifying Valuable Tactics to Monetize your IP Portfolio

-Successful Methods to Utilize Trade Secrets as a Protection Mechanism to your Portfolio

-How to Perfectly Execute an Effective and Lucrative In-Licensing Acquisition

-Inventorship vs. Ownership: Is a Machine Considered an Owner?

-Best practices explained to pass your patent under first-to-file AIA law changes

-What are the Best Practices to managing Partnerships, In-licensing of AI Expertise and Maximizing your Acquisition Potential

-How to Advance your Career utilizing AI Innovations in the Legal Industry

The event attracts a cross-section of innovators, business leaders and in-house counsel, according to organizers.

Register for the event or get details.



Key Provisions in Software Settlement Agreements

By Keli Johnson Swan
Scott & Scott LLP

The end of the year is a busy time for software publishers and entities like the BSA | The Software Alliance (“BSA”) and the Software & Industry Information Association (“SIIA”) to resolve an audit target’s copyright infringement dispute by entering into settlement agreements. While it may be advantageous for a company to reach a quick resolution by the end of the year in order to resolve any outstanding disputes or potential monetary penalties, it is critical not to rush through settlement without carefully considering provisions in a draft settlement agreement.

The following are a few provisions that should be carefully considered before executing an agreement.

Release of Liability.
The release of liability is arguably the most critical provision in a settlement agreement because without it, a company is still exposed for any potential copyright infringement claims. These provisions should be read very carefully because software publishers sometimes limit the provisions to specific circumstances, and make the release of liability contingent on several factors, including post-settlement remediation and other ongoing responsibilities.

Often software settlement agreements contain a provision that the release of liability is contingent on the accuracy of the audit materials that were submitted. This is particularly important because a company should make every effort to ensure that it conducts an accurate self-audit immediately after the audit request is received.

Post-settlement obligations.
The BSA and SIIA have specific terms it requires in settlement agreements, which requires that any software that was discovered to be unlicensed during the course of the audit is uninstalled or replaced with licensed software. Additionally, a software publisher or the BSA or SIIA may seek to include provisions that are more restrictive than the software license agreement requires, such as future on-site inspections. These terms generally can be negotiated so it is important to seek legal counsel before executing a settlement agreement.

While some targets of software audits wish to share their experiences to educate others, most companies prefer not to have any negative publicity related to resolving copyright infringement claims. The confidentiality provision should be carefully crafted to prevent the software publishers, BSA, or SIIA from publishing a press release about the settlement agreement.

These are just a few issues to consider when reaching a settlement to resolve alleged copyright infringement claims. If in doubt, contact an attorney experienced in software licensing and copyright infringement matters.



Federal Circuit Affirms Disqualification of Counsel, Dismissal of Patent Complaint

The Federal Circuit has affirmed a Western District of Texas decision disqualifying counsel for plaintiff Dynamic 3D Geosolutions LLC and dismissing its patent infringement complaint Schlumberger Ltd. without prejudice, reports IPWatchdog.

Dynamic alleged that defendant Schlumberger’s “Petrel” software infringed Dynamic’s ‘319 Patent, for systems and methods of combining seismic and well log data into a real-time, interactive three dimensional display.

But Schlumberger raised a potential conflict of interest and filed a motion to disqualify Dynamic’s counsel, Charlotte Rutherford. Rutherford previously was deputy general counsel for intellectual property at Schlumberger. The district court found that Rutherford’s work at Schlumberger was substantially related to her current work and “the evidence created an irrebuttable presumption that she acquired confidential information requiring her disqualification,” according to the report by Joseph Robinson and Robert Schaffer.

Read the article.



Invitation: Game Technology Law Conference

Law Seminars International will hold the Fifth Seattle Comprehensive Two-Day Conference on Game Technology Law on Oct. 13-14, 2016. The conference will be at the Washington State Convention Center in Seattle and also will be broadcast via webcast.

The event is designed to benefit attorneys, business executives, and anyone else involved in the interactive entertainment industry. Information on the agenda, faculty bios, tuition, and CLE is available on the registration page.

On its website, Law Seminars International says participants will learn about:

~FTC regulatory update
~The current state of the industry for business models and financing sources
~New developments in the IP underpinnings for video games
~Tips for building a game as a brand
~Analysis of rights of publicity cases and clearance process tips
~Virtual/augmented reality opportunities and issues for the game industry
~Special privacy and data security issues for the game industry
~eSports and fantasy sports: the line between games of skill and gambling
~Virtual currency systems and related tax issues
~Tips for assembling a package that will be attractive to investors

Register or get more information.



Importance of Licensing Technology Created While at a University

Technology - research - license - light bulbOne of the most critical and important contracts a startup can focus on, and do correctly, is to properly license IP from a university so that it can be commercialized going forward, according to a video prepared by Peter Buckland of Wilmer Cutler Pickering Hale and Dorr LLP.

He explains that a common question he hears from entrepreneurs is about how to work with technology that they created at their universities, going forward in a commercial endeavor.

“In most cases, anyone that is in anyway being paid by a university to do research, the university owns that research and for many of the universities we work with in this area, whether it’s Stanford or Cal or others, they’re all pretty in tune with their mandate, which is to commercialize that technology,” he says in the video. And the best way to do that, he adds, is to partner with the people who created that technology.

Watch the video.