Entrepreneurs: What NOT To Do In Trademarks, Patents, And Trade Secrets

February 21, 2023 | 7:00 pm - 8:30 pm ET | CIC, One Broadway, Cambridge, MA

Speaker Slides

What Not to Do in Trademarks, Patents and Trade Secrets

Nate S. Vogler, Associate at Morrison Foerster LLP; Peter Fasse, Principal at Fish & Richardson P.C; Todd Gerety, Partner, Gesmer Updegrove, LLP

A recording of this webinar is available for ENET members only at https://bostonenet.org/past-webinar-recordings. Learn how to become a member here!

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Attendees will have the option to join us in-person at CIC, One Broadway, Cambridge, MA 02142 or online via Zoom.

Entrepreneurs know they should protect their intellectual property (IP) to appeal to prospective investors, partners, customers, and employees. This panel of IP professionals will discuss trademarks, patents, and trade secrets with a focus on how startups often go wrong and how to avoid major IP pitfalls while protecting IP assets, valuation, and credibility.  Even if you think you know, it’s always helpful to hear how IP professionals answer questions such as: Is trademark searching an expensive minefield when done wrong or at the wrong time? When should inventors search for prior art if at all? Are trade secrets at risk if employment agreements, confidentiality agreements, and supplier and customer contracts are not carefully constructed?

This meeting’s presentations and discussion will cover the importance of IP to various people and aspects of startup companies, including, founders, investors, inventors, engineering, product development, and marketing.  Especially, this meeting will cover the types of errors related to IP that startup companies make and how to avoid them.

A question-and-answer session will follow the panel discussion, and the panelists will be available afterward for responses to individual questions.

(All times are USA Eastern time, webinars will not be recorded, except that ENET members can review a recording of this webinar after the meeting.)

More information:

This is a hybrid event. You may choose to participate in-person or online.

In-person Participation (check-in begins at 6:00 PM):
LOCATION: CIC, One Broadway, Cambridge, MA 02142 – a valid picture ID is required to enter the building!
TRANSPORTATION: Across the street from Kendall Square T station on the Red Line.
PARKING: Low flat rate parking available after 5pm.
REFRESHMENTS: Pizza or light sandwiches will be served.

Online Participation: Zoom links will be sent to all registrants after registration.

Cost and Reservation: This event is free for ENET members, $5 for CIC members and $10 for non-members. ENET members will also have the opportunity to view a recording of this webinar if you are unable to attend or wish to view it again. Click here to learn how to become a member.

To expedite sign-in for the event, we ask that everyone — members as well as non-members — pre-register. If you cannot pre-register, you are welcome to register in person at the door while seats are available.

Venue Sponsor

CIC Logo Inno Horizontal Orange

CIC believes in the entrepreneur. We recognize that invention propels innovation, density spurs collaboration, and a shared purpose drives a thriving community. CIC provides a home from which to work, allowing innovators to easily access resources and create substantive, positive global impact. Request to chat with a workspace expert about CIC’s flexible workspace offering, or try out a complimentary, one-time day of coworking.

Event Schedule

February 21, 2023
6:00 am ET
Registration
In-person Registration and Networking
7:00 pm ET
Introduction
ENET Chairperson's announcements
7:10 pm ET
eMinute Pitch
Up to 2 Startup pitches
7:25 pm ET
Expert Panel
Expert speakers on the night’s topic
8:10 pm ET
Q & A
Moderator and Audience Q & A with the speakers
8:30 pm ET
Networking
Panelists will be available afterward for responses to individual questions.

Speakers:

Vogler Nate

Nate S. Vogler

Associate at Morrison Foerster LLP

Nathan Vogler is an associate in Morrison Foerster Patent Group.  Nathan’s practice concentrates on patent prosecution, IP due diligence, IP counseling, IP portfolio management, and IP litigation support, including patent infringement and validity determinations.  He has handled matters in all stages of patent prosecution, drafting and prosecuting patents in various technology areas, including medical devices, polymer chemistry, composite materials, industrial processing, nanotechnology, catalysts, batteries, magnets, consumer electronics, and software.  In addition, Nathan has experience handling reexaminations, reissue applications, inter pares review proceedings, and supplemental examinations before the United States Patent and Trademark Office.

Nathan received his J.D. with high honors from The George Washington University Law School.  He received his B.S. in chemical engineering summa cum laude from Purdue University.

Fasse JPeter

Peter Fasse

Principal at Fish & Richardson P.C.

Peter’s practice emphasizes client counseling and patent prosecution in a wide variety of technologies, with an emphasis on healthcare, medical devices, and other biological and medical fields as well as various green technologies. Peter helps clients from startups to multinationals to develop competitive worldwide patent strategies and to establish solid and defensible patent portfolios. He performs competitive patent analyses, identifies third-party patent risks, and provides patentability and freedom to operate opinions. Peter also has experience in opposing and defending patents before the European Patent Office and in U.S. litigation and post-grant proceedings.

Peter has experience in various fields including medical therapeutics, diagnostics, devices, and imaging, microfluidic systems, liquid biopsy, nucleic acid sequence analysis systems and software, cell culturing and bioprocessing, molecular biology, complex biomedical systems, optics, machine tools, lasers, vaccines, nanoparticle and vector-based delivery of therapeutics, automated blood analysis systems, tissue engineering, biochips, and wind and solar power.

Gerety Todd

Todd Gerety

Partner, Gesmer Updegrove, LLP

Todd Gerety is a seasoned patent attorney with over 25 years of experience. Drawing on his background in software and electrical engineering, Todd advises clients in all aspects of intellectual property matters with a focus on patent portfolio development. He has particular experience in the areas of telecommunications, medical devices, and robotics. Clients also benefit from Todd’s experience as a software engineer in the telecommunications industry. He received his J.D. from Suffolk University Law School and his B.S. in electrical engineering from Tufts University. Outside the office, Todd enjoys spending time playing tennis with his wife and family.

Moderator & Organizers

powsner david

David J. Powsner

Davis Malm D’Agostine PC

Dave is an intellectual property and patent attorney, advising technology companies on a range of complex matters. His legal expertise, combined with a strong science background, physics degree from MIT years of and experience in computer software, enable him to understand, analyze and provide practical guidance on patent, copyright, trade secret, trademark, licensing and litigation matters. Dave represents companies with products in a wide variety of technology markets.

Dave is actively involved with the Licensing Executive Society of USA & Canada, where he serves in the volunteer role of Senior Vice President of Digital Content.  His prior roles with the organization include Senior Vice President of Meetings, Co-Chair of the 2020 Annual Meeting, Chairman of the High Technology Sector, and Co-Chair of the High Tech Sector Royalty-Rate Survey Committee.  Dave is the creator and producer of three podcasts series, The Tech Entrepreneur, Failure – The Podcast, and The Five-Minute Update (on Licensing), and he has hosted or co-hosted over 100 podcast episodes under those labels.  Dave is also active in the startup community, volunteering time and using his work experience to coach new businesses. Through his membership in the MIT Enterprise Forum and local angel investment groups, he has coached hundreds of startup companies as they prepare for early stages of growth, including through fund-raising and intellectual property acquisition and protection.

bob weber

Bob Weber

Managing Director, Patent Kinetics, LLC

Bob Weber is an intellectual property professional, inventor, serial entrepreneur, mentor, and management consultant. Since 2007 he has been Managing Director, Patent Kinetics, LLC, a company focused on Intellectual Capital Management with an emphasis on patents, patent strategy, and enforcement. Patent Kinetics helps organizations and individuals build and monetize valuable patent portfolios. Weber is also an inventor with 27 issued US patents and a number of foreign counterparts assigned to Intertrust Technologies where he served as SVP Business and Technology Strategy, 1996-1999. Weber has also been a Principal Consultant at Northeast Consulting Resources, Inc. At NCRI, his consulting practice focused on strategies for information creation, access and distribution; clients included Fortune 50 companies. Weber divides his time between Boston and Silicon Valley. He served on the Advisory Board of the Boston Entrepreneurs’ Network (ENET) at various times since 2004 and has co-organized and moderated ENET’s “Legal Issues for Entrepreneurs” annual meetings Weber has been a member of the Silicon Valley Chapter of the Licensing Executives Society since 2010 and has served on the chapter’s Board of Directors and Program Committee. His academic work focused on computerized text analytics for social science purposes.

Bill Byrnes

William Byrnes

Esq.

Bill is an attorney and senior executive with 25+ years of experience building value by commercializing information and technology. Bill’s focus involves a unique application of his legal and business management experience on the day‐to‐day management of all elements of the product, sales, and contract life cycles as the core of the business. The effect of this focus can convert expense into value driven to the bottom line with increased shareholder value as the results.

William Mansfield

William Mansfield

Atty & Patent Atty, MANSFIELD LAW ~Protect Your Passion~ Board & Secretary, Boston ENET

Attorney Mansfield is a patent attorney and is a lawyer in MA & NY; high bar exam scores allowed him to waive into the D.C. Circuit.  He won the CALI Award for perfect grades in an IP course, and he has passed the Fundamentals of Engineering Exam covering all types of engineering.  He assists clients with corporate and intellectual property law using trademarks, trade dress, copyrights, licensing, patents, trade secret protection, strategic partnerships, and succession planning. From 2004, he has worked on legal matters & he has counseled entrepreneurs/startups since 2009 thru Mansfield Law.  He has worked on patent prosecution, especially business method, business process, electrical, mechanical, telecommunications, and e-commerce patents.  He has filed for global IP protection and has a network of foreign IP professionals.

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