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MIP Africa Roadshow 2016 - Speakers

Wednesday April 6 2016, Convene Times Square, New York





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Speakers at the forum included:


Simon Brown


partner and chair of Trade Marks Department
Adams & Adams 

Simon Brown was born, bred and educated in Pretoria which, except for a stint running the Mauritius Office, has been his home.

He was admitted as an attorney of the High Court in 1997. For the past 18 years he has been a partner at Adams & Adams. At present, he is the head of the Trade Mark Prosecution and Recordal Department, as well as co-chairperson of the Trade Mark Department at Adams & Adams. Brown’s practice focuses largely on clearance investigations, filing and prosecution of trade mark cases and trade mark portfolio management throughout Africa and internationally.

As well as being a lecturer in International Trade Mark Law for SAIIPL (South African Institute of Intellectual Property Law), Brown is actively involved in a number of committees for both SAIIPL and INTA (International Trade Mark Association).

He is responsible for the development of the firms’ Africa practice and chairs the Africa Strategy Committee as well as the Africa IP Committee. Brown is a contributing author to the authoritative Adams & Adams Practical Guide to Intellectual Property in Africa, as well as the Adams & Adams Practitioner’s Guide to Intellectual Property Law.



Nicky Weimar


senior economist
Nedbank South Africa

Nicky Weimar is senior economist at Nedbank Group Economic Unit, a position she has held since 2000. Having received her Masters in Economics from the University of Stellenbosch in 1994, Weimar was soon advising government on economic procedures and policies in her capacity as an economist in the then Central Economic Advisory Service, which has since been integrated into the President's Office.

After government, her experiences in the banking, securities and brokering industries ensured her a broader knowledge of a wide range of fields within economics, including: sector analysis; fixed investment trends; and the relationship between real economic trends and developments within the financial markets. In her time at Nedbank, Weimar has focused most of her energies on trends in the overall economy, looking at cycles in the economic growth, inflation and interest rates. She regularly does talks all over South Africa to a variety of audiences like Business Forums, Property Groups, large Corporate firms, Government entities, Airlines, etc.



Jenny Pienaar


partner - Trade Mark Litigation
Adams & Adams

Jenny Pienaar is a senior partner in the Adams & Adams Trademark Department.  She graduated with a BA from the University of Stellenbosch in 1988 and an LLB from the University of Cape Town in 1991. She was admitted as an attorney in 1994, and qualified as a trademark practitioner in 2004.

Her areas of practice include general commercial litigation, trademark litigation, domain name registration and securing domains from cyber squatters, as well as litigation relating to copyright, passing-off, unlawful competition, close corporation and company name objections and related issue. Her expertise also incorporates advertising law and regulatory compliance issues.

Pienaar is a fellow of the South African Institute of Intellectual Property Law (SAIIPL), a member of the Business Women's Association (BWA), the Licensing Executive Society, the Law Society of the Northern Provinces and French/South African Chamber of Commerce and Industry (FSACCI). She is also a member of INTA and PTMG and, is the chairperson of the Marketing Committee of GALA (Global Advertising Lawyer’s Alliance).


Richard Parr


counsel
Merck

Richard Parr is counsel with Merck. After joining Merck, he provided patent support for thrombolytic and antithrombotic research conducted by MRL which resulted in commercialisation of a fibrinogen receptor antagonist. He later provided patent support for an antihypertensive product. He has conducted patent due diligence reviews for in-licensing candidates and acquisitions in the cardiovascular and oncology therapeutic areas. He currently provides patent support for oncology research and marketing activities, and represents Merck in several research collaborations.

During 2013-14 Parr was co-chair of Merck’s International Patent Practice Committee, with responsibility for patent law developments in Latin America, India, Southeast Asia, Australia, and New Zealand, and for issues relating to treaties including PCT, TRIPS, the Trans Pacific Partnership, and other free trade agreements. He has knowledge about international regulatory data protection, patent term extension provisions, pharmaceutical patent linkage, and compulsory licensing.

Prior to joining Merck, Parr was an associate with Morgan & Finnegan and Cooper & Dunham, both in New York. He received his law degree from Rutgers Law School - Newark, and a Bachelor of Science in Chemical Engineering from Rutgers College of Engineering.


Ashlin Perumall


senior associate - commercial law department
Adams & Adams

Ashlin Perumall is a senior associate in the corporate and commercial department. He specialises in corporate structuring and local and international transactions in public and private equity. Perumall serves clients from various fields (including local and multi-national businesses, banks and property developers) in a wide range of commercial matters. He provides legal support in South African and African company law, financial regulation, leveraged finance, structured equity transactions, exchange control and tax law (including transfer pricing). Perumall also has a special interest in information and communication technology law and data protection


Michelle Fleming


general counsel
Digium

Michelle Fleming is general counsel for Digium and its wholly owned subsidiary. Digium is a communications company in the VoIP industry headquartered in Alabama. Digium created and maintains Asterisk, the world’s most popular open source telephony software. Fleming’s focus on protecting intellectual property includes setting and managing Digium’s anti-counterfeiting strategy. She is also responsible for: managing all legal issues including negotiating contracts; managing the worldwide trademark portfolio; and handling compliance consistent with regulations promulgated by organizations such as the FCC, FTC, Department of Commerce, and Bureau of Industry and Security.

Fleming received her JD from Cumberland School of Law in 2004 and is admitted to practice in New York, Connecticut (revocably retired), and Alabama. She works in New York.


Nicky Garnett


partner and head of Africa Patents department
Adams & Adams

Nicky Garnett is the head of the Africa Patent Department at Adams & Adams in Pretoria, South Africa, a position she has held since 2008. She is originally from Zimbabwe and moved to South Africa in 2008. She obtained her law degree from the University of Natal (Pietermaritzburg) in 1997 and in 2008 she began working in a leading law firm in Zimbabwe specialising in Intellectual Property.

During the 10 years that Garnett worked in Zimbabwe, she established excellent working relations with the Zimbabwe and ARIPO IP Offices and obtained a good working knowledge of their IP systems. The bulk of her practice while still in Zimbabwe was the filing and prosecution of trademarks, patents and designs but she was also involved in trade mark and copyright litigation matters. In 2007 Garnett decided to move from Zimbabwe to South Africa and at the beginning of January 2008, she took up the position of head of the Africa Patent Department. She now runs a team of 14 people who deal with all incoming patent or design instructions from Adams & Adams foreign clients for filing in any African countries outside of South Africa.

Garnett is integrally involved in the operation of Adams & Adams Africa offices and travels regularly though out the continent.  In 2012 she co-authored a book on Intellectual Property in Africa which was a joint effort of the Adams & Adams Africa Team.



Andrew Hirsch


director general
International Intellectual Property Institute

Andrew Hirsch is a globally recognized intellectual property expert with over 25 years of diversified public, private, non-profit, and law firm experience.  His career has focused on improving the global intellectual property ecosystem and on fostering sustainable technology driven economic growth.

For the past fifteen years, Mr. Hirsch has worked as a C-suite leader, in-house counsel, and outside counsel for a wide range of patent based clean technology and IT based start-ups.   He also serves as Director General of the International Intellectual Property Institute and provides legal services to a select few clients where he is Of Counsel at the Paxton Law Group.

Prior to that, Mr. Hirsch worked for over a decade in Congress and the Executive Branch on policy, laws, and regulations related to the nexus of trade, technology, innovation, intellectual property, and commercialization. From 1993-2001, Mr. Hirsch also served at the U.S. Department of Commerce in a variety of senior business and intellectual property policy liaison positions and worked on these matters for Vice President Gore and Vice President Biden (during their service in the U.S. Senate).
Mr. Hirsch is admitted to practice law in the State of Maryland and the Commonwealth of Virginia. He holds the following degrees: J.D., The George Mason University School of Law, M.A., George Washington University, and B.A., Cornell University. 



Jac Marais


partner - commercial law department
Adams & Adams

Jac Marais specialises in competition law, commercial litigation, and general regulatory advice. He holds qualifications from the University of Stellenbosch, Wits and King’s College, London. He and his team represents local and international clients in numerous high profile matters and their experience spans various sectors. These include: defence; construction; health; local and municipal government; and tax. Marais presents annual lectures on competition law at the University of Pretoria and is a regular author and speaker on competition law and regulatory matters.

At present Jac is advising and representing: a JSE listed entity in an application for merger approval by the Competition Commission; a multinational corporation with the enquiry into the Special Defence Packages; South African National Accreditation Standards (SANAS) in disputes arising from various aspects arising from the SANAS Act; the South African Revenue Service in litigation arising from losses suffered as a result of a national cheque fraud syndicate; the Norwegian Government in an investigation into the structure and operation of funding in Sub-Saharan Africa; and a pharmaceutical company with a corporate restructure.



Danie Dohmen


partner - Patent litigation department
Adams & Adams

Danie Dohmen is a partner at Adams & Adams in the patent litigation section. He specialises in patent and design litigation, commercialisation and opinion work. Dohmen has been ranked in tier 1 for patent litigation in South Africa for a number of consecutive years.

He holds a BSc degree in physics and chemistry and an LLB degree. He is admitted and registered as an attorney of the South African High Court, a patent attorney and a notary public.

Dohmen represents multinational and national clients, and although his primary focus is in the pharmaceutical field, he acts on behalf of clients in a diversity of fields, including: agriculture; agro chemical; mining; manufacturing; transport; security; and safety. He further acts in multi-jurisdictional patent and design litigation in several African countries. 

Dohmen has litigated a number of cases to the South African Court of Appeal (SCA) and the Constitutional Court. Many of his matters are reported and are considered leading patent law cases. Hee has recently represented successful parties in the SCA and before the Constitutional Court in cases which set the current South African law on issues of: inventiveness; clarity; interim injunctions in patent infringements; contributory patent infringement; the role of public interest in interim injunctions on patents for life saving drugs; evidentiary requirements to prove patent infringement; and requirements for divisional patent applications. 

Dohmen also plays an active role in IP policy issues on a national and international level and has represented national and foreign manufacturing groups in both national and international meetings, workshops and seminars on IP policy.

He is a director of the Licensing Executives Society of South Africa, a member of the American Intellectual Property Law Association and a fellow of the South African Institute of Intellectual Property Law, where he sits as chairperson of its Patent and Design Law Committee. He is further a lecturer and examiner for the Patent Examination Board of South Africa.



Douglas Graham


CEO
Ideation

Douglas Graham is the CEO of Ideation, which is building an ERP for managing innovation in the enterprise and funding early stage innovation. In the past, he was managing director at KPMG and led an eight figure award winning consulting practice focused on cyber security, governance and compliance. He also worked in the structured global cybersecurity and risk practice for Deloitte.



Godfrey Budeli


partner - Trade Mark Litigation
Adams & Adams

Godfrey Budeli is a partner in Trade Mark Litigation Department with 8 years experience and is currently one of three partners heading up the Anti-Counterfeiting team. He holds LLB from the University of Pretoria and LLM from the University of Cape Town. His area of interest is civil and criminal litigation in relation to counterfeiting in South Africa and many sub-Sahara African countries.

Budeli assists a number of brand-holders on a continuous basis managing their customs recordal/renewal applications and advise them on several issues including importation and sale of grey goods, transhipments, importation of refurbished goods and compliance/non-compliance with the South African Bureau of Standards Rules and Regulations. He is involved in conducting regular Counterfeit Goods Act procedures and Product Identification Training/Seminars for Government enforcement agencies in South Africa. Budeli has also been involved in and continues to handle cross-border trade mark infringement and/or counterfeit goods litigation in many sub-Sahara African countries.



Witney Schneidman


senior international advisor for Africa
Covington & Burling

Witney Schneidman has nearly 40 years of experience working across Sub-Saharan Africa.Drawing on his experience in the State Department, the World Bank, think tanks and his own consulting practice, Schneidman, a non-lawyer, has advised energy, technology, consumer and health companies, among others, on projects in more than 30 African countries.

Schneidman provides strategic advice on the varied political, economic, social and regulatory issues that are critical to companies’ success in Africa. This includes issues related to Corporate Social Responsibility, compliance, market entry and risk mitigation. He played a leading role in the passage and recent reauthorisation of the African Growth and Opportunity Act and was a delegate to the Global Entrepreneurship Summit co-hosted by President Obama during his visit to Kenya.

Schneidman leads Covington’s Africa initiative and is a senior member of the firm’s Public Policy and Government Affairs Practice Group, the International Strategy Group and the International Trade and Finance Group.

Schneidman has written extensively on African economic and political issues and aired his views on CBS News, CNN, National Public Radio, the BBC and the South Africa Broadcasting Corporation, among other media outlets.


Kevin Curran



global IP counsel
Ascensia Diabetes Care

Kevin Curran is global IP counsel for Ascensia Diabetes Care, the business recently sold by Bayer to Panasonic Healthcare, a joint venture owned by private-equity group KKR and Panasonic Corporation. Since beginning his legal career in 1997 at Fish & Neave in NYC, Curran has handled a diverse assortment of issues, both foreign and domestic, split between private practice and working in-house.

Areas have included: IP prosecution, portfolio management, clearance, and litigation; client counseling; contracts; transactions; and compliance. Prior to working at Bayer, he was senior IP counsel at SAP, the world’s largest business application software provider, including three years at the SAP headquarters in Germany. Curran completed undergraduate Bachelor of Arts programmes at Northwestern University (Evanston, IL USA) in Mathematics, German, and Integrated Science. He later earned a Juris Doctor and a Master of Arts of Political Science at Loyola University Chicago. He also completed a year at the Ludwig-Maximilians-Universität in Munich, Germany, and a short-term fellowship through the University of Bonn. Curran is fluent in German and proficient French.  

Charles Macedo



partner
Amber Rothstein & Ebenstein

Charles Macedo, a physicist by training, uses his comprehensive patent experience to tackle the most important and complex developments affecting IP strategy today, including: subject matter eligibility under 35 U.S.C. § 101; divided infringement under § 271; and navigating PTAB and PTO proceedings. He has been counsel on amicus briefs to the Supreme Court in the influential subject matter eligibility cases decided in the past few years, including Alice, Mayo, Myriad, and Bilski.

Macedo is considered an authority on IP issues, and writes prolifically and lectures regularly as he tracks and analyses in real time the most important developments affecting IP strategy and litigation. He is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries.

Clients ranging from international banks, broker dealers and new business ventures call on Macedo to develop patent strategies, prepare patents, assert rights and defend against infringement claims.


Lucinda Longcroft



Head of New York Office
World Intellectual Property Organization

Lucinda Longcroft is head of the New York Office of the World Intellectual Property Organization (Wipo), headquartered in Geneva, Switzerland. An Australian national, Longcroft joined Wipo in 1998, where she served as deputy director in the Development Sector, and as a senior attorney in the Copyright and Electronic Commerce Divisions of WIPO. Her work focuses on the management and use of intellectual property for economic, social and cultural development.

In managing Wipo’s New York Office, she is responsible for Wipo’s liaison with the United Nations in New York, with the broader IP community in New York, and with the Washington-based institutions. Longcroft has contributed to the implementation of the Wipo Development Agenda, and has been involved in Wipo’s work with the United Nations Commission on International Trade Law (UNCITRAL) on a model law for secured transactions involving intellectual property, as well as the Wipo Internet Domain Name Processes and development of domain name dispute resolution rules and procedures.


Bonnie Nannenga-Combs



Director, biotech practice
Sterne Kessler Goldstein & Fox

Bonnie Nannenga-Combs is a director in the Biotechnology/Chemical Group of Sterne Kessler Goldstein & Fox. She counsels a diverse group of clients on the preparation, prosecution, and management of complex worldwide patent portfolios. She helps clients develop product exclusivity strategies in areas of biotechnology such as pharmaceuticals, therapeutic antibodies, vaccines, diagnostics, nucleic acid therapies, formulations, and biologics.

Nannenga-Combs is also experienced in IP due diligence investigations and freedom to operate studies, and she prepares patentability, validity, and non-infringement opinions. She is particularly skilled at identifying patent portfolio strengths and weaknesses.
Nannenga-Combs is active in the firm’s pro bono practice. She works with pro bono clients to prepare and prosecute patents that can be used to help advance economic, social, and cultural rights.


Fernando dos Santos



Director general
Africa Regional Intellectual Property Organization

Fernando dos Santos is a national of Mozambique. He holds a Master’s Degree on Intellectual Property from the University of London and is a PhD Candidate at the University of Witwatersrand in Johannesburg in South Africa.

Dos Santos was the first director general of the Mozambican Industrial Property Office. At present, he is the director general of the African Regional Intellectual Property Organization (ARIPO) and has been since January 2013.

Dos Santos was recently voted as one of the world’s 50 most influential people in intellectual property by Managing Intellectual Property magazine.




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