Inside 4Q2013 2 ....Taking Charge of Legal Spending - The ACC Value Challenge 4 ....Internal Investigations from a Practical Perspective 5 .....ACC News 6 ....Past Event Photos 8 .....Five Tips for Preparing Effective Intellectual Property Assignments 9 ....Upcoming Events 10 ...Welcome New Members! 10 ..Board Members and Contacts FOCUS President’s Message Kevin Whyte, Carmeuse Lime & Stone

My term as President, which I have • We arranged a joint CLE/ Where have we fallen short? enjoyed immensely, has come to a close. networking event with the One area in which we !e ACC is a wonderful organization that Washington County Bar have not made progress is o"ers many resources and opportuni- Association. advocacy for certain posi- ties to in- house lawyers. I intend to stay • We established the use of tions in which the in-house involved and to take advantage of such LinkedIn to communicate bar has a special interest. resources and opportunities. with our membership. We ACC National is very active First, I would like to thank Barb Dudek, would hope that the use with respect to advocacy our Chapter Administrator. Barb’s experi- of this tool will increase as initiatives. I have not done a ence, attention to detail, dedication and members become increas- good job of supporting such creativity ensure that things get done ingly aware of the ease of e"orts. Certainly, this is an promptly and in a professional man- communicating by this medium. area in which we can improve. ner. Second, I would like to thank all of • We initiated a program to reward an As mentioned in an earlier Focus article, our o#cers and board members. Every individual member active in pro bono we appreciate any feedback that you may time that something needed to be done, e"orts by o"ering a monetary contribu- provide. !e annual survey o"ers a good volunteers from the Board stepped up to tion to the organization in which he or chance for you to give your opinions, but the plate. We have been fortunate for the she is involved. Given the high level of there is no need to wait. If you have any committed team of talented professionals commitment by many of our members opinions or ideas to o"er, let us know. leading our Chapter. to pro bono activities, participation Finally, I would like to thank all of you, Susan Apel will serve as the President was more limited than we expected. our members, especially those of you who in 2014 and I am sure that she will lead Nevertheless, I believe that this is a have participated in the various events the Chapter to new heights. She has put good idea that the Board may wish to and CLEs organized throughout the together a sterling slate of o#cers and pursue in the future. year. I hope that you will continue to stay directors for 2014. I know that the future • Our CLE programs continue to be well involved. See you around. of the Chapter is in great hands! attended and the quality of presenta- It is always good to re$ect on accomplish- tions remains high. ments and also to consider what could • Our membership continues to grow at a have been done better. Our Board led slow but steady rate. We started the year many positive advances in 2013. Some with 404 members and as of September examples include: 30th, the membership totaled 420. • Several board members organized a • Our %nancial position remains strong, CLE with the Pirates’ General Counsel which allows us to, among other things, followed by a Pirates’ game in one of the make signi%cant contributions to stadium boxes. !e feedback regarding worthwhile organizations. this event was very positive. Taking Charge of Legal Spending - The ACC Value Challenge By Catherine Moynihan, Director of Legal Management Services, ACC

What an interesting and exciting time ship in 2011, based entirely on value- to be working as in-house counsel. !e based fee arrangements. !e agreement balance of power has shi&ed. Corporate sets a base price combined with a per- counsel are taking the reins %rmly in formance bonus, while making adjust- hand, proactively managing legal spending ments for in-sourcing over time; and the legal function to drive better value VAL UE CHAMPION • Target and Nilan Johnson Lewis have for clients. As the ACC Value Challenge parsed employment legal work into four reaches its 5-year anniversary, we could components and applied a slightly dif- not be more excited about these changes. ferent retainer model to each and, along ACC launched the Value Challenge Convergence and Conversion to with prevention measures, achieved (AVC) in September 2008 in response Value-Based Fees 20% savings; to the disproportionate growth in legal • Bank of America reduced it approved • Similarly, RBC Capital Markets and costs relative to other business expenses. law %rms from hundreds down to a Morgan Lewis have teamed up to yield Worse, companies were smarting over “litigation roundtable” of 30 and moved savings of 35% by tailoring fee struc- the extreme unpredictability of legal over 80% of its litigation to %xed fees; tures to the speci%c matter or portfolio; spending. The ACC Value Challenge • United Technologies has 70% of its out- is committed to the proposition that • Tyco International works with only one side spending on value-based fees, and law firms and law departments can %rm, Shook Hardy & Bacon, on all of is on the march to 100%; improve efficiency through better its US litigation. Together, they have cut relationship, management, and pricing • O#ce Depot reached a tipping point of product liability cases in half, new case practices, and still reduce costs (while over 50% of outside spend on value- %lings by 65%, and case cycle time by maintaining law firm profitability). based fees, tailoring the fee type to the 40% since 2004; practice area (employment, securi- The Value Challenge is not just a call • Sherwin Williams demonstrated how ties, real estate, even patent troll joint to action. To help law department and the use of a single %rm, Gallagher defense); law firm leaders control costs, the ACC Sharp, to coordinate designated types provides resources, educational oppor- • P%zer, GlaxoSmithKline and Home of matters nationwide can result in tunities and, importantly, shares what’s Depot are at or on the march to 100% of signi%cant savings (15%) and improved working in the value movement. The outside spending on value-based fees, outcomes, particularly when both inside AVC res ource librar y is chock full of and the list goes on… and outside counsel undergo techni- examples of effective “value practices” cal product training in order to more employed by legal departments and Moving the Right Work to the Right e"ectively represent the client. law firms, as well as guides to imple- Resource – Downshi!ing Low Value menting value-based fees, outside Work and Upshi!ing Strategic Work Multi-faceted Value Initiatives – Pulling counsel management, project manage- • Nike and British Telecom have imple- Lots of Value Levers ment, strategic staffing, knowledge mented legal work intake portals, managed • Marsh & McLennan and Medtronic management and more. And ACC’s by an LPO and a law %rm respectively, that have handled huge growth in demand Legal Service Management workshops, use playbooks to allocate the work. Lower for their legal services, while holding offered twice a year, provide hands on value, repetitive work is outsourced and steady on in-house counsel sta#ng and training in using key tools and tech- in-house counsel get to handle the more decreasing outside legal spending by niques. We welcome both internal and complex, strategically important work; leveraging technology, converging and external counsel to take advantage of converting to value-based fees – great • When Mondelez was spinning o" Kra& the AVC resource library and partici- models of focused leadership guided by Foods, it worked with Axiom to address pate in the workshops. benchmarking and metrics; the 20,000 patents, 40,000 contracts Leading Value Practices – The and 80,000 trademarks, supported by • NetApp has combined implement- ACC Value Champions playbooks – all for a %xed fee. ing new technology with legal process Since 2012, ACC has been recognizing and project management, outsourcing, Taking Client/Firm Collaboration To and strong outside counsel manage- the inspiring accomplishments of legal the Next Level – Preventative Lawyering department leaders implementing value ment practices – value-based fees and • Healthcare Insurance Reciprocal of initiatives. !e ACC Value Champions quarterly business reviews – to speed up Canada (HIROC) and Borden Ladner demonstrate the myriad ways that legal legal services cost-e"ectively. Gervais negotiated a six-year partner- department leaders can drive value. continued on page 3

2 Western Pennsylvania Chapter FOCUS 4Q13 continued from page 2

Smaller Departments Driving Value - external counsel. Theme: “Working For more information about the ACC In Lots of Ways and in Lots of Countries together, how can we improve the value Value Challenge, contact ACC’s Director • United Retirement Plan Consultants of legal services?” Some suggested of Legal Management Services, Catherine (US) collaborated creatively with its law questions to discuss: J Moynihan at [email protected]. %rm, Porter Wright, to create a tool to • How can we improve trust and improve overcome two of most common barriers our relationship, on both sides? “The ACC Value Challenge to %xed fees – lack of data and risk of provides online resources, variability in project scope; • How can we assure an adequate $ow skill-building workshops and of work so that outside lawyers under- • Lucchini (Italy) has bene%ted greatly stand the client better and can be more benchmarking information, all from its GC’s leadership on vendor e#cient in what they do? of which the RBC team have management and use of technology- enabled decision-making and process • How can we get junior lawyers bet- utilized. It’s about sharing what management to cut cycle time by 65% ter trained, priced at more reasonable works, and I am proud that and spending by 40% – best practices levels, practicing law more on the front members of my team have that other functions in the company line, and less likely to leave? now become leaders of the have adopted; • How can we better budget and manage ACC Value Challenge – having • China State Construction Engineering costs and sta#ng? been named 2012 ACC Value Corporation (Dubai) insourced all • How can we evaluate progress and Champions and serving as contract work, gained e#ciency with performance? technology and employed new law %rm faculty for ACC’s Legal Service management practices – %xed fees with • How can we create a culture of continu- Management workshops and success bonuses – a switch that has ous improvement, on both sides? on the ACC Value Challenge enhanced recoveries by 60 percent and At the end of the meeting, agree to try Steering Committee. Join us saved 50 percent on external legal fees out some of the ideas, even if on a small in 2012. in taking on the ACC Value scale, and to meet regularly to assess Seeking more ACC Value these e"orts. Over time, you will settle on Challenge!” Champions to honor in 2014. the most e!ective approaches to reduce - David Allgood, Executive Vice Presi- costs, improve spend predictability, and If you have implemented value-focused dent & General Counsel, Royal Bank achieve better legal outcomes; and along management practices to cut spending, of Canada and Chair, Association of the way you will see that they also yield improve predictability and/or achieve Corporate Counsel Board of Directors higher client and career satisfaction. better legal outcomes, share your success story. We are seeking examples that range from simple, discrete measures that got good results to broad programs – and from all sizes of law departments glob- ally. Go to acc.com/valuechampions to complete the simple nomination form by February 7, 2014.

Now Accepting Nominations for 2014 ACC Value Champions! Submit by February 7, 2014

Taking on the ACC Value Challenge – A Good Place to Start is to “Meet.Talk.Act.” Ready to start your own value program? A good way to start building value-based client/firm relationships is to, very simply, engage in conversa- Some of the 2013 ACC Value Champions with ACC CEO Veta Richardson (L to R): tions with law firms about specific ways Richard Stock of Catalyst Consulting; Mike Caplan and Mel Schwarz of Marsh to improve value - then take action. McLennan Companies; Connie Brenton of NetApp; Michael Boyce of Health Insurance Host an informal lunch with your key Reciprocal of Canada; Veta Richardson; John Morris of Borden Ladner Gervais 3 Internal Investigations from a Practical Perspective The Importance of Conducting an Internal Investigation and the Factors Your Organization Should Consider By Charles A. De Monaco and Jana C. Volante1, Fox Rothschild LLP

The Benefits of Conducting an should be designed to meet the criteria in requesting whether a written report Internal Investigation set forth in Chapter 8 of the United States should be prepared and submitted. Sentencing Guidelines. When suspicions of wrongdoing or illegal If a written report is requested and pre- activity have arisen in your organization, an !e results of an internal investigation pared, it should address all critical facts internal investigation should be considered will allow an organization to consider related to the investigation. !e written to minimize damage to the organization’s whether to self-report criminal wrongdo- report should identify the scope of the reputation and to limit the organization’s ing to the government. Voluntary disclo- inquiry, summarize the steps taken to exposure to criminal, civil and regulatory sure can help the organization minimize gather the evidence, summarize the facts enforcement and related action. the risk of prosecution or, if the organiza- discovered during the investigation, pro- tion is prosecuted, can help in diminish- vide a legal analysis, and suggest recom- An internal investigation should be ing the severity of penalties imposed on mendations. considered when there is a credible the organization, including the size of the indication that a law or an important Initial Steps that Your Organization %ne and the imposition of organizational organizational policy has been violated. Should Take in Conducting an probation. An organization without an !is information may come from an Internal Investigation e"ective corporate compliance program internal audit, a hot-line or from an will likely be placed on probation with !e organization should consider engag- employee or agent of the organization. a condition to implement an e"ective ing experienced and independent outside !e goal of an internal investigation is to compliance program designed to prevent counsel to conduct a full and unbiased obtain accurate and reliable information and detect violations of law. !is condi- investigation of the alleged misconduct. about an allegation and evaluate whether tion will remain under the oversight of !e scope of the internal investiga- to self-report any illegal activities to the the court for the duration of probation tion should be reasonably calculated government. Otherwise, the corporation and a monitor may be appointed by the to address the alleged misconduct. !e risks investigation by a state or federal law court to oversee the implementation of organization and its counsel should enforcement agency. If that occurs, the the compliance plan. discuss and agree upon the scope of the corporation loses control and has far less investigation and steps to be taken prior opportunity to mitigate the damage. Although the initial audience for an to initiating the internal investigation. internal investigation is the corporation’s If counsel concludes, as a result of the general counsel and Board of Directors, One of the %rst steps in conducting an internal investigation, that the allega- if a voluntary disclosure is made, the gov- internal investigation is to secure and pre- tion is credible, then the organization ernment will also receive the information serve all potentially relevant documents. must take prompt and e"ective action to gathered in the internal investigation. !e best practice is to promptly and imme- address the violation and prevent a recur- However, even if a voluntary disclosure is diately advise in writing all appropriate rence of the conduct. One way to take being considered, the work of an attorney management and employees to preserve such corrective action and to show the in conducting an internal investigation all potentially relevant hard and electronic government that the organization is tak- should be done in such a way to preserve documents, which is commonly known ing the misconduct seriously, rectifying the attorney-client privilege and work as a “hold.” Any organizational document it, and trying to prevent such misconduct product doctrine. retention policy (better described as an from happening again in the future, is automatic document deletion policy – a through the enhancement, or implemen- Depending upon the organization’s objec- systematic plan for the destruction of tation of, an e"ective corporate compli- tives in conducting the internal investiga- paper and/or electronic %les) should be ance program. A corporate compliance tion, it is o&en wise for an organization’s halted or suspended immediately. program should be focused on the areas Audit Committee or Board of Directors of risk to the organization and include to receive an oral report regarding the !e next step is to interview relevant wit- policies, standards, and procedures results of the internal investigation from nesses pursuant to an established pro- designed to prevent and detect violations counsel prior to deciding whether a tocol. In conducting witness interviews, of law by employees and agents of the written report is desirable. Many factors it is advisable to have an attorney and organization. !e compliance program may in$uence an organization’s decision one other person, who may also be an attorney, paralegal or investigator, present ______for the interview. Notes should be taken 1Partner Charles A. De Monaco and associate Jana C. Volante are litigators with the Pittsburgh o#ce of Fox Rothschild LLP. Mr. De Monaco concentrates his practice in securities litigation and director and o#cer liability, and a memorandum should be prepared corporate compliance and governance, environmental law, health care law, commercial litigation and white collar following each interview. criminal defense. Ms. Volante concentrates her practice on white-collar criminal defense as well as commercial litigation. Contact them at [email protected] and [email protected], respectively. continued on page 5

4 Western Pennsylvania Chapter FOCUS 4Q13 continued from page 4

!e combination of witness interviews what steps should be implemented to pre- rienced in-house and outside counsel and document review, coupled with an vent and detect further non-compliance. should work together in providing advice analysis of any prior regulatory history, to the organization as to how best to tai- It is important to note that not all internal will assist counsel in determining whether lor an internal inquiry that is best suited investigations are alike and that a cookie- a violation of policy or law took place and for the speci%c allegation at issue. cutter approach should be avoided. Expe- ACC News

Meet ACC’s New Compliance Management program (March 4–5, Business Education for In-house Portal Atlanta, GA or May 6–7, St Louis, MO) to Counsel Check out ACC’s new Compliance Portal develop skills in structuring value-based Gain a deep understanding of business and put this great resource to use. With %rm/client relationships through business management with focused programs focused resource bundles, improved school style case study. Space is limited, from ACC and Boston University School navigation, and a new search function, and this program will sell out. Questions? of Management. Specially designed for the Compliance Portal is the go-to place Contact Catherine J. Moynihan at in-house counsel and taught by faculty with for all your compliance needs. Resource [email protected] or +1 202.293.4103 extensive experience teaching lawyers, these bundles cover popular topics such as x398. Secure your spot today at www.acc. programs will help you master essential global anti-corruption, export controls, com/legalservicemanagement. MBA disciplines, enhance project/risk antitrust, and many more. Learn more at Compliance & Ethics Training is management skills, and stand out in today’s www.acc.com/compliance. Back! competitive legal market. For dates and registration, visit www.acc.com/businessedu. Take the Pain Out of Contracting Mark your calendar for ACC’s Compliance With the new ACC Contracts Portal, & Ethics Training (April 7–8, 2014, Austin, Save Time, Money and Effort controlling your contract process from TX) — a two-day program packed full with with ACC Alliance Partners beginning to end has never been easier. compliance essentials. !is is the program We’ve done the work for you by partner- Use the ACC Contracts Portal to dra& and you should attend if you need to make your ing with legal service providers to bring benchmark contracts, prepare yourself organization’s compliance program more you exclusive o"ers. For example: to enter into tough contract negotiations, robust and successful, or want to better and re%ne your processes with practical defend your organization against a myriad • Modus, our newest partner, is a full- resources focused on e"ective contract of internal and external compliance risks. service eDiscovery Data Management management and best practices. Learn For more information, visit www.acc.com/ce. Firm that helps organizations gain con- more at www.acc.com/contracts. Jumpstart Your Career with trol over and better predict Discovery Be Recognized As An ACC Value Corporate Counsel University costs. Modus o"ers ACC members a complimentary Discovery Readiness Champion !e Corporate Counsel University® (June Evaluation that includes an interactive Have you implemented value-based 1–3, Minneapolis, MN) is developed workshop to provide organizations pricing, or any of the related management exclusively for attorneys who are new with a clear analysis of their ability to practices advocated as part of ACC’s to in-house or who are looking for ways e"ectively manage Discovery. Value Challenge? If so, you could be sharpen their basic in-house practice skills. selected and recognized as an ACC Value !is program introduces the fundamentals • Copyright Clearance Center pro- Champion! ACC wants to celebrate of in-house practice and covers the vides smart solutions that simplify the your accomplishments and share your di"erent roles and responsibilities access and licensing of content, allow- management tactics, enabling others to expected of an in-house counsel. For more ing businesses to legally %nd and share model your successes and drive value information, visit ccu.acc.com. copyrighted materials including books, for clients. Tell us your story and get the Save the Date: ACC’s 2014 journals, newspapers, magazines, mov- recognition you deserve. Nominations Annual Meeting ies, television shows, blogs and more. are due by February 7, 2014. To submit ACC members are eligible to receive Join in-house counsel from all over the your story, or for more information, visit exclusive discounts. world at ACC’s 2014 Annual Meeting www.acc.com/valuechampions. (October 28–31, New Orleans, LA). As the Find out more about all of the Alliance Legal Service Management world’s largest gathering of the in-house partners at www.acc.com/alliance. Workshops counsel community, this meeting o"ers over 100 CLE/CPD programs and dynamic Ready to take your management skills to networking opportunities. For more the next level and thrive in the evolving information and early bird registration, legal marketplace? Join law department visit am.acc.com. and law %rm leaders at the Legal Service

5 Past Event Photos

Bryan Stroh (r), VP and General Counsel for the Pittsburgh Pirates, gave ACC WPA members a glimpse of what it is like behind the scenes of a pennant race on September 18, 2013. After the program, ACC members went over to the World Series Suite to cheer on the Bucs against the Padres. Special thanks to ACC WPA Board member, Scott Seewald (l), for setting up a great event!

September 24, 2013 - Insurance Coverage For Cyber Risks and Realities was the topic for speakers John Scordo and Roberta Anderson of K&L Gates.

The Role of Negotiation In The Art of War: How To Win Without Fighting on October 1, 2013. Pictured from left: Maria Greco Danaher of Ogletree Deakins and Dianna Karg of FedEx Ground.

6 Western Pennsylvania Chapter FOCUS 4Q13 In a world of traditional thinking and conventional wisdom, where can you find a legal partner imaginative enough to anticipate your next challenge?

White-collar criminal defense, internal investigations, commercial litigation, corporate transactions and compliance, immigration, intellectual property and employee benefits attorneys right here in Pittsburgh, backed by nearly 600 attorneys coast to coast.

William L. Stang Pittsburgh Office Managing Partner On August 27, 2013, Joe Moran and Amy 412.394.5522 | [email protected] Joseph Coles of Duane Morris spoke with A Pennsylvania Limited Liability Partnership | Attorney Advertising ACC WPA members about ethics issues for in-house counsel.

October 22, 2013 - Henry Sneath and Kelly Williams of Picadio Sneath Miller & Norton and Richard Rose of Calgon Carbon presented Legal And Strategic Considerations Regarding Representation of Current and Former Employees in Litigation. Pictured from left: H. Sneath, R. Rose, K. Williams and ACC WPA Chapter President Kevin Whyte.

7 Five Tips for Preparing Effective Intellectual Property Assignments By Brienne S. Terril1, Fox Rothschild LLP

Intellectual property assignment agree- Tip 2 - Specify the Scope of the Convey- In light of this, parties to an assignment ments are commonly used to transfer own- ance - An intellectual property assign- should cautiously cra& and carefully ership of intellectual property, registered ment may not only grant ownership review conveyance language in order to or unregistered, from one party to another. rights in the transferred items of intellec- guarantee a contemporaneous transfer of Whether an assignment is executed as part tual property, but also to rights relating to the relevant intellectual property. of an employment or consulting arrange- the transferred intellectual property. For Tip 4 - Record the Assignment - Assign- ment, a sale or acquisition, or another example, an assignment may specify that ments involving the transfer of registered transaction, the following %ve tips will help the assignee is the owner of any patents intellectual property are o&en recorded ensure that the assignment documents the that ultimately issue from a transferred with the appropriate patent, trademark or parties’ intent regarding the nature of the patent application. Similarly, an assign- copyright o#ce in the governing jurisdic- assignment, and provides adequate notice ment may expressly provide that rights in tion. Recording an assignment provides of the transfer to third parties. and to continuations, continuations-in- the public with legal notice of the transfer. part, divisional applications, and foreign Tip 1 - Identify the IP Being Conveyed - In addition, in the United States, an counterpart applications are transferred An assignment should clearly identify the assignment that is not recorded within along with a patent application. Assign- intellectual property being conveyed. !e three months of execution is void against ments of trademarks or copyrights should premise is simple enough, yet due to a vari- any subsequent purchaser for valuable address whether renewal rights are con- ety of factors, parties o&en neglect to suf- consideration who is without notice of veyed as part of the assignment. %ciently identify the intellectual property the assignment. Accordingly, it is in an being conveyed. !is can lead to ambigu- It is important to expressly document the assignee’s best interests to ensure that an ity as to the parties’ intent and can cause scope of the rights being transferred pur- assignment is recorded in the U.S. within headaches for assignees who subsequently suant to an assignment. Failure to do so three months from execution in order transfer the acquired intellectual property. may result in an assignee obtaining fewer to prevent a subsequent purchaser from rights than may be intended or expected. acquiring any rights to the intellectual Clearly identifying transferred intellectual property. property is especially important for reg- Tip 3 - Use the Correct Conveyance istered items of intellectual property such Language - To properly e"ect transfer of Assignments may also be recorded in as patents, patent applications, trademark intellectual property through an assign- countries outside of the U.S. for appli- registrations and copyright registrations. ment, the parties should pay particular cable intellectual property, which may To avoid confusion, an assignment should attention to the conveyance language provide an assignee with certain bene%ts. identify the transferred intellectual that is used. Courts have consistently For example, in some countries, patent property with as much detail as possible. found that assignments that include infringement damages begin to accrue For example, an assignment conveying present tense conveyance language, such from the date that an assignment is actu- a patent should identify the patent by at as “hereby assigns,” e"ect contempora- ally recorded in the relevant patent o#ce. least the serial or patent number. If this neous transfer of the underlying intel- As such, an assignee should consider information is unknown or unavailable, lectual property. However, courts have recording an assignment soon a&er exe- then an item should be identi%ed by as also consistently found that agreements cution in order to maximize the amount much information as is known, such as by that include future tense conveyance of infringement damages that may be title, inventors, %ling date, issue date and language, such as “shall assign”, “agrees available to the assignee in an infringe- applicable country. to assign” and “will assign” are not suf- ment action. However, many countries %cient to e"ect contemporaneous transfer outside of the United States consider Similarly, a trademark assignment should of intellectual property. Instead, these assignment of intellectual property to be include, for example, the serial number, agreements are o&en considered to be a taxable transfer. Such countries o&en registration number, country of registration, mere agreements to assign that require charge a Value Added Tax (VAT) on %ling date, registration date, and classes of execution of a subsequent agreement in the estimated value of the intellectual corresponding goods or services. Including order to perfect transfer of the intellec- property. !erefore, an assignee may wish as much identifying information as possible tual property that was the subject of the to evaluate the value of the intellectual will lessen any ambiguity that might exist original agreement. property and the possible tax implications as to what items of intellectual property are before deciding to record an assignment actually being conveyed. outside of the United States. ______1Brienne S. Terril, Esq., is an intellectual property attorney with the Pittsburgh o#ce of Fox Rothschild LLP, and helps represent some of the nation’s largest technology companies. She focuses her practice on patent prosecution and transactional matters across a range of technology areas, including computer security, encryption and mobile device technologies. Contact her at [email protected]. continued on page 9

8 Western Pennsylvania Chapter FOCUS 4Q13 continued from page 8

Tip 5 - Know the Requirements to Record Prior to Executing an Assign- ment - Identifying the jurisdictions in which an assignment will be recorded and understanding the recordation requirements of those jurisdictions prior to executing an assignment will help simplify the recordation process. Many jurisdictions have requirements that must be met in order for an assign- ment to be recorded. For example, many countries outside of the U.S. require an assignment be signed by both the assignor and the assignee. In addition, certain countries require that IS YOUR OUTSIDE CORPORATE COUNSEL the address of the parties be expressly THE RIGHT FIT? provided in the assignment and that an original copy of an assignment be A law fi rm that is the right fi t understands every aspect of your business and recorded. Knowledge of these require- is fl exible and responsive to your needs. With a team that includes former entrepreneurs, CEOs and general counsel, we bring high value insights, experience ments will help streamline the recor- and cost-effective strategies in M&A, corporate and commercial transactions, dation process and avoid the need to real estate and general counsel functions. correct an assignment post-execution. Let the corporate attorneys at Babst Calland fi t your needs and unlock the right Carefully cra&ing assignment convey- opportunities for your business – and for your optimal performance. ance language and understanding the requirements and obligations of record- ing such assignments will help ensure that the transfer process progresses smoothly and that the parties’ intent and PENNSYLVANIA WEST VIRGINIA OHIO NEW JERSEY expectations are achieved and appropri-

Creditors’ Rights Employment ately documented. Business Services Construction & Insolvency & Labor

Energy & Natural Resources Environmental Land Use Litigation

Upcoming Events

February 4 – Changes in Patent Law March 18 – Ethical Issues for In-House May 6 – Early Resolution of Claims Based on the America Invests Act Counsel Using Settlement Counsel Sponsored by Ference & Associates Sponsored by Fox Rothschild LLP Sponsored by Schnader Harrison Segal & Lewis LLP February 18 – "e Perks & Perils of April 1 – Your Tender Has Been Denied, Social Media in the Workplace Now What? May 20 – Labor Crisis – "e NLRB Sponsored by Jackson Lewis Sponsored by Dickie, McCamey & Targets Nonunion and Union Employ- Chilcote ees, Signi#cantly Expanding its Reach During a Tumultuous Time March 4 – Understanding and Nego- tiating Key Provisions in Commercial April 10 – Environmental Law 102: Lat- Sponsored by Littler Mendelson, P.C. Contracts est Developments, Practice Pointers and Sponsored by Buchanan Ingersoll & Strategy Tips for Regulatory Compli- June 3 – Corporate Fraud: Understand- Rooney, P.C. ance & Due Diligence ing What Puts Your Organization at Sponsored by Eckert Seamans Risk and How to Prevent It Sponsored by Forensic Valuation Litiga- tion LLC 9 Welcome New Members!

Julie Braughler David Hacker Charles Sandel Vocollect United States Steel Corporation American Eagle Outfitters Inc Elizabeth Brokaw Monica Hanslovan Janet Serafin Education Management Corporation PPG Industries, Inc. Eaton Corporation Erin Creahan Julie Heinrich Karen Skarupski Duquesne Light Company NOVA Chemicals, Inc. Erie Insurance Group James Cunningham Paul Kletzly Amanda Skov Shaft Drillers International Crown Castle USA, Inc. GNC Corporation Peter Davis Lisa Meyer George Stewart The Williams Companies, Inc. Duquesne Light Company United States Steel Corporation Nicole DeMao David Mosse Melissa Struzzi United States Steel Corporation Dick’s Sporting Goods, Inc. Englesberg Forge Group North America, LLC Michael Duff Eric Mungai United States Steel Corporation Avanti Promotionals Elizabeth Ziegler Dick’s Sporting Goods Lesley Gannon Allison O’Donovan Duquesne Light Company Education Management Corporation Daniel Gantt Ashley O’Neill Dynamics Inc. The Williams Companies, Inc. Jeanne Gibson Robert Ritter FS-Elliott Co., LLC Crown Castle USA, Inc.

Board Members and Contacts

President VP-Membership Board of Directors Susan Apel Marcy Smorey-Giger Joseph Gette Ellwood Group, Inc. 412.402.8912 PPG Industries, Inc. 724.752.3680 [email protected] [email protected] Conniel Malek VP-Program Alcoa Inc. President Elect Richard Heiser Lucas Paglia Susan Shin Connelly FedEx Ground American Eagle Outfitters Inc. United States Steel Corporation 412.262.7349 412.433.2926 [email protected] Vinita Sinha [email protected] Highmark Inc. VP-Pro Bono Secretary Scott Seewald Linda F. Schneider Karen Brownlee Alcoa Inc. GlaxoSmithKline Confluence Technologies, Inc. 412.553.4974 412.697.4259 [email protected] Mary Tortorice kbrownlee@confluence.com Dick’s Sporting Goods, Inc. Immediate Past President Treasurer & Advocacy Chair Chapter Administrator M. Cristina Sharp Kevin J. Whyte Barbara Dudek United States Steel Corporation Carmeuse Lime & Stone 412.366.2686 412.433.2864 412.995.5520 [email protected] [email protected] [email protected] VP-Communications Colleen Zak Hess ANSYS 724.514.3034 [email protected]

10 Western Pennsylvania Chapter FOCUS 4Q13 10