In light of recent changes in PTAB practice under new USPTO Director John A. Squires, in-house teams are reassessing disclosure risk, IPR exposure, and long-term enforceability, particularly for manufacturing processes, algorithms, and data-driven know-how. This session focuses on how companies are making these calls in practice, and how patent strategy is directly shaping trade secret risk in later disputes.
- How PTAB institution trends, discretionary denial, and parallel-proceeding strategy are influencing decisions to rely more heavily on trade secrets.
- Where patent specifications, prosecution history, and expert positions have later been used to argue that information was disclosed and no longer secret.
- Managing the risk of over-disclosure in patent filings while preserving meaningful trade secret protection.
- When companies deliberately shift from patenting to trade secret protection over a product’s lifecycle, and what triggers that shift.
Erica LoRe
Damon Gupta
Damon Gupta is a Director, Patent Counsel at Spark Therapeutics, Inc., a leader in gene therapy and member of the Roche Group. With over a decade of experience in intellectual property (IP) law and a background in molecular biology, Damon advises biotechnology and pharmaceutical companies on patent strategy, IP transactions, and risk mitigation. At Spark, Damon leads efforts to protect proprietary assets, including trade secrets, manage IP disputes, and provides IP support to cross-functional teams, including R&D, manufacturing, and corporate transactions. Damon holds a J.D. from Chicago-Kent College of Law, an M.S. from Baylor College of Medicine, and a B.S. from The Ohio State University.
Shane O’Neill
Shane O’Neill trained and qualified as a competition lawyer at Freshfields Bruckhaus Deringer where he advised clients in the aerospace and aviation sectors on merger control and antitrust regulatory matters. Since moving in-house he has advised on a broad range of matters including IT outsourcing, IP licensing, data protection, IPO, cybersecurity, commercial negotiations with aerospace OEMS, corporate transactions, and IP strategy.
Currently, he is Assistant General Counsel at Norsk Titanium, a global leader in metal 3D printing which supplies components to the aerospace, defence, and industrial sectors. He is responsible for a number of corporate areas including driving the company’s IP strategy, creation of IP awareness, trade secret protection, IP portfolio management, IP risk reduction, IP collaboration and cybersecurity.
