Why you should attend
As patents and other intellectual property become more and more valuable to companies, it is essential that general practitioners and business counselors have a firm grasp of the basic principles of patent law so they can better advise their clients. This program is designed with the non-patent practitioner in mind, and it will cover all types of patent issues that might arise in the context of every day practice and business management. The morning discussion of fundamental patent principles, including what is patentable and how to prosecute and protect patents, establishes an important foundation for the topics that follow throughout the afternoon. Patent opinions, patent licensing, and patent issues that arise in the context of transactions such as mergers and acquisitions will be covered. In addition, a broad overview of patent litigation, including coverage of recent case law, will be addressed. In-house counsel, general attorneys and business managers will learn to spot key patent issues that may face their clients and/or organizations and will learn what steps need to be taken next.
What you will learn
- What are the parts of a patent application and what makes something patentable?
- Learn about the lifecycle of a patent, from application-preparation through filing, prosecution, and issuance
- Examine the unique issues involved in patent infringement and litigation including claim construction, defenses and relevant timelines
- Explore IP issues that may arise in mergers and acquisitions transactions
- Gain practical tips for patent licensing scenarios
- What changes the America Invents Act has brought to patent law
Who should attend
This is a basic patent program to help in-house counsel whose responsibilities include managing patent portfolios, patent litigation and patent licensing, especially those of mid-size companies that don’t have full-time IP counsel and whose General Counsel must handle these issues. It will be attractive to corporate attorneys and business managers who need a basic overview of patent law for issue spotting in contexts such as board meetings, executive briefings, etc. It will be of interest to those general practitioners who encounter patents in their practices and litigators seeking to get into patent litigation. Non-attorneys seeking an introduction to patents would also benefit.
9:00 Introduction & Program Overview
Marta E. Gross
9:15 Patent Overview, Part 1
- The patent application and its various parts
- The patent life cycle: conception, preparation, filing, prosecution, and issuance
- Fees and timing issues
- How do patents relate to other types of IP?
Karen Mangasarian, Christopher M. Tobin
10:45 Networking Break
11:00 Patent Overview, Part 2
- What is patentable subject matter?
- How have recent Federal Circuit decisions impacted patent prosecution?
- PTO fee structures
- Foreign patent prosecution
Karen Mangasarian, Christopher M. Tobin
1:30 Patent Strategies and Transactions
- Types of patent opinions including patentability, freedom to operate, and clearance opinions
- Practical considerations - whether, when, and from whom an opinion should be obtained
- Licensing overview, structure of patent licenses, and cross-licenses
- Issues that may arise in M&A transactions
- Acquiring patents from distressed companies and companies in bankruptcy
Marta E. Gross, Sarah Solomon, Charles A. Weiss
3:15 Networking Break
3:30 Patent Litigation, Patent Infringement, and Case Law Roundup
- Who do you sue?
- Forum, venue, including the International Trade Commission
- Sequence, timing, and the costs of patent litigation
- Claim construction, infringement analysis, and available defenses
- Discovery and the use of experts
John M. Hintz, Eric Huang
New York City Seminar Location
PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
Due to high demand and limited inventory in NYC, we recommend reserving hotel rooms as early as possible.
The New York Hilton & Towers, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is N495741. Reservations on line at www.hilton.com and enter the same Client File # in the Corporate ID # field to access Practising Law Institute rates.
The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: firstname.lastname@example.org
PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.
Please check the CLE Calculator above each product description for CLE information specific to your state.
Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys. All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.
Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.
Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.