Why you should attend
As the America Invents Act becomes part of current practice of patent law, you may think it is not possible to gain an understanding of this complicated field of law in one day. You would be incorrect. Whether you are new to patent law or are trying to refresh your knowledge of this field, this program will cover the key points you need to get up to speed. In particular, this program will cover all types of patent issues that may 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 licensing, and patent issues that arise in the context of transactions such as mergers and acquisitions will be covered. In addition, why it is important to understand the patent landscape will be reviewed and how that understanding may lead to an assertion of your patent rights or a pre-emptive action against third party patents. A broad overview of patent litigation, including coverage of recent case law, will be addressed as well as actions in the International Trade Commission and U.S. Patent and Trademark Office. 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
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?
Jane T. Gunnison, 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
Jane T. Gunnison, Christopher M. Tobin
1:30 Analysis of the Patent Landscape; Asserting Your Rights and the New Face of Patent Litigation: District Courts, ITC, IPR, and PGR
- Analysis of the Patent Landscape; patentability, freedom to operate, invalidity, and infringement
- Determine whether and how to assert patent rights
- Overview of patent litigation: Sequence, timing and costs
- Unique facets of patent cases: Markman and damages
- International Trade Commission proceedings
- PTO proceedings: Inter partes review and post-grant review
Marta E. Gross, John M. Hintz, Eric Huang
3:00 Networking Break
3:15 Doing the Deal: M&A, Licensing and Other Patent Transactions
- Issues that may arise in M&A transactions
- Acquiring patents from distressed companies and companies in bankruptcy
- Licensing overview, structure of patent licenses, and cross-licenses
Sarah Solomon, Charles A. Weiss
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
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 0495741. You can also make reservations
online 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: email@example.comSheraton New York Times Square Hotel
, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online
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