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    Course Information

8680  Overcoming Intellectual Property Asset Value Challenges

Course Length    86  minutes
Course Price    $ 119.00

Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.

    Accreditation Information


Click on jurisdiction below for more details.
>>  1.25  credits    CA
>>  1.50  credits    CO  WV

    About the Instructor(s)


  Joseph Daniele
Acorn Technologies, Inc.

Dr. Joseph Daniele joined Acorn Technologies, Inc. in June 2001 as chief operating officer. An expert in intellectual property and technology commercialization, he has led research and development efforts and completed more than 350 IP arrangements over the years.

Previously, Dr. Daniele served as senior vice president of intellectual property and technology commercialization at SAIC, a $6 billion San Diego-based company. At SAIC, he was responsible for establishing the technology commercialization function and for generating significant revenue and equity through mining and commercializing the company’s patent and know-how portfolio.

Before joining SAIC in 1998, Dr. Daniele held senior positions at Xerox Corporation in IP commercialization as well as product development, corporate strategy and new ventures. There, he established and headed Xerox’s intellectual capital business unit and corporate office for management of intellectual property. Dr. Daniele’s teams were responsible for management, licensing and commercialization of Xerox’s portfolio of more than 8,000 patents and associated know-how.

Dr. Daniele holds an M.B.A. from the University of Rochester, and a BSEE and Ph.D. in physics of solids from the Massachusetts Institute of Technology.

  John Pegram
Fish & Richardson P.C.

John B. Pegram is senior counsel in Fish & Richardson’s New York office. He specializes in patent matters of all types. Mr. Pegram has successfully litigated cases in state and federal courts, and before the U.S. International Trade Commission in Washington, D.C.

Before joining Fish & Richardson, Mr. Pegram was a partner and an associate with Davis Hoxie Faithfull & Hapgood LLP in New York City, from 1966 to 1995, where he focused on patent and trademark matters.

Mr. Pegram is a frequent author and lecturer on patent, trademark, and federal court practice topics. A representative sample of the technical subjects of matters he has handled include: antibiotics; automotive components and systems; bar code reading and processing; cameras and lens systems; cathode ray tubes; centrifuges; coin and material testing; computer disk drives and controllers; computer logic; data compression; diagnostic kits; electronic displays and display systems; fabric and fiber technologies; fiber optics; filtration systems; footwear; impact printers; inkjet printers; lighting devices; magnetic and optical recording; medical implants and instruments; microprocessor control systems; optical disc technology; orthopedic devices; photoconductive printers; photocopiers; pollution control systems; PTFE products; pumps; semiconductor devices and manufacturing; television broadcasting and receiving equipment; thyristors; and vending machines and systems.

Mr. Pegram received his B.A. from Columbia University in Physics in 1960 and his LL.B. from New York University in 1965. He is admitted to the bar in New York and in numerous federal trial and appellate courts. He is also registered to practice in patent matters before the U.S. Patent and Trademark Office.

  Graham Wood
Appleby Spurling Hunter

Graham Wood is an associate and member of the Telecommunications Technology & Intellectual Property Team within the Corporate and Commercial Practice Group of Appleby Spurling Hunter, in Bermuda. He practices in the area of general corporate law, specializing in intellectual property law. He has drafted specifications for a fully-automated online IP application software package; assisted clients with the drafting of patent specifications for business method patent applications in the U.S.; drafted IT contracts; advised on IP protection and restructuring; and has written numerous legal articles on IP and IT.

Mr. Wood graduated in 1989 from Manchester Polytechnic in Manchester, England, where he studied for an LL.B. (Hons.). He studied for his Law Society Finals exams at Chester and passed these in 1990. He completed his articles with Vaudrey Osborne & Mellor in Manchester and was qualified to practice law in 1992. He was called to the Bermuda Bar in 2000.



    Outline + Synopsis

Outline Synopsis
Overcoming Intellectual Property Asset Value Challenges: Problems, Processes and Proactive Management
    I. U.S. Patent and Trademark Office
        A. Crisis in the USPTO
        B. 2002 Plan for USPTO
        C. 2003 Plan for USPTO
        D. Examination and Search
        E. Five Search Tracks
        F. Deferred Examination
        G. Proposed Fees
        H. Cost of Patent Asset Management (1)
        I. Cost of Patent Asset Management (2)
        J. International Harmonization
    II. Extracting Value from Intellectual Property
        A. How to Extract Value
        B. Acorn Technologies
        C. Stages of Intellectual Asset Management
        D. Patents vs. Know-How
        E. Context of the Asset
        F. Grouping Patents
        G. Portfolio Analysis
        H. Implementing the Analysis
        I. Products, Not Patents
    III. Intellectual Property Outsourcing
        A. Overview
        B. Intellectual Property in Global Companies
        C. Internal Intellectual Property Audit
        D. Benefits of Intellectual Property Transfer
        E. Transfer Pricing Issues
        F. Global Intellectual Property Management
        G. Summation
    AfterWordsSM


A panel of seasoned intellectual property experts covers topics related to IP asset value, including process changes at the U.S. Patent and Trademark Office, a model for extracting value from IP, and issues surrounding IP outsourcing.


    Content Provided By

 

The American Intellectual Property Law Association (AIPLA) is a 16,000-member, national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property. Members represent both owners and users of intellectual property.

AIPLA was formed in 1897 in order to maintain a high standard of professional ethics, to aid in the improvements in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

To qualify for membership, applicants must be members in good standing of the bar of a court of record of the United States or any state. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries to be considered for membership, or be registered to practice with the Patent and/or Trademark Office of their country of citizenship. AIPLA also has student memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools. Approximately 70% of the active members are in private practice, 30% in corporate practice, with the remainder in the government or academia.

AIPLA holds three regularly scheduled conferences a year, Mid-Winter, Spring and Fall, at which the association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA holds many stand-alone seminars on specialized areas of intellectual property law at varying times of the year in locations around the United States. The association also produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published online three times a year), and CD-ROMs and tapes which include papers or speeches presented by speakers at the meetings. The AIPLA also publishes the Report of the Economic Survey biennially.

Furthermore, the AIPLA is actively involved in shaping U.S. intellectual property policy through its work on legislation and federal regulations affecting intellectual property cases in the U.S. courts. Internationally, the AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents, regularly participates in meetings of the World Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.




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8680  Overcoming Intellectual Property Asset Value Challenges

Course Price     $ 119.00

course is not for sale

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Volume discounts and subscriptions are available; for more information, contact Cognistar Sales.

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