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    Course Information

4040  How to Structure Patents for Maximum Value

Course Length    96  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.
>>  1.75  credits    CA
>>  2.00  credits    CO  WV

    About the Instructor(s)


  Warren Bovee
Johnson Wax Professional



  Thomas Isaacson
AT&T

Mr. Isaacson is a senior attorney at AT&T focusing on client counseling, licensing and patent prosecution for the speech and signal processing labs at AT&T. Mr. Isaacson received his J.D. from Brigham Young University and holds a bachelor’s degree in electrical engineering from the University of Utah. He is a member of the Utah and District of Columbia bars.

  Michael Lee
Kessler, Goldstein, & Fox, PLLC

Mr. Lee is a partner at Kessler, Goldstein, & Fox, PLLC. He has an M.S. in electrical engineering and received his J.D. from Georgetown University. Mr. Lee has developed and implemented comprehensive worldwide IP strategies for a number of clients and has substantial experience expediting the preparation and prosecution of complex patent applications and application families.

  Ira Levy
Goodwin Procter

Mr. Levy is a partner in Goodwin Procter’s Litigation Department. He has a diverse intellectual property practice which includes matters relating to patents, copyrights, and trademarks. Mr. Levy has a B.S. from Union College and received his J.D. from Brooklyn Law School. Mr. Levy is admitted to the New York and Connecticut bars.

  Robert Sterne
Sterne, Kessler, Goldstein, & Fox, PLLC

Mr. Sterne is a founding director of Sterne, Kessler, Goldstein, & Fox, PLLC, one of the largest IP specialty firms in Washington, D.C. Mr. Sterne has written and spoken extensively on software and business method patents since the early 1980’s.

He was the lead attorney for IBM in the landmark Federal Circuit lawsuit of in re Beauregard. Mr. Sterne holds a B.S.E.E. from Tufts University. He received his J.D. from the University of Maryland. Additionally, Mr. Sterne has done graduate patent and trade regulation studies at the National Law Center of George Washington University Law School.

  William Wells
Kenyon and Kenyon

Mr. Wells is a partner of Kenyon and Kenyon. He has a J.D. from the University of Virginia and BS in mechanical engineering from Virginia Polytechnic Institute. Mr. Wells is a registered patent attorney admitted to the bars of New York, D.C., and Virginia. Additionally, Mr. Wells is a member of various district bars including the Federal Circuit and ITC. Mr. Wells has been responsible for the patent, trademark, and copyright portfolios of a number of major U.S. companies, and has helped them in establishing a proprietary position in both the U.S. and overseas.

    Outline + Synopsis

Outline Synopsis
How to Structure Patents for Maximum Value
    I. Introduction
    II. Determining Patents to Be Pursued
        A. Choosing a Patent Portfolio
        B. Due Diligence
        C. Patents for Your Strategy
        D. Knowing the Marketplace
        E. Finding Revenue
        F. Additional Considerations
        G. Knowing the Business and Prior Art
        H. Questions and Answers
    III. Structuring Patent Claims to Meet Market Needs
        A. The Importance of Claim Drafting
        B. Internet Focus
        C. Drafting for Nodes
        D. Claim Examples
            1. Netword v. Centraal
            2. Internet Dating Patent
        E. Q and A Period
            1. Questions and Answers
            2. Additional Questions and Answers
    IV. Taking Advantage of Business Method Patents
        A. Introduction
        B. Business Method Patents
        C. Downturn Characteristics
        D. Processing Patent Applications
        E. Making an Application Special
        F. Festo
            1. Doctrine of Equivalents
            2. Proposals for Dealing with Festo
        G. The Patent Office
        H. Questions and Answers
            1. Responses to Questions
            2. Venture Capitalists
    V. Utilizing the AIPA Rules to Increase Value
        A. Practice Tips and Strategies
        B. Third Party Issues
        C. Publication of Applications
        D. Filing Claims as a Strategy
        E. Provisional Patent Rights
        F. Maximizing the Life of a Patent
        G. Additional Best Practices
    AfterWordsSM


A panel of experienced patent attorneys in association with the AIPLA speak on the topic of structuring patents for maximum value. Specific areas covered include: determining the types of patents to be pursued, structuring claims to meet market needs, taking advantage of business method patents, and utilizing the AIPA rules to increase value.


    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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4040  How to Structure Patents for Maximum Value

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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