Patent Law Practice Center

Check out PLI’s Summer Schedule of Patent Law Events!

There is no better sign that summer has arrived than the recent heat wave blanketing the U.S. While making summer plans of barbecues and vacations, don’t forget that there are a handful of great patent law CLE programs being hosted by PLI all summer long. From introductory patent law basics to the complexities of the AIA’s implementation, there is a seminar available for patent law practitioners from across the spectrum.

Understanding Patent Law 2012: June 29, 2012 –  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.

(SF) Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing: July 11 – 13, 2012 – This program is directed to patent attorneys, litigation attorneys and patent agents with or without a Patent Office registration number, or little patent experience. It will focus on teaching the basics of claim drafting, patent application preparation and prosecution, as well as a review of recent developments in the law. A litigator’s perspective is also presented to show how drafting and prosecution can influence the development, and often the outcome, of subsequent patent litigation. The clinics offer a unique supplement to the kind of hands-on mentoring that senior attorneys are hard-pressed to provide to less-experienced attorneys and agents.

Patent Bar Review 2012: Boston, July 11-15, 2012; Chicago, August 7-11, 2012 – In clear, concise, right-to-the-point language, this information-packed course leads you through the intricacies – and around the traps – of the Patent Bar Exam. You’ll get the hard facts, test-taking tips, sample questions and answers, and intense practice exams that mirror what you’re going to face when you sit down to take the real thing. Our PatWare software almost exactly predicted the current format of the Exam by many years. PatWare has now been expanded, updated and Web-connected to play an even more critical and informative role in your preparation.

Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing: New York, July 19-20, 2012; San Francisco, August 20-21, 2012 – In this advanced two-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, you will receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls. Guidance will be provided on the America Invents Act and its implementation by the Patent and Trademark Office, including the new post-grant review and inter partes review systems. Course material will include sample problems and model solutions.

(NY) Prior Art, Obviousness, and the America Invents Act in 2012: July 23, 2012 – This program will allow you to obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and explore the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences

The market for patents is hotter than it has ever been, particularly in technology fields for smartphones and Internet searching. On June 26, 2012, PLI is hosting a one hour briefing discussing the recent multi-billion dollar patent portfolio transactions and how the size of these transactions requires them to be presented to and cleared by regulators in the U.S. and abroad to make sure competition won’t be harmed.

In addition, many of the affected patents have been asserted in litigation already, and others are bound to be soon.  That will bring further antitrust scrutiny, in all likelihood including counterclaims that the new owners’ assertion of the patents violates the antitrust laws.

The one hour briefing is entitled, “Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences,” and features Charles S. Crompton, of Latham & Watkins LLP, and Ronald S. Laurie, Managing Director & Principal, Inflexion Point Strategy, LLC.

The panelists will discuss the forces driving the current strategic patent acquisition market, market developments that can be expected, how a potential market participant can prepare for antitrust scrutiny, and the possible approaches taken by the courts and regulators.

Register for “Buying Patents by the Pound: Today’s Patent-Acquisition Boom and Tomorrow’s Antitrust Consequences,” today!

Register Now for “Prior Art, Obviousness, and the America Invents Act in 2012”

Patent reform has arrived: what will be its impact on those touchstones of patentability, prior art and obviousness?  102 was already a complicated concept for patent practitioners, having undergone evolving interpretations in the PTO and CAFC.  How will the AIA now complicate matters further?  How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is truly enabled?

On June 4, 2012, PLI is hosting a seminar entitled, “Prior Art, Obviousness, and the America Invents Act in 2012.” This program will allow you to obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and explore the statutory revisions.  Meanwhile, obviousness, the most common reason any application is rejected or patent held invalid, is changing as a result of KSR (already 5 years old). Explore 103 from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSR pigeonhole!

The program is geared to patent lawyers who have some familiarity with existing 35 USC Sections 102/103 and regularly work with the statute in either litigation or patent prosecution. The course will advance the knowledge of all attendees from their respective starting points and provide new insights into the statute, recent amendments, and case law. Seminar attendance includes course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review.

Don’t hesitate! Register for Prior Art, Obviousness, and the America Invents Act in 2012 here.

Caraco v. Novo Nordisk: Supreme Court Alters the Landscape of Hatch-Waxman Litigation

On Monday, May 7th, PLI will be hosting a One Hour Briefing entitled, “Caraco v. Novo Nordisk: Supreme Court Alters the Landscape of Hatch-Waxman Litigation by Adopting Expansive Interpretation of Counterclaims Provision.“  This briefing will be conducted by Elaine Herrmann Blais and Robert D. Carroll, partners in the law firm Goodwin Procter LLP. The U.S. Supreme Court’s decision in Caraco Pharmaceutical Laboratories Ltd. v. Novo Nordisk A/S, clarified the circumstances in which generic drug companies can challenge the scope of the “use codes” for the patents that branded drug companies list in the FDA’s “Orange Book.” (more…)

Patent & Technology Licensing with Joseph Yang

Licensing transactions are becoming more complex than ever. At PLI’s Advanced Licensing Agreements 2012 seminar last week, Joseph Yang, Founding Partner of PatentEsque Law Group, LLP and Co-chair of the seminar, lead the panel entitled, “Patent & Technology Licensing”. He discussed the most common mistakes that occur when licensing patents, and shared personal tips on how to avoid making the mistakes that could gravely cost you later.

Technology vs. Intellectual Property

Patent licensing and technology licensing are very different. A patent is a legal right to stop someone from utilizing technology covered by the patent. Often, when someone takes a patent license, they don’t even need your technology.  So the motivation for taking a patent license is for the licensee to be able to utilize its own (infringing) technology without being sued. In contrast, when someone wants a technology license,  it usually doesn’t have its own technology, and needs access to yours. Typically, the technology licensee doesn’t even care if you have a patent. Understanding these differences is key to structuring a license to cover what you mean to gives (but not more). When patents and technology are co-mingled in a contract without the intention to give away both, it could cause big problems. Tips: Be careful to define “Technology” and “Patents” separately in a contract, rather than commingling them. 

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