Courses

  • Erik Chmelar PH.D., Senior Associate, DilworthIP

    Valuing Standard Essential Patents

    About the Course: This unique webinar thoroughly explains the formation, structure and functions of standard-essential patents. What is even more unique about this program is that a variety of methodologies and case studies for valuing standard-essential patents are presented. If you don’t know the answers to questions such as these, you really should listen to this webinar: How can FRAND licensing terms be deconstructed? How have courts determined acceptable royalty stacking arrangements? How do SEP licensing models account for the contribution of a variety of contributed patents? Floors and caps for average selling prices? Royalty rate schedules and fixed per-unit royalties? How does the “top-down” method for determining FRAND royalty rates differ from the “bottom-up” method? Why are there discrepancies in the number of an innovator’s standard essential patents (the numerator)? Why are there discrepancies with the total number of SEPs covering the standard (the denominator)? What are the steps, established by Huawei v. ZTE, for triggering injunctions? Are individual patent filings or patent families counted as individual standard essential patents? Why is it so expensive to determine the essentiality of standard essential patents? What criteria do patents have to meet—in terms of essentiality, elements, claims, specifications, coherency and being practiced—in order to comply with a standard? What are the obligations of members of standard setting organizations? What role does the “honor system” play in declaring and determining essentiality? What are the differences between standard-essential patents, cross licensing and patent pools? What are the differences between “hold-up” and “hold-out” negotiating gambits? Course Leaders: Erik Chmelar PH.D., Senior Associate, DilworthIP Erik Chmelar works at the intersection of technology, business, and law to develop practical intellectual property strategies that achieve meaningful results for his clients. He takes a comprehensive approach to his clients’ needs, leveraging over 20 years of industry experience as an engineer, research scientist, project manager, entrepreneur, professor, and patent attorney. Erik spent more than a decade at leading Silicon Valley corporations advancing the state-of-the-art in high-speed SerDes PHY receivers and VLSI-circuit testing methods. He later applied his expertise to the medical device industry to research and develop smart medical devices and advanced surgical robotics. In parallel, Erik also founded several startups, both in the high-tech semiconductor industry as well as the low-tech consumer products industry. Erik writes and prosecutes patents from several critical perspectives. As an experienced technologist, he distills complex inventions down to their fundamental elements. As a successful entrepreneur and corporate business leader, he uses technology roadmaps to inform drafting strategies for patent claims. Finally, as an experienced expert witness for both offensive and defensive litigation, he knows how to write strong patents to withstand scrutiny in court. Whether his clients are developing new technologies, defending against competitors, or asserting patents against infringers, Erik tenaciously helps his clients create, protect, and use their intellectual property to the fullest. Course Length: Approx. 1.5 hours
    by ERIK V. CHMELAR
    0 Lessons
  • Managing Intellectual Property in Brazil

    About the Course: This session provides a comprehensive overview of the legal framework that governs intellectual property in Brazil. Key insights are imparted with respect to the recordation, granting process, protections of, and maintenance obligations associated with patents, trademarks, franchises, copyrights, domain names and corporate names in Brazil. If you are seeking intellectual property protection in Brazil, and don’t know the answers to questions such as these, you really should listen to this webinar: What are the limitations on tax deductibility on royalty payments in Brazil? What is the status of business methods patents in Brazil? What are some issues that could trigger the imposition of compulsory licensing in Brazil? What recourse do patent-holders have? What are the legal requirements for transferring royalties into and out of Brazil? What is not patentable in Brazil? What are the recordation requirements of licensing agreements in Brazil? What is the term of IP protection for software in Brazil? What are the costs of protecting various embodiments of intellectual property–patents, trademarks, copyrights, etc.–in Brazil? How long can industrial designs be protected in Brazil? At what point are patent applications published in Brazil? What is the lifespan of trademarks in Brazil? What ‘moral rights’ do copyright owners enjoy in Brazil? What is the process of registering a trade name in Brazil? What are the requirements to register commercial names in Brazil? Course Leader: Kris Williamson, Associate, Advocacia Pietro Ariboni Mr. Williamson studied Sociology in Leicester in England where he received a BA (Hons.) Degree, going on to obtain an LLB Degree with the University of London which led to his qualifying as a Barrister (Middle Temple) before the Bar of England and Wales in 1993. He moved to Brazil in 1995 with his Brazilian wife and first son, where he has remained ever since. Kris began working in the area of Intellectual Property in 1996 with Daniel Advogados in Rio de Janeiro, becoming a registered trademark agent before the PTO in Brazil in 1999 and receiving a Post Graduate Qualification in Intellectual Property in 2000 from the Fundacao Getulio Vargas. Following qualification before the Brazilian Bar in 2005 he became a Partner and then went on to be associated with the firm of Advocacia Pietro Ariboni. His legal practice centers around foreign clients (but does not exclude national clients) seeking assistance in Brazil for Patent, Trademark, Copyright, Industrial Design, Domain Name and Software, prosecution, enforcement and protection. It also includes Contracts in the areas of Licensing, Distribution, Franchising, Transfer of Technology and Non-Disclosure Agreements, among others.
    by David Wanetick
    0 Lessons
  • Articulating the Value of Intellectual Property

    About the Course: Investor Relations professionals are tasked with revealing the investment worthiness of their companies. For many companies, their most valuable assets reside in the form of intellectual property such as patents, trade secrets, trademarks and copyrights. The conundrum is that many IR professionals are not fluent in intellectual property vernacular. The consequence of not being able to dialog with investors relative to your company’s intellectual property is that the valuation of your company could be discounted. This session is designed to provide investor relations professionals with a primer on articulating the value of their firms’ intellectual assets. This session is designed for investment relations professionals who do not have backgrounds in intellectual property. Among the issues to be introduced during the discussion are: The Value of Patents: Portfolio Premiums Provenance Analysis Chain of Title Analysis Citation Analysis Prosecution History Infringement Detection Analysis Opposition Analysis Analysis of Technical Review Encumbrance Analysis Patent Examiner Analysis Patent Lawyer Analysis The Value of Trade Secrets: Intersection of Non-Compete Agreements Trade Secret Check List The Value of Trademarks: Trademark Versatility Market Share Acceleration International Brand Awareness Distinctiveness Separability Keyman Risk Generic Usage Risk Cultural Sensitivity Nostalgic Value Retail Visibility Apportionment Issues Secured Interests The Value of Copyrights: Catalog Size Provenance Potential for Future Productions Potential for Embedding in New Media Bonus: All participants will receive a complimentary copy of Business Model Validation. This book is an ideal resource for investor relations professionals as it discusses many ground-breaking aspects of articulating companies’ business models. About the Course Leader: David is the CEO of Patent Fairness Opinions and is internationally recognized for his expertise in valuing intangible assets such as patents, trade secrets and trademarks. Clients include companies ranging from start-ups to Fortune 100 companies, technology transfer offices, incubators, venture capital firms and private equity players. David is the author of four books—the most recent of which is entitled Business Model Validation—as well as dozens of articles. David developed the Certified Emerging Company Analyst and Certified Patent Valuation Analyst designations, both offered through the Business Development Academy. David has delivered related lectures all over the United States, Canada, The United Kingdom, The Netherlands, Belgium, Germany, Spain, Denmark, Dubai, China, Thailand, Singapore, Kuwait, Malaysia, Hong Kong, India and Israel.
    by David Wanetick
    0 Lessons
  • ANDA Litigation and The America Invents Act

    About the Course: This session is critical for understanding how The America Invents Act will impact ANDA Litigation. This course begins with a thorough review of provisions relating to Abbreviated New Drug Applications. Topics illuminated include restoration of patent term; requirements for filing ANDA applications (e.g. in terms of active ingredients and bioequivalency); and, Paragraph IV certifications. The seminar continues by providing insight as to how aspects of the AIA will affect ANDA. These discussion points include inter-partes review; post-grant review; supplemental examination; derivation proceedings; defenses; and, patent prosecution issues. The program concludes by delving into an analysis of recent litigation that intersects with the AIA and ANDA. The following are among the issues discussed during this webinar: What are the incentives for filing for ANDA? How will interferences by impacted by the AIA? Does the AIA raise or lower the bar for the issue of obviousness? How can potential obvious challenges be drafted around? How does the AIA affect prior use defenses? What is the status of the best mode requirement under the AIA? What should you know about the intersection of prophetic experiment and the written description requirement? What are the standards for pursuing post-grant review? What role does lead compound analysis play in ANDA and patent challenges under the AIA? What are the fee schedules like in terms of filing for inter-partes review and supplemental examinations? The following are among the recent cases that are reviewed in detail: Pfizer v. Apotex Otsuka Pharma v. Sandoz University of Rochester v. Pfizer Ariad v. Eli Lilly Caraco Pharma Labs., Ltd v. Novo Nordisk A/S Course Leader: Robert D. Katz, Partner, Eaton Van Winkle Robert D. Katz received his BA degree in chemistry from Columbia University and his JD degree from Case Western Reserve University, where he was an Editor of the Law Review. He is admitted to the New York and Illinois State Bars; the US District Courts for the Southern and Eastern Districts of New York and the Northern District of Illinois (Trial Bar) and the US Courts of Appeals for the Second, Fifth, Seventh, Ninth and Federal Circuits. He is a registered patent attorney. Mr. Katz is a member of the American Intellectual Property Law Association and the New York Intellectual Property Law Association. He has lectured on intellectual property law at Stern Graduate School of Business at New York University and Columbia University School of Business. His practice involves biotech, nanotech, advanced materials, chemical, and pharmaceutical patent solicitation and litigation, trademark, unfair competition and copyright litigation and counseling. He was recently inducted into the prestigious Conner Inn of Court in New York City.
    by David Wanetick
    0 Lessons
  • Inter Partes Review: Patent Litigation Strategy After the AIA

    About the Course: The America Invents Act replaces reexamination with inter partes review. This seminar provides strategic insights into managing the intersection of inter partes review and patent litigation in the post AIA world. Inter partes review may benefit patent holders in terms of estoppel and ability to submit comments to the United States Patent and Trademark Office prior to the initiation of inter partes review. However, patent holders may face less settlement leverage, higher risk of patent invalidity, and higher risk of stay of litigation in light of inter partes review. Timelines for filing inter partes review as well as charts comparing discovery and stays under inter partes review and litigation are provided. If you don’t know the answers to questions such as those below you really should listen to this webinar: Under the AIA’s inter partes review, who bears the burden of proof for demonstrating unpatentability? Under which sections of the Patent Act can challenges be brought to inter partes review? What are the timelines for filing petitions for inter partes review? What are the fees? What are the criteria for granting petitions for inter partes review? To what extent do Federal Rules of Evidence apply to inter partes review? How does the filing of Declaratory Judgment affect rights to pursue inter partes review? When is estoppel triggered in the context of inter partes review? How do discovery and Markman hearings in the context of inter partes review compare to traditional litigation? How do stays work with regard to inter partes review? How can failed patent challenges in inter partes review lead to a greater likelihood of the determination of willful infringement? To what extent do intervening rights exist for new claims incorporated into patents after inter partes review? Course Leader: Steven J. Rizzi, Partner, Foley & Lardner LLP Steven Rizzi focuses his practice on patent litigation and counseling. He has represented clients in numerous patent litigations involving electrical, mechanical and computer-related disciplines, with a particular emphasis on matters involving the Internet, telecommunications and television-related technologies. Mr. Rizzi has experience in all aspects of patent litigation, including primary responsibility in patent litigations for numerous major corporations. Mr. Rizzi has litigated cases covering a wide array of products and services in different industries. His experience includes cases involving semiconductor packaging, machining techniques for aircraft engine components, wireless telephony, interactive television, television/Internet convergence, on-line games, satellite television, optical disk storage technology and packaging designs, electronic program guides, sports equipment, fiber optic communications devices and financial products.
    by David Wanetick
    0 Lessons
  • Evaluating Patent Examiners

    About the Course: Understanding the prosecutorial rigor that law firms and patent examiners apply to their preparation and review of patents is critical to understanding the likelihood of a patent granting as well forecasting the prosecution timeline. So too is the seniority of the examiner; trends in prosecution in the particular art unit; prevailing incentive systems relative to patent examiners; and, the history of applicants’ success in challenging appeals. This session provides a thorough demonstration of the PatentCore database. Viewers will learn how to conduct searches relative to examiners, art units, law firms and by application numbers. Searches can also be filtered according to granted patents, abandoned applications as well as granted and abandoned patents. Among the metrics revealed during this webinar are: Percentage of cases with a formal restriction requirement Percentage of applications with at least one request for continued examination before patent issuance Average amount of time between filing date and patent issuance Average number of office actions between filing date and patent issuance Percentage of applications with at least one final office action before patent issuance Percent of applications where applicant filed notice of appeal before patent issuance Percentage of appealed applications where examiner filed appeal answer brief before patent issuance Other issues raised during this webinar include: How do examiner incentives skew examiner performance data? How do examiner performance stats vary depending on the seniority and status of the examiner? When are the best times of the year to seek issuance of patents? To what extent can a patent applicant “examiner shop”? How easily can bios of examiners be obtained? How does fast-tracking of patent applications impact examiner data? How do the budgets of law firm clients impact statistics relating to law firm prosecutorial success? Course Leaders: Christopher L. Holt, Westman, Chaplin & Kelly Christopher L. Holt is a registered patent attorney at the law firm of Westman, Chaplin & Kelly. Chris is a co-founder of PatentCore. Chris has extensive experience preparing and prosecuting U.S. and foreign patents in the electrical and mechanical fields, as well as for computer hardware and software inventions. Chris also specializes in preparing and prosecuting U.S. and foreign trademark applications, and enforcing trademark rights. He received his law degree from the University of Kansas School of Law and holds an undergraduate degree in physics from Southwestern College (Winfield, Kansas). Chris is licensed to practice law in both Minnesota and Kansas.
    by David Wanetick
    0 Lessons
  • Conducting Patent Analysis with Pantros IP

    About the Course: This webinar provides a step-by-step approach to conducing patent searches. Options for conducing specific patent searches with Pantros IP include: Semantic search Guided search Advanced search Claims search Patent number searches This session demonstrates how to filter patent search results based on factors such as relevancy and claims analysis. Viewers learn how to import and manipulate data–such as some 20 analytical factors unique to Pantros– in excel spreadsheets. This program demonstrates how to view backward and forward citation analysis as well as the number of patent classes associated with such patents. Viewers will see graphical representations of potential licensees. The program also explains how groups of patents can be researched and compared to competing groups of patents. Bonus: Registrants to this webinar will receive five white papers that explain best practices for conducting patent searches with Pantros IP as well as a guide to the metrics that constitute Pantros’ Patent Factor Reports. Course Leader: Megan Scroggins, Operations Manager, Pantros IP Megan drives daily operations for Pantros IP, a leading enterprise software company with a worldwide reach. She facilitates timely resolutions for customer inquiries and IT problems. Megan is Administrator for internal systems access. She conducts extensive data translation and processing for patent analytics.
    by David Wanetick
    0 Lessons
  • How Researchers Can Better Influence Corporate Results

    About the Course: I believe innovation is the most powerful force for change in the world.— Bill Gates Understanding how to reap maximum performance from researchers is critical to achieving corporate success. There is tremendous leverage in researchers’ efforts: Approximately 10% of a company’s revenue is directed to Research and Development. According to Booz Allen Hamilton, only 15% of R&D expenses are directed to research. Thus, investments representing less than 2% of a company’s revenue–to a large extent–determine a company’s future performance. Companies must understand how to task, motivate, and incentivize their researchers. The most successful organizations must create cultures of innovation and engender behavioral shifts that will usher in a sustainable stream of innovation. The following are among the issues discussed during this session: What are the root causes of innovation fatigue and how can they be remedied? What are the most powerful innovation inhibitors? What are some of the most powerful innovation enablers? What are the core tenets of collaborative innovation? What is the importance of innovation roadmaps? How can you define areas of focus for strategic intent? How can your organization leverage its core competencies to achieve such intent? How can companies foster a culture of innovation? What are the key personal skills and behavioral characteristics that should reside within your research department? How can researchers be best incentivized? What are some of the best practices for filtering ideas? Why is it import to group ideas? What is the Gatorade mindset? What is the One Man Relay Race mindset? How do you measure results from launching a campaign to boost organizational innovation? What should management do when licensing counterparts request that its researchers sign NDAs? Course Leaders: Cheryl Perkins, Founder & CEO, Innovationedge In 2006 Business Week magazine chose Cheryl as one of the Top 25 Champions of Innovation in the world. She was also named as a top executive driving vision within the consumer goods industry (Visionaries 2006) by Consumer Goods Technology magazine. With over 20 years’ experience directing growth and innovation, Cheryl most recently served as the Senior Vice President and Chief Innovation Officer for Kimberly-Clark. She ran the company’s innovation and enterprise growth organizations, including research and development, engineering, design, new business, global strategic alliances, environment, safety and regulatory affairs, and oversaw innovation processes, systems and tools. She has ten U.S. Patents and several more pending. Patrick Clusman, Chief Operating Officer & Director of Innovation Capabilities Development, Innovationedge Pat is an accomplished professional with over 28 years of experience directing and managing teams and leading successful large scale programs and projects. He has a broad background in information technology coupled with exceptional collaboration and facilitation skills. He possesses an extraordinary combination of business, technical and interpersonal skills and is especially accomplished at building effective working relationships with clients and staff at all levels in the organization. He is a champion for innovation processes and capabilities, organization-wide knowledge sharing and collaboration. Prior to joining Innovationedge, Pat spent 26 years in various leadership and management roles at Kimberly-Clark and most recently was the Director, Enterprise Innovation. Pat directed, managed and led project teams that developed and deployed a standardized global personal computing infrastructure, an innovation management framework and portfolio management capabilities. Pat also defined, planned and directed several large-scale Innovation showcases and conference events.
    by David Wanetick
    0 Lessons
  • Patent Arbitration

    About the Course: Patent arbitration is a popular form of alternative dispute resolution. Arbitration is substantially less expensive than patent litigation and resolution is achieved more expeditiously. Parties to disputes have more discretion in choosing qualified arbitrators than in selecting judges or juries. Also, in contrast to litigating patents, arbitration offers confidentiality. However, serious consideration should be given before being bound by arbitration. Arbitration usually provides for less discovery and agreements reached through arbitration are non-appealable. If you don’t know the answers to questions such as these, you really should listen to this webinar: How does the Doctrine of Separability affect the enforceability of arbitration provisions? How does the Federal Arbitration Act affect the validity of arbitration clauses? How does the notion of competence-competence affect the validity of arbitration clauses? Is it easier or more difficult to initiate a declaratory judgment if there is a governing arbitration clause? How does arbitration affect injunctive relief? Do precedents carry more value in arbitration or litigation? Where does the intersection of arbitration and re-exam lie? Which patent defenses must an arbitrator consider? To whom must arbitration awards be reported? What are the risks and possible remedies associated with disclosure requirements relating to invalidity under arbitration? Do agreements to arbitrate preclude administrative agencies from investigating and prosecuting civil statutory claims? Course Leaders: J. Derek Mason, Ph.D., Partner, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. A former chemist with a doctorate in organic chemistry, Dr. Mason works with both companies and other law firms, advising on a broad range of intellectual property concerns. He conducts due diligence investigations and risk assessment with respect to intellectual property ownership in corporate mergers and acquisitions. Additionally, he helps both foreign and domestic companies to establish and develop patent portfolios, avoid infringement when launching new products, and formulate and implement procedures to protect their innovations and enhance their use and value. Dr. Mason’s thorough understanding of the sciences and technical aspects of his clients’ innovations enables him to skillfully represent their interests. While achieving his doctorate and undergraduate degrees, Dr. Mason studied organometalloid chemistry and conducted research in the area of organic photochemistry, publishing and presenting papers in both of these areas. He also worked for three years as a chemist for a diversified international chemical company. Anne L. St. Martin, Associate, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. Ms. St. Martin works to secure patent rights for major international chemical, electronic, plastics and glass corporations in a wide range of technologies. These include biotechnology, coatings, cosmetics, electronic chemicals, fluorine chemicals, glass products (flat glass, automotive glass, display glass and electronic glass), inorganic chemistry, imaging devices, light-emitting materials, liquid crystals, metallurgy, organic chemistry, petrochemistry, petrochemical processing, pharmaceuticals, plastics, polymers, process systems engineering, semiconductors, textiles, and toners. Ms. St. Martin’s exposure to international patent laws and prosecution enables her to better understand and communicate with foreign clients when explaining U.S. patent laws and designing U.S. prosecution strategies. During both her undergraduate and graduate years of education, Ms. St. Martin studied in numerous countries including Canada, Germany, France, Russia, Namibia, Sri Lanka, China, and Bangladesh. She has a keen interest in international comparative patent law and international intellectual property (IP) regulations and treaties, including Trade Related Aspects of Intellectual Property Rights (TRIPS), the Paris Convention, and World Trade Organization (WTO) Dispute Settlements. These interests led her to spend a summer studying Chinese intellectual property law in Beijing, and a semester working at a European patent firm in Munich, where she gained experience in European Patent Office (EPO) prosecution, EPO opposition proceedings, and German patent litigation.
    by David Wanetick
    0 Lessons
  • The Intersection of Intellectual Property and Anti-Trust Law

    About the Course: This session provides insight as to when patent rights control versus when anti-trust challenges prevail. This course discusses the Federal Trade Commission’s stance on issues such as new media business models, standards setting bodies, and pharma reverse payment agreements. Detailed analysis regarding possible anti-trust challenges regarding Google, Apple, Samsung and Bayer is provided. The following are among the issues discussed: Are patents with very broad claims more likely to encounter anti-trust challenges? In times of heighted government sensitivity to anti-trust issues, how should patent-holders handle representations regarding their patents’ ability to exclude when negotiating with investors and licensees? To what extent do the various states present anti-trust challenges to patent holders? What are the implications of the Federal Trade Commission’s concerns with respect to “open” versus “closed” business models? How are FRAND standards designed to avoid patent hold-up issues? What is the European Commission’s view of FRAND provisions in connection with standards bodies? How do reverse payment settlements work? What potential challenges do they face? When have agreements that contravene the Sherman Act been ruled valid? Should pay for delay agreements be perceived as per se lawful or per se unlawful? How does the Rule of Reason factor into anti-trust decisions? What are the risks of the FTC challenging the validity of patents in pursuing anti-trust claims? In triggering re-examination challenges? Course Leader: David L. Newman, Partner, Arnstein & Lehr Mr. Newman focuses his practice on intellectual property law, including patents, trademarks, copyrights and trade secrets. His experience includes handling litigation involving intellectual property, preparing and prosecuting applications for obtaining various types of intellectual properties, and opinion work involving business methods, computers, consumer goods, electronic commerce, mechanical devices, medical devices, pharmaceuticals and telecommunications. Mr. Newman has handled numerous litigations involving U.S. and foreign patents, unfair trade practices, copyrights, trade dress, trademarks, trade secrets, antitrust and breach of contract throughout the country. He has been involved in all aspects of practice before the U.S. Patent and Trademark Office, including patent appeals, reissues and reexamination proceedings. David has instructed courses involving claim drafting for patent applications and is a periodic guest lecturer on intellectual property topics at the DePaul University Kellstadt Graduate School of Business.
    by David Wanetick
    0 Lessons