About the Course:
Patent progeny can often be more valuable than their parents. For instance, continuation patents provide the holder of the parent patent the ability to amend and broaden the claimed inventions. Thus, patent offspring represent a source of optionality for patent-holders. However, children patents represent risks for the parent patents. For instance, a more rigorous examiner reviewing continuation applications may discover prior art that could invalidate the parent patents.
This seminar provides a thorough overview of patent families such as the benefits and risks associated with provisional patent applications, continuations, continuations-in-part, divisionals and foreign filings.
Among the issues discussed during this webinar are:
- How are priority dates determined with respect to children patents?
- Does acquiring a pending patent application impair the ability of the buyer to file continuations?
- How do you determine the patent lives of continuations-in-part?
- Should a patent analyst be concerned if there was a change in the lawyers / law firms that drafted the parent and children patents?
- Under what circumstances might a patent examiner require a terminal disclaimer?
- What are the continuity requirements for the commonality of inventors on parent and children patents?
- What is the risk of having a foreign member of a patent family when a continuation-in-part is later filed on that non-US patent?
- What inconsistencies between provisional patent applications and patent descendants could threaten the patent family?
- To what extent can the claims in continuation patents entrap competitors in terms of infringement?
- Is common ownership of parent and children patents required for selling such patents? For assertion of either the parent or children patents?
- Should patent valuation analysts be concerned if there were numerous abandoned child patents in the prosecution history?
- What is the status of children patents when their parents lapse, perhaps for non-payment of maintenance fees?
- How do patent families impact the calculation of citation analysis?
This course also includes an explanation and example of an IP Roadmap.
Course Leader: John Boyd, Partner, Rimon Law Group John Boyd has been practicing intellectual property law for over 15 years and is registered before the United States Patent and Trademark Office.
John has worked as Chief Intellectual Property Counsel at publicly traded high-tech companies in the biotechnology industry (IGEN International, Inc. and Meso Scale Diagnostics, LLC), the semiconductor industry (ATMI, Inc.), and at law firms in New York, NY, most recently at Winston & Strawn. Before entering private practice, John worked at the US Patent and Trademark Office examining patent applications for inventions relating to high temperature oxide superconductors, coatings, ceramics, pigments, piezoelectric materials and dental compositions.
John has advised several startups on intellectual property issues including how to strategically protect IP assets in a cost effective manner.
John is the sole inventor on five granted U.S. Patents and an co-inventor on several patent applications. John recently sold two groups of patent assets, one relating to targeted advertising and the other relating to online events and location-based networking. He also recently successfully litigated breach of contract claims against two companies in an American Arbitration Association hearing, resulting in a damage award and other compensatory relief.
Course Length: Approx. 1.5 hours