Master Class 1

Don't Be a Patent Caveperson: Embrace the AI Revolution as a

Tool in your Patent Practice

A Practical Guide for Patent Attorneys (In-house and Outside Counsel)

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Topics Include:

• AI Arsenal: Arming Your Patent Toolkit with the Latest AI Tools

• Plug & Play AI: Seamlessly Integrate AI Intelligence into Your Patent Practice

• Taming the AI Beast: Overcoming Challenges and Pitfalls Using

       Your Patent AI Toolkit

• Beyond Words: AI's Impact on Enablement, Written Descriptions, and Prior Art

 

Faculty: Barry Schindler, Co-Chair Global Patent Prosecution Group and

Mark Ruberto, Patent Attorney, Greenberg Traurig

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Master Class 2

The Path to Patent Triumph: Drafting Strategies for Winning Patents in the US, EPO,
UK and UPC

 

For a patent to do its job, it must have claims that matter to competitors, and it must be able to stand up to the rigors of litigation.  Many patents fall victim to one (or more) classic pitfalls—a fate often resulting in unintentionally narrow claim constructions that fail to capture competitors’ activities.  And the stakes are high, especially in the US, as patents that impact competitors can be hugely valuable, while those that do not often have no value at all.  

 

To address these issues, US patent drafting best practices continuously evolve with an aim toward maximizing potential patent value.  Such drafting practices, while effective in the US, may still result in applications that can experience avoidable examination resistance in other jurisdictions, such as Europe.    

 

This master class, taught by a team of Finnegan’s US and European patent experts, will focus on novel application filing and drafting techniques designed to both maximize patent value in the US and streamline prosecution before the European Patent Office (EPO).  Attendees will learn from real patent examination examples and how even subtle additions or modifications to a US-focused application can smooth the path to allowance before the EPO.

 

Faculty: Darren Jiron, Partner, Finnegan and James Bell, Of Counsel, Finnegan

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Master Class 3

Litigation Lessons for IP Agreements: Expert Strategies in Ownership, Licensing, and Joint Research

 

​Topics Include:

• Joint ownership and its pitfalls

• Controls on disclosure and dissemination of confidential information

• Defense, indemnity and control of defensive litigation

• Control of IP strategy, patent prosecution and control of enforcement litigation

• Determinations of inventorship

• How ownership and license rights affect control, participation in discovery obligations stemming from enforcement litigation

• Issues in academia, publication and Bayh Dole Act considerations

• Pros and cons of alternative dispute resolution

• Case studies and mock negotiation and drafting exercises

 

Faculty: Adam Samansky, Member, Mintz

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Master Class 4

Unconventional use of Design Patents for Effective Product Branding and IP Protection

Topics Include:

• Definition: What is brand identity?

• Elements of Brand Identity:

  • Logos

  • Colors

  • Typography

  • Packaging

• Importance: Why is brand Identity crucial for businesses?

• The impact of a strong brand identity on customer perception and loyalty

• Brief overview of design patents as part of IP protection

• Definition: What is a design patent?

• The traditional role of design patents in protecting visual aesthetics

• Using design patents to reinforce and differentiate brand identity

• Design patents and Trademarks – which one, both or none?

• Showcasing case studies of brands that have successfully integrated design patents into their branding strategies

• Using design patents as a deterrent against counterfeit products

• Balancing short-term and long-term considerations

• Examples of out-of-the-box strategic use of design patents

• Summary of the main points discussed

• Q&A - Open floor for questions and discussions​

 

Faculty: Saar Sa’ar Alon, Partner, CDS-Luthi Group

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Master Class 5

Doing More With Less:  Making the Most out of Your Patent Strategy in 2024

This Master Class is geared toward in-house IP Directors and in-house counsel, covering different ways to do more with less, with respect to patent strategies and execution. 

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Topics include:​

• Patent preparation, filing, and prosecution strategies – focusing on the right jurisdictions, streamlining the process, minimizing Office Action/Response “churn,” and aligning legal, technical, and business strategy, thereby creating maximum value

• Freedom-to-operate (FTO): understanding current case law on FTOs, focusing on it when it makes sense, avoiding it when it’s a waste of time, how to know the difference, and how to approach it efficiently

• Patent claim techniques – avoiding common mistakes, minimizing “prosecution history baggage,” and minimizing unnecessary, avoidable (and potentially damaging) tension with patent examiners

• Patents and trade secrets – do you always need to choose one or the other?  Strategic use of both, even for the same invention – In-depth follow-up on the BPIP conference plenary session.

• Publication as an alternative to patents – how to decide​

 

Even the most experienced patent/IP practitioners and IP professionals can sometimes overlook these best practices, which can create lasting damage to a patent portfolio, and result in spending more money than is necessary.  The Master Class will provide practical tips that you can immediately employ, to help you negotiate today’s challenging economic climate.

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Faculty: Greg Kirsch, Partner, Head of IP Department, Smith, Gambrell, Russell

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Master Class 6

Intellectual Property Checklist for Your Business – Make sure you are covered!

 

Topics include:

• What, How, Where, Who, When - The ins and outs of patents, trademarks, copyrights and trade secret

• Allocating resources to maximize IP protection and risk management

• Developing IP for a possible exit or IPO

• IP and contracts – Key agreements and provisions

• IP enforcement –  Why it’s important to the business, and articulating the business case for IP enforcement

• Monitoring the IP of competitors

• Emerging issues – Get ahead of the curve

• The role IP plays in the GDP and wealth of countries

• One-page checklist hand-out to be provided to all participants

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Faculty: Andrei Iancu, Former Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Partner Sullivan & Cromwell, Joseph Reisman, Knobbe Martens, Partner, 

Susan Natland, Co-Chair of the Trademark and Brand Protection Group, Knobbe Martens

Avi Schwartz, VP, IP Counsel at Edwards Lifesciences