Managing IP: patents

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Trends and developments in patents

Global updates on law, licensing and litigation in patents and related areas

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IP Stars research - your questions answered James Nurton, Jakob Schnaidt, Kingsley Egbuonu, Phil Cox Join our researchers and special guests to find out about the research process for the 2016 edition of IP Stars. They will explain the methodology and timing and will answer questions about submitting information and taking part in interviews Read more >
Sep 3 2015 4:00 pm
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60 mins
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  • Supplementary protection is vital for patent owners in the pharmaceutical and related industries, but Europe’s SPC regime has thrown up many challenging questions. Specialists from IP law firm Marks & Clerk and from industry will discuss the latest cases and the issues addressed in this one-hour webinar
  • Managing IP’s next webinar, run in cooperation with Birch Stewart Kolasch Birch LLP, will take place on May 12 at 4pm (eastern standard time); 1pm (pacific standard time) and will discuss ‘Pitfalls in Post-Grant Trials’.

    The popularity of USPTO post-grant patent trials have only increased. Whether the PTAB institutes an inter partes review, a post-grant review, or a post-grant validity review of qualified business method patents, each trial has procedural pitfalls with considerable strategic considerations during the Second Phase of the trial (from the institution decision to the final written decision by the Board). This webinar will explore the most common mistakes the third party petitioner or patent owner during the 2nd Phase, with an explanation of key decisions by the PTAB (including those posted on the USPTO microsite) as well as the Federal Circuit. The focus will be on discovery, the patent owner motion to amend, oral hearing, and estoppel.

    Speakers include:
    •Michael Loney, Americas editor, Managing IP (moderator)
    •Eugene Perez, partner, Birch Stewart Kolasch Birch LLP
    •Gerald Murphy, partner, Birch Stewart Kolasch Birch LLP

    With post-grant trials becoming increasingly popular, having an in-depths understanding of the pitfalls and challenges is essential for sustaining a strong presence in the market place. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.

    This webinar relates to our April 16 discussion focusing on ‘Pitfalls in the first phase of Post Grant Proceedings’. You can listen to it here: https://www.brighttalk.com/webcast/327/149005
  • Managing IP’s next webinar, run in cooperation with Birch Stewart Kolasch Birch LLP, will take place on April 16 at 4pm (eastern standard time); 1pm (pacific standard time) and will discuss ‘Pitfalls in Post-Grant Proceedings’.

    With the passage of the America Invents Act in 2011, the number of filings for USPTO post-grant patent trials has dramatically increased. Whether it is an inter partes review, a post-grant review, or a post-grant validity review of qualified business method patents, each PTAB trial has procedural pitfalls with considerable strategic considerations, even before the PTAB makes an institution decision (also known as the First Phase of the trial).

    This webinar will explore the most common mistakes for the third party petitioner and patent owner made during the 1st Phase, with an explanation of key decisions by the PTAB (including those posted on the USPTO microsite) as well as the Federal Circuit. The focus will be on the real party in interest requirement (including privity), joinder and claim construction (interpretation) using the broadest reasonable interpretation standard.

    Speakers include:
    •Michael Loney, Americas editor, Managing IP (moderator)
    •Eugene Perez, partner, Birch Stewart Kolasch Birch LLP
    •Gerald Murphy, partner, Birch Stewart Kolasch Birch LLP

    With post-grant proceedings becoming increasingly popular, having an in-depths understanding of the pitfalls and challenges is essential for sustaining a strong presence in the market place. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.

    Also, don’t forget to mark your calendar for May 12, when we will follow up with a second webinar on ‘Pitfalls in Post Grant Trials’.
  • A lot has been made recently about using big data to gain a competitive edge. Perhaps the most familiar example was made famous in the book and movie Moneyball. The book examined how the budget conscious Oakland A’s manager, Billy Beane, used data to compete with the deep pockets of the New York Yankees and other rich teams. With one of the lowest payrolls in baseball, Beane was able to consistently field a winning team, including a twenty game win streak, the second longest in baseball history.
    However, Beane did not create baseball stats. In fact, he used data that teams had been collecting for the previous 75 years. What Beane did was to look at the data in a new way and ask a different set of questions: What stats matter the most to win a game? Which players are the most undervalued?
    Some in intellectual property management have begun to look at how data can be used to make their organizations more efficient. This webinar will examine how forward thinking IP organizations can use data to optimize their IP management process. Topics covered will include:
    -What questions are important to ask?
    -How do organizations go about collecting the data necessary to answer those questions?
    -How should organizations use data to optimize their IP process?
    Speakers will include:
    Mark Bullard, VP Product Management, Lecorpio
    Jared Engstrom, Senior Patent Attorney, Red Hat
  • Managing IP, in association with the Managing IP Women in IP Global Network, invites you to join a free web seminar focusing using social media to get ahead.

    Speakers include:
    Linda J. Thayer, Partner, Finnegan
    Mary Kaczmarek, Business and Professional Development Consultant, Skillful Means Marketing LLC
    Katherine McGowan, Trademark/Advertising Counsel, LinkedIn
    Christine Kao, Intellectual Property & Identity Policy, Twitter

    This webinar will cover topics such as:
    • Building your personal brand on social media
    • Social networking, blogs and content communities; Twitter, Facebook, YouTube
    • LinkedIn – making yourself contactable; showing yourself in the best light
    • Using social media to keep in touch with old colleagues and connect with new ones
    • Using online platforms effectively – contributing as well as information gathering
    • How are your clients using social media?
    • Finding the right communities for you
    • Using social media to win business
    • Legal issues to consider: who owns a company channel? How to ensure you avoid liable

    The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
  • Managing IP’s next webinar, run in cooperation with Lecorpio, will take place on December 11 at 6pm (GMT); 1pm (EST) and will discuss strategies for using patents defensively and offensively.

    In a patent-driven industry where being first to file is paramount, companies recognize the power of turning ideas into assets. More and more companies now choose to aggressively grow and diligently monitor their intellectual property (IP) portfolios, viewing them as critical business assets. Patent frontrunners IBM and Samsung have set the bar high by collectively securing more than 12,000 patents in 2013 alone. Moreover, over 75% of Google’s patents have been awarded in the last two years and the number of applications from the search giant as well as other Silicon Valley-based tech companies is skyrocketing.

    But as companies race to create more IP, how do innovation leaders ensure that their patent portfolio is aligned to strategic priorities? This webinar will discuss how to manage and create a strategic patent portfolio with two innovation leaders.

    Speakers:
    •Dana Rao, Vice-President, Intellectual Property & Litigation, Adobe
    •Douglas Luftman, Vice President, Innovation Services & Chief Intellectual Property Counsel, NetApp
    •Bill Soward, COO, Lecorpio
    •James Nurton, managing editor, Managing IP (moderator)

    Key topics will include:
    •How to align the patent portfolio to business objectives
    •Ways to operationalize the patent process
    •Automating and systemizing IP
    •Managing patents for offensive and defensive strategies
    •Quality vs. speed


    The webinar is free to attend and will last about one hour. The audience is invited to submit questions throughout the webinar, which will be answered during a moderated Q&A session at the end.
  • Managing IP, in association with McAndrews, Held & Malloy, invites you to join a free web seminar focusing on strategies for early resolution of IP disputes.

    As litigation becomes increasingly expensive and prolonged, early resolution strategies are more and more attractive to IP managers. IP has never been more valuable to an organization, but without the correct enforcement and resolution strategies, IP disputes can become a heavy burden on your budget. Thus, having a range of successful early resolution strategies at your disposal will enable you to save money and find mutually beneficial solutions for IP owners and accused infringers.

    Speakers include:
    •James Nurton, managing editor, Managing IP (moderator)
    •Edward A. Mas II , partner, McAndrews, Held & Malloy
    •Leland G. Hansen, partner, McAndrews, Held & Malloy
    • Vaishali Udupa, IP litigation manager, Hewlett-Packard
    The webinar will focus on successful early resolution strategies, covering:
    •The importance of preparation
    •How to select an appropriate forum
    •Assessment of litigation costs and potential exposure
    •Identifying potential counterclaims
    •How to conduct early discovery and avoid delays
    •Ways to file an early motion for summary judgment
    •The utility of settlements
    •Properly-timed PTO and ADR Proceedings
    •How a redesign might solve your problems

    With litigation becoming increasingly expensive and prolonged, having a well-functioning early resolution strategy is essential for sustaining a strong presence in the market place. This webinar will provide an invaluable guide for IP managers who are facing the problem of having to deliver ever greater levels of IP protection or defense, all while managing resources under considerable time constraints. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
  • Discussions around IP are moving from the Legal Department to the boardroom. Being perceived as an innovative company has premium market value. Accelerating the patent process and effectively managing your company’s patent portfolio have become business imperatives.

    A company’s capability to deliver innovation forms its IP Supply Chain. This process involves coordinating an increasingly complex combination of resources, talent and service providers to ensure that the IP supply chain is efficient and runs at a high level.

    Pressures abound on IP managers to deliver ever greater levels of IP quality and output, all while managing resources under considerable constraints. However, much has been learned about optimizing supply chains that is highly applicable to the challenges of IP management. Global manufacturers have led an optimization revolution that has transformed the supply chain process. Both the core principles and practical applications from the “Lean” movement are surprisingly relevant, and there are many lessons that IP organizations can learn from manufacturers.

    Speakers include:
    •James Nurton, managing editor, Managing IP (moderator)
    •Greg Daines, vice president of client services, Lecorpio
    •David Sundahl, Senior Research Fellow, Clayton Christensen Institute

    The webinar will focus on how to optimise your IP supply chain, covering:
    • In what ways is IP management like a supply chain?
    • How do supply chains get optimized and what are the core principles of “Lean” processes?
    • How to optimize IP supply chains to increase speed and reduce costs, without compromising quality
    • Why optimization reduces complexity and makes IP management easier
    • What are the Key Performance (or KPI’s) of IP management?

    This webinar will provide an invaluable guide for IP managers who are facing the problem of having to deliver ever greater levels of IP quality and output, all while managing resources under considerable constraints.
  • Recently, as the number of patent infringement actions filed by foreign companies against Korean competitors has increased, Korean companies have responded aggressively with counteractions in multiple countries, frequently including Korea. Under this changing environment, the quality and size of the Korean patent portfolio plays a critical role in balancing the overall positions between the disputing parties.

    With recent cases such as the Apple v. Samsung disputes, Osram v. LG Innotek & Samsung LED and the “Viagra case” between Pfizer and Hanmi Pharmaceutical, having a clear understanding of the South Korean legal framework and enforcement practice becomes crucial in successfully protecting your patent portfolio and other forms of IP rights.

    Whether you, or your clients, face litigation in Korea, or will potentially be facing it in the future, this webinar will help you understand the essence of Korea’s legal framework, analyse different enforcement options, and give advice on effective counter-measures.

    Speakers include:
    • James Nurton, managing editor, Managing IP (moderator)
    • Mr. J. Kenneth Oh, vice president, head of IP division, LG Display Co., Ltd.
    • Mr. Duck Soon Chang, partner, Kim & Chang
    • Mr. Stephen T. Bang, partner, Kim & Chang

    The webinar will focus on South Korea’s legal framework and patent enforcement practice, covering:
    • Enforcement options in South Korea
    • How to utilize the bifurcated court system
    • Effective counter-measures to an invalidity defence
    • Analysis and discussion of South Korea’s most notable patent infringement cases

    The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
  • NOTE: All slides are now ready for download under: http://slidesha.re/1bRku0n

    Recently, there has been a rise in allegations that the high costs of the patent litigation system in the US are being exploited to reach settlements even on low-value patents. This has led to concerns from technology companies as well as end-users that the patent system is impeding business development and innovation.

    Key to this debate is the question of damages in litigation: How are they awarded? What is proportionate? Are any changes in the law needed? In this webinar, our panellists will look at the issues raised by the troll debate, what strategies plaintiffs and defendants can adopt and what changes, if any, are needed.

    Whether you, or your clients, face threats from trolls, or will potentially be affected in the future, this webinar will help you understand the essence of the problem, how existing laws can already face these challenges and the consequences of new legislation on the issue.

    Speakers include:
    • James Nurton, managing editor, Managing IP (moderator)
    • Eric E. Bensen, intellectual property author and independent consultant
    • Bryan W. Butler, IP Counsel, IBM
    • Charles R. Macedo, Partner, Amster, Rothstein & Ebenstein LLP

    The webinar will focus on patent trolls and damages, covering:
    • What is ‘troll-behaviour’, and what is acceptable?
    • How can existing laws be utilized to tackle the problem?
    • What is being done to change the situation, and will these initiatives be effective or harmful?

    With the troll issue being discussed around the world, there is still a lack of definition and clear understanding. This webinar will provide an invaluable guide for patent owners who are affected by this problem, or might be in the future, as well as their advisers. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.

    NOTE: All slides are now ready for download under: http://slidesha.re/1bRku0n

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