The State of Patent Eligibility

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Managing IP and Lexis Nexis
After the Supreme Court’s decision in Prometheus and its vacatur and remand of the Myriad decision, the question of what constitutes patent eligible subject matter continues to pose a challenge to courts, the PTO and practitioners. This webinar will address the impact of the Prometheus decision on the eligibility question including what guidance it may provide with respect to the eligibility of gene patents, how the PTO is likely to react to the decision and the impact the decision will have on the medical field.
Sep 19 2012
83 mins
The State of Patent Eligibility
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  • SPCs in the EU - latest cases and developments Recorded: Jun 23 2015 75 mins
    James Nurton, Mike Gilbert, Angus Fairbairn
    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
  • Pitfalls in Post-Grant Trials Recorded: May 12 2015 66 mins
    Eugene Perez & Gerald Murphy, partner, Birch Stewart Kolasch Birch LLP; Michael Loney, Americas editor, Managing IP
    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
  • Pitfalls in Post-Grant Proceedings Recorded: Apr 16 2015 62 mins
    Eugene Perez, partner, BSKB; Gerald Murphy, partner, BSKB; Michael Loney, Americas editor, Managing IP
    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’.
  • IPnomics: Using Data to Re-Invent Your IP Management Recorded: Mar 31 2015 73 mins
    James Nurton (MIP), Mark Bullard (Lecorpio), Jared Engstrom (Red Hat)
    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
  • Using Social Media to Get Ahead Recorded: Dec 15 2014 73 mins
    Emma Barraclough, Group Editor, Managing IP
    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.
  • Developing and managing the strategic IP portfolio Recorded: Dec 11 2014 65 mins
    Dana Rao, VP litigation,Adobe; Douglas Luftman, VP& Chief IP counsel, NetApp; Bill Soward, COO, Lecorpio
    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.
  • Successful early resolution strategies for IP disputes Recorded: Sep 10 2014 77 mins
    Edward A. Mas II , partner, McAndrews, Held & Malloy; Leland G. Hansen, partner, McAndrews, Held & Malloy, Vaishali Udupa, HP
    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.
  • Optimizing your IP supply chain Recorded: Jun 10 2014 62 mins
    Greg Daines, Lecorpio; David Sundahl, Clayton Christensen Institute; James Nurton, Managing IP
    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.
  • South Korea’s legal framework and patent enforcement Recorded: Feb 13 2014 71 mins
    J. Kenneth Oh, head of IP division, LG Display; Duck Soon Chang, partner, Kim & Chang; Stephen T. Bang, partner, Kim & Chang
    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.
  • Patent trolls & damages Recorded: Dec 17 2013 79 mins
    Eric E. Bensen, independent consultant; Bryan W. Butler, IBM; Charles R. Macedo, Amster, Rothstein & Ebenstein LLP
    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
  • IP litigation in Brazil Recorded: Oct 28 2013 83 mins
    Ricardo Pinho, Guerra IP Brazil; José Graça Aranha, WIPO; Colette Durst,, Tyco; and Sherry Rollo, Husch Blackwell
    Managing IP, in association with Guerra IP, invites you to join this free web seminar focusing on IP litigation in relation to companies’ overall IP portfolio strategy in Brazil. The seminar will take place at 12pm EDT/ 2pm BRST/ 4pm GMT.

    Brazil is the world’s 6th largest economy and companies are giving more focus to this rapidly expanding market. Whether you, or your clients, are currently doing business in Brazil, or will potentially move into this market sometime in the future, this webinar will help you understand how IP litigation should factor into your overall IP strategy in this regulation heavy country.

    Speakers include:
    •James Nurton, managing editor, Managing IP (moderator)
    •José Graça Aranha, Regional Director for Latin America, WIPO
    •Colette Durst, senior IP counsel Trademarks, Tyco
    •Sherry Rollo, partner, Husch Blackwell
    •Ricardo Pinho, partner, Guerra IP Brazil

    The webinar will focus on IP litigation, covering:
    * Applicable laws and rules, and also the practical, strategic issues surrounding choice of venue, costs, timing, damage recovery and injunctive relief
    * Case studies and the perspectives of in-house counsel who have recent experience of litigation in the country

    Brazil is a large country, and for many has an unfamiliar legal system. This webinar will provide an invaluable guide for patent and trade mark owners who are investing in the country now or plan to 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.
  • A guide to IP protection and strategic investment in Myanmar Recorded: Oct 17 2013 71 mins
    Fabrice Mattei, Thailand Country Manager, Rouse, Moe Mynn Thu, Rouse and James Nurton, managing editor, Managing IP
    A guide to IP protection and strategic investment in Myanmar, September 2013:
    •The unfolding of business in the ‘last frontier’ market of Asia: How domestic industry in progressing and how multi-nationals are expanding in Myanmar

    •How can they make IP pay?

    •An overview of new legislation in Myanmar pertaining to IP, Licensing and Trade: Identifying the gaps in IP rights legislation

    •The government’s moves to comply with TRIPS: Commitment and timeframe

    •Insightfully strategising for a future of rapid development and change: How multinational companies can gain edge and effectively invest in the burgeoning market whilst safeguarding their intellectual assets.
  • Software Patenting in Europe Recorded: Sep 24 2013 65 mins
    Mollybeth Kocialski, Patent Counsel, Oracle, Mark Kenrick, Partner, Marks & Clerk and Ed Round, Partner, Marks & Clerk
    In this webinar we will look at the situation surrounding software patents in Europe. Following an up-to-date overview of European patent law around software, our panel will consider the relative importance of patent protection in different countries, some successful and unsuccessful cases and whether the national route can offer a favourable alternative to the EP route. They will also discuss the effect of European software patentability on filing strategies and provide practical guidance to aid prosecution. You will be invited to submit questions to the panel live during the broadcast and there will be time at the end for the panelists to respond to your individual queries.
  • Latest US biotech patent developments: Monsanto and Myriad Recorded: Jun 27 2013 80 mins
    James Nurton, Lawrence M. Sung, Eric Bensen, Heather Boussios
    Biotech patent specialists review developments including US Supreme Court cases Monsanto and Myriad
  • Software patents after CLS Bank v Alice Recorded: Jun 18 2013 78 mins
    James Nurton
    Is the recent Federal Circuit decision in CLS Bank v Alice the death of thousands of US patents? Our panel will discuss the judges' opinions, what the ruling means for patent applicants and whether the US Supreme Court will have to take up the case
  • Part 2: Judge Paul Michel Speaks Out on Patents, Congress and the Supreme Court Recorded: Apr 12 2013 4 mins
    Judge Paul Michel (Retired)
    Part 2: Judge Paul Michel Speaks Out on Patents, Congress and the Supreme Court
  • Judge Paul Michel Speaks Out on Patents, Congress and the Supreme Court Part 1 Recorded: Mar 28 2013 6 mins
    Judge Paul Michel (Retired)
    The Shield Act is “entirely unnecessary”; the America Invents Act was a missed opportunity; and two recent US Supreme Court decisions were “extremely poorly reasoned and very harmful to a well-functioning system”

    Judge Michel speaks candidly about some of the frustrations he has experienced since stepping down from the bench in order to be free to engage fully in patent debates. In particular, he describes how he testified before a Congressional subcommittee – and the members seemed not to care that he was (perhaps uniquely) a neutral witness, with no axe to grind.

    Now legislators are talking about further changes to the patent system, with specific proposals in the so-called Shield Act. But Michel says the Act proposed “would do vastly more harm than good and is entirely unnecessary”. Interfering with judges in the ways proposed in the Act would be a “threat to justice” says Michel, adding that the problems with the patent system are that it is too slow, too unpredictable, too expensive and too disruptive – and solving them means investing in the USPTO (probably by paying examiners more).

    As he says in the video, Michel is at liberty to speak out now he is retired, but I suspect his concerns are widely shared in the judiciary. During the Forum, I moderated a panel that included Michel’s successor as Chief Judge, Randall Rader: when I asked him directly if new legislation (such as the Shield Act) were needed, he said emphatically “No” and argued that parties and judges already have the tools they need to deal with abusive and expensive litigation.

    I suspect the response from those who feel they have been victims of patent trolls will be: if district court and appeal judges really can deal with abusive litigation, then they should do so. This might involve acting tougher with vexatious plaintiffs and being more willing to award costs in appropriate cases. Maybe we need to see a bit more judicial activity here?
  • Don't lose priority: Best practices under first-to-file Recorded: Dec 19 2012 78 mins
    LexisNexis
    This webinar will examine potential pitfalls arising from the new first-to-file rules, focusing on how in-house and outside counsel can work together to ensure that priority of applications is maintained. This includes in-house tips for implementing practices to ensure priority is obtained, potential consequences for outside counsel if they don't get to the office first, and what new practices must be put in place to ensure deadlines are met.

    On the agenda:
    •Brief overview of priority under the AIA
    •Implications for public disclosures and private disclosures
    •Role of provisional filings under AIA
    •Role of ndas under AIA
    •Recommended procedures

    Speakers:
    •Eileen McDermott, Americas Editor, Managing IP
    •Alexander Franco, Intellectual Property Legal Counsel, Accenture
    •Charles R. Macedo, Partner with Amster, Rothstein and Ebenstein LLP
    •Benjamin Carlsen,IP Attorney at Ecolab USA Inc
    •Christopher Hilberg,Senior Patent Attorney, Best Buy
  • IP Licensing: What’s Lurking in Common Provisions? Recorded: Nov 28 2012 81 mins
    Wolters Kluwer Law & Business
    This webinar, sponsored by Wolters Kluwer Law & Business, will address different aspects of drafting license agreements, which are crucial in increasing IP licensing revenue and decreasing the risk of loss and liability. Speakers will cover topics including:

    Pitfalls in drafting “standard” IP license provisions, such as recitals, grant terminology, representations and warranties, governing law, venue and dispute resolution
    Leveraging trademark assets through the franchise license agreement
    Bankruptcy and the enforcement of the license agreement


    Speakers:

    Eileen McDermott, Americas Editor, Managing IP (Moderator)

    Roger M Milgrim, IP Attorney and Author

    Eric E Bensen, IP Attorney and Author

    J Michael Dady, Licensee/Franchise Attorney, Dady & Gardner
  • Collaborating with Your Eyes Wide Open: Strategies for Protecting Trade Secrets Recorded: Oct 17 2012 89 mins
    Dickstein Shapiro LLP
    Your company invests significant resources in developing its trade secret information, technologies, and processes. These trade secrets are more vulnerable than ever in light of advances in technology, globalization of business endeavors, and an increase in collaborations and business partnerships. This diverse panel, including outside and in-house counsel, will discuss:

    •The importance of trade secret protection as a strategic part of your overall IP portfolio

    •Protecting trade secrets and preventing loss of rights in your collaborations and collaboration agreements.

    The panel will also provide practice and contract pointers and address issues specific to webinar attendees.

    Speakers
    Krista Carter, Partner, Intellectual Property, Dickstein Shapiro LLP
    Thomas C. Feix, The Director of Patents, The Clorox Company
    Ann Lee, Corporate Counsel, The Clorox Company
    Deborah E. Fishman, Partner, Intellectual Property, Dickstein Shapiro LLP
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  • Title: The State of Patent Eligibility
  • Live at: Sep 19 2012 3:00 pm
  • Presented by: Managing IP and Lexis Nexis
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