Agenda
Tuesday, Jun 20, 2023
7:00 AM ET
8:00 AM ET
Welcome
James Hallenbeck
Gene Quinn
8:45 AM ET
Building an IP Portfolio: Deciding If and When Patent Protection Makes Sense *
Patenting and secrecy are the two major methods of protecting technology that supports competitive advantage. Trade secrets protect a wide range of confidential information, ranging from customer lists to strategic plans and business methods. Patents, of course, protect innovations. There can be substantial overlap between what can be protected with secrets and patents. Or, perhaps it is more accurate to say…
Sivon Kalminov
Justin Mullen
Michael Nye
Louisa Salomon
Patenting and secrecy are the two major methods of protecting technology that supports competitive advantage. Trade secrets protect a wide range of confidential information, ranging from customer lists to strategic plans and business methods. Patents, of course, protect innovations. There can be substantial overlap between what can be protected with secrets and patents. Or, perhaps it is more accurate to say…
,10:00 AM ET
Creating an Innovative Ecosystem to Drive Value
The concept of driving value in the patent context can mean many different things to different people. Conceptually, there is nothing new about the need for fiscal responsibility as a lead component in the value proposition. What is new, however, is what seems to be the sometimes-unrealistic expectations of the courts, which is diametrically inapposite to the often-indiscriminate cost-cutting measures…
Randy Canis
Idris McKelvey
Joseph Monaghan
Derek Somogy
The concept of driving value in the patent context can mean many different things to different people. Conceptually, there is nothing new about the need for fiscal responsibility as a lead component in the value proposition. What is new, however, is what seems to be the sometimes-unrealistic expectations of the courts, which is diametrically inapposite to the often-indiscriminate cost-cutting measures…
,11:15 AM ET
Practical Tips for Increasing Patent Allowance Rates *
The first commandment of patent prosecution should be to know your patent examiner. To do this, patent practitioners need to consider examiner time constraints and production goals, what examiners need to see to allow an application, and must have an appreciation for what examiners are being instructed to do by supervisors. Interactions between patent examiners and patent practitioners are often…
Robert Brush
Drew Hirshfeld
Edward T. La Barr
John Rogitz
The first commandment of patent prosecution should be to know your patent examiner. To do this, patent practitioners need to consider examiner time constraints and production goals, what examiners need to see to allow an application, and must have an appreciation for what examiners are being instructed to do by supervisors. Interactions between patent examiners and patent practitioners are often…
,12:15 PM ET
1:15 PM ET
Patent Robustness After Amgen: Drafting Specifications to Satisfy the 112 Requirements of Tomorrow *
After Amgen the Supreme Court made what some believe to be significant changes to the law of enablement, finding that the 26 examples, 400+ pages of disclosure and information submitted on via CD ROM was not sufficient to enable the claims. Meanwhile, the United States Patent and Trademark Office (USPTO) has recently embarked on a public inquiry relating to what…
Robert Bahr
Dan Evans
Brad D. Pedersen
Thara Russell
After Amgen the Supreme Court made what some believe to be significant changes to the law of enablement, finding that the 26 examples, 400+ pages of disclosure and information submitted on via CD ROM was not sufficient to enable the claims. Meanwhile, the United States Patent and Trademark Office (USPTO) has recently embarked on a public inquiry relating to what…
,2:30 PM ET
Secondary Considerations and the Art of Responding to Obviousness Rejections *
While much attention in recent years has been placed on patent eligibility—and rightly so— the truth is obviousness remains the most important threshold for most innovations. When the Supreme Court issued its decision in KSR v. Teleflex, things substantially changed. Obviousness today is all about predictability of results. Long gone are the days where an obviousness rejection was inappropriate simply…
Keith Fredlake
John Hocker
Keri Sicard
Wen Xie
While much attention in recent years has been placed on patent eligibility—and rightly so— the truth is obviousness remains the most important threshold for most innovations. When the Supreme Court issued its decision in KSR v. Teleflex, things substantially changed. Obviousness today is all about predictability of results. Long gone are the days where an obviousness rejection was inappropriate simply…
,3:45 PM ET
The Good, The Bad, and the Ugly: Tips and Strategies for Building a Strong Patent Portfolio *
Patents have been and continue to be an important asset for all innovators. Unfortunately, a patent is not an asset that typically possesses flexibility and adaptability. This makes “doing it right” from the outset of the utmost importance. What does “doing it right” mean? What it means to “do it right” will be the focus of this panel conversation, but…
Timothy Grathwol
Scott Markow
Kristin Murphy
Robert Stoll
Patents have been and continue to be an important asset for all innovators. Unfortunately, a patent is not an asset that typically possesses flexibility and adaptability. This makes “doing it right” from the outset of the utmost importance. What does “doing it right” mean? What it means to “do it right” will be the focus of this panel conversation, but…
,5:00 PM ET
Strategic Portfolio Acquisition and Maintenance: Ensuring Business Objectives Align with Patent Strategy *
A sound patent strategy, and effective execution of such a strategy, are essential ingredients for a technology company’s road to success. While many, if not most, enterprises have instituted or are attempting to execute, a patent strategy of some sort, an important question must be considered: Does the patent strategy align with current and future business goals? Some corporate patent…
Matthew Fenselau
Dean Geibel
Devon Grant
Geoffrey White
A sound patent strategy, and effective execution of such a strategy, are essential ingredients for a technology company’s road to success. While many, if not most, enterprises have instituted or are attempting to execute, a patent strategy of some sort, an important question must be considered: Does the patent strategy align with current and future business goals? Some corporate patent…
,6:00 PM ET
Cocktail Reception
Beer, wine and cocktails with hors’ d’ oeuvres.
Beer, wine and cocktails with hors’ d’ oeuvres.
,Wednesday, Jun 21, 2023
8:00 AM ET
9:00 AM ET
Best Practices for Building a Worldwide Patent Portfolio *
For many companies, the best course of action when seeking to obtain worldwide patent protection is to file an International Application under the Patent Cooperation Treaty. This strategy puts off decision-making for up to 30 months after filing the PCT application and leaves virtually all doors open. However, the PCT process is not cheap, and it can be more economical…
Gary Lobel
Cynthia Deal Mitchell
Rob Rodrigues
John White
For many companies, the best course of action when seeking to obtain worldwide patent protection is to file an International Application under the Patent Cooperation Treaty. This strategy puts off decision-making for up to 30 months after filing the PCT application and leaves virtually all doors open. However, the PCT process is not cheap, and it can be more economical…
,10:15 AM ET
The Challenges of Drafting and Prosecuting AI Patents *
So, you’d like to patent your artificial intelligence (AI). It might not be as easy as you think! In the United States, patents can be obtained on inventions that are themselves systems, apparatuses and processes. But patenting AI and machine learning (ML) innovations can be quite challenging because the patent laws as they are written contemplate a different invention paradigm.…
Christian Hannon
Malgorzata (Gosia) A. Kulczycka
Gene Quinn
Wen Xie
So, you’d like to patent your artificial intelligence (AI). It might not be as easy as you think! In the United States, patents can be obtained on inventions that are themselves systems, apparatuses and processes. But patenting AI and machine learning (ML) innovations can be quite challenging because the patent laws as they are written contemplate a different invention paradigm.…
,11:30 AM ET
The Ethical Implications for Using Artificial Intelligence *
The use of Artificial Intelligence while engaging in the practice of law is fraught with peril and pitfalls from an ethical standpoint. The ethical concerns presented by the use of artificial intelligence are not insurmountable, but do require practitioners to engage in serious forethought and consultation with clients prior to using these tools. Understanding how any particular AI solution collects,…
Jeffrey Cobia
Will Covey
Gene Quinn
The use of Artificial Intelligence while engaging in the practice of law is fraught with peril and pitfalls from an ethical standpoint. The ethical concerns presented by the use of artificial intelligence are not insurmountable, but do require practitioners to engage in serious forethought and consultation with clients prior to using these tools. Understanding how any particular AI solution collects,…
,12:30 PM ET
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