Patents 101

Originally held on Thursday, April 14, 2016| 6:00 pm – 9:00 pm

Program Chair
David A. Boag
BOAG LAW, PLLC

  • Patents 101 is designed for non-intellectual property attorneys who want to better understand the property right conferred by a patent, by examining the processes for obtaining, enforcing and challenging a patent. Covered topics will include a comparison of the property right conferred by a patent to other intellectual property rights, and overviews of the process obtaining a patent from the U.S. Patent and Trademark Office and enforcing a patent against would-be infringers in federal court. Additional topics will cover mechanisms for challenging a competitor’s patent in the U.S. Patent and Trademark Office, under the America Invents Act, enforcing a patent before the International Trade Commission, and ethical issues in obtaining and enforcing a patent.

    DVDs & CDs: $199 Member | $299 Nonmember
    On-Demand: $149 Member| $249 Nonmember
    Materials Only (No CLE Credit): $99 Member| $129 Nonmember

    * New York residents will be charged the New York sales tax for all audio visual purchases.

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  • Philip Hirschhorn
    Buchanan Ingersoll & Rooney PC

    James R. Klaiber
    Hughes Hubbard & Reed LLP
    Chair, NYC Bar Patents Committee

    Janet B. Linn
    Bleakley Platt & Schmidt, LLP

    James R. Major, D.Phil.
    Lucas & Mercanti LLP

    John Gladstone Mills III
    Patent Counsel Group LLP                                                                              

    Rana Sawaya, Ph.D.
    Wilmer Cutler Pickering Hale and Dorr LLP

    JP Son
    Senior IP Counsel
    Vonage Holdings Corp.

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  • 6:00 pm – 6:05 pm Introduction and Overview
    6:05 pm – 6:25 pm History & Structure of the U.S. Patent System

    How did we get here?

    James R. Klaiber
    6:25 pm – 6:45 pm An Introduction to Patent Law

    What a patent actually is, what types of patents are available, and the basic requirements for obtaining a patent.

    James R. Major     
    6:45 pm – 7:05 pm The Anatomy of a Patent Litigation

    A look at the five basic components of a patent litigation, including (1) infringement; (2) validity; (3) enforceability; (4) willfulness; and (5) damages.

    Janet B. Linn
    7:05 pm – 7:25 pm Filing a Patent Application: Considerations

    The questions corporate and individual inventors should ask when considering a patent application, including  novelty and non-obviousness, breadth, competitive relevance, relative impact, and detectability.

    JP Son
    7:25 pm – 7:35 pm Break
    7:35 pm – 7:55 pm Patentability Under 35 U.S.C. § 101

    Whether an invention is patent-eligible subject matter is particularly hot topic now, with a host of recent Supreme Court decisions, updated USPTO guidelines, and inconsistent application of the law within the USPTO and the courts. This look at § 101 will be presented in the context of biotechnology.

    Rana Sawaya
    7:55 pm – 8:20 pm Emerging Issues in U.S. Patent Law

    What has changed over the next few years and what’s to come

    John Mills
    8:20 pm – 8:45 pm Ethics in Patent Prosecution and Litigation

    Considerations and trap such as inequitable conduct, Rule 11, and payment of attorney fees.

    Philip Hirschhorn

    8:45 pm – 9:00 pm Questions

     

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  • This program provides 3.0 credits total: 2.5 in professional practice & 0.5 in ethics for the New York & New Jersey MCLE requirements. California & Pennsylvania credit differs as it is based on a 60-minute credit hour. The live program provided transitional credit to newly admitted attorneys; the recording does not provide transitional credit.

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  • Sponsoring Association Committee:
    Patents | James R. Klaiber, Chair

    Sponsorship Opportunities are Available! Please Contact:
    Maricela Alfonso, Membership and CLE Relations Associate | (212) 382-6608 | MAlfonso@nycbar.org
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