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Strafford IP Attorney Resources

Published by Strafford Publications
Format: Live webinar, DVD or Online Video

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IP Attorneys – See below for the latest CLE-approved webinars from our partner Strafford Publications.

Founded in 1984, Strafford Publications, Inc. is a leading national publisher of specialized information services. Tech Transfer Central is pleased to feature the following upcoming webinars from Strafford. Please click the titles for more information (links will take you to our partner’s site):

Licensing Standard Essential Patents and Protecting IP Rights

A live CLE webinar on Tuesday, November 21 @ 1:00pm EST

Licensing standard essential patents (SEPs) differs from traditional patent licensing; SEP licensors typically must offer non-exclusive licenses on fair, reasonable and non-discriminatory (FRAND) terms. The meaning of the FRAND obligation is far from settled. Counsel to SEP licensees and licensors must navigate legal rights and duties that materially affect the terms and conditions of SEP licenses.

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Overcoming §103 Rejections for Biotech and Chemical Patents: Recent Decisions and USPTO Guidance

A live CLE webinar on Thursday, November 16 @ 1:00pm EST

Obviousness can be a major hurdle for patent applicants in securing a patent on inventions. An obviousness determination can be complex, and examiners regularly reject patent claims as obvious under §103 in view of a combination of prior art.

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Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs

A live CLE webinar on Thursday, November 9 @ 1:00pm EST

The United States Patent & Trademark Office (USPTO) uses a production-based system made up of “counts” to manage the workload of patent examiners. Examiners accrue counts by completing different tasks in the examination process. The type of action and the timing of those actions are factors in determining an examiner’s “counts.”

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Divided Patent Infringement and Inducement: Protecting IP Rights and Allocating Liability

A recorded CLE webinar

The Federal Circuit recently provided guidance on divided infringement and inducement of infringement. In its Eli Lilly & Co. v. Teva Parenteral Medicines (Fed. Cir. 2017) ruling, the court indicated it would consider liability for divided infringement beyond the Akamai test and provided a broader interpretation.

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Drug Substance Patents: FDA Guidance, Protecting Composition-of-Matter Patents, Drafting Solid Form Claims

A recorded CLE webinar

Composition-of-matter patents, listed as “drug substance” patents, are considered the most valuable of Orange-Book listable patents. More frequently, however, approved drugs having no or limited composition-of-matter patent protection are being launched.

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Design Patents: Meeting Obviousness and Novelty Requirements

A recorded CLE webinar

While many of the same requirements govern patentability of utility inventions and designs, the application of those requirements in these two contexts can be quite different. Like utility inventions, designs must be novel and not obvious, but recent ambiguous rulings from the USPTO and courts have blurred the distinction between the two. As a result, it can be seemingly easier to prove lack of novelty based on a single reference that is not identical to the claimed design than it can be to prove that a design is obvious.

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Patent Cooperation Treaty: Evaluating the Benefits and Risks, Obtaining International Patent Protection

A recorded CLE webinar

When seeking patent protection, counsel should consider whether the client needs patent protection outside the U.S. If so, counsel may want to use the Patent Cooperation Treaty (PCT), the heart of the international patent system. While the PCT is a cost-effective option and provides many benefits for applicants, it has proven to be a difficult system to learn.

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Negotiating IP Rights in Industry Sponsored Research Agreements

A recorded CLE webinar

Companies that fund research typically seek ownership of the research results, including all IP rights, relying on provisions in research agreements to expand their IP rights or specify financial details for future inventions.

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Functional Claiming for Mechanical and Electrical Arts

A recorded CLE webinar

In Williamson v. Citrix Online LLC, the Federal Circuit issued a decision relating to means-plus-function claims. This decision has a dramatic impact on interpreting functional claim terms, regardless of whether claim language is being construed in prosecution, post-grant challenges at the PTAB, or district court litigation.

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Navigating the Patent Prosecution Highway and Other Accelerated Filing Options

A recorded CLE webinar

Options are available to patent applicants to obtain quicker resolution of their applications, including the Patent Prosecution Highway (PPH), Track One Prioritized Examination, and First Action Interview.

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Section 112(a) Enablement and Written Description: Leveraging CCPA and Early Federal Circuit Decisions

A recorded CLE webinar

Federal Circuit patent decisions, such as Adrian Rivera v. ITC, as well as important decisions such as Rochester and Ariad, demonstrate that §112(a) (para. 1 pre-AIA) issues remain a constant challenge for practitioners.

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Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More

A recorded CLE webinar

By definition, design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO.

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Patents and Export Control Compliance: Managing Risk and Avoiding Unintentional Violations

A recorded CLE webinar

Running afoul of export control laws is surprisingly easy. If an American inventor in his Chicago lab hands data related to a patent application to a visiting Chinese scientist, this may be deemed an export. Likewise, distributing or outsourcing information by email, surface mail or the cloud accessible outside the U.S. for patent application preparation purposes may be an export.

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Structuring Freedom-to-Operate Opinions: Reducing Risk of Patent Infringement

A recorded CLE webinar

FTO searching and analysis is a critical component in the development of a product. Counsel must prepare product inventors to document information for sound decisions regarding whether they have the freedom to operate in a certain patent area.

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Labeling and Induced Infringement in Pharma Patent Litigation and Protecting IP Rights

A recorded CLE webinar

A drug label may play an important role in Hatch-Waxman patent litigation, particularly in relation to induced infringement of method-of-use patent claims.

35 U.S.C. §271(b) requires that the accused “actively induces infringement.” As the Supreme Court explained a few years ago in Global-Tech v. SEB (U.S. 2011), “actively induces infringement” means the accused knew of the patent and knew the induced acts were infringing. In Hatch-Waxman litigation, the first prong of Global-Tech is easily shown by the patents listed in the Orange Book and the generic manufacturer’s paragraph IV certification. The second prong of specific intent to induce infringement may be proven by the instructions and information in a drug label.

 

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Leveraging Inter Partes Review Petition Denials: Lessons From PTAB Full or Partial Denials to Avoid an IPR or a Denial

A recorded CLE webinar

The Patent Trial and Appeal Board (PTAB) is denying almost a third of all inter partes review (IPR) petitions (60% granted FY2015-FY2017 to date + 7% joinder granted). Importantly, even in the granted petitions, some were granted on less than all of the challenged claims or on less than all asserted grounds. The grant rate for post-grant review (PGR) petitions is lower, 56% (19/34, FY2015-FY2017 to date).

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Section 102 and Prior Art: Navigating the Expanded Scope of Prior Art and AIA Exceptions

A recorded CLE webinar

The AIA significantly altered what constitutes available prior art that can be used to challenge patent claim validity/patentability or reject patent claims. Significantly, the AIA expanded the potential for prior art but contracted the universe of available prior art in certain instances.

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Obviousness Standard: Leveraging Latest PTO and Court Guidance

A recorded CLE webinar

The impact of Federal Circuit decisions has been significant. Federal Circuit review of PTAB decisions in appeals of final rejections and ex parte and inter partes reexaminations has highlighted the importance of deference to PTO expertise in Kennametal Inc. v. Ingersoll Cutting Tool Co. and In re Urbanski, and the difficulties in arguing that references are not physically combinable as in Allied Erecting v. Genesis Attachments.

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ITC as a PTAB Antidote : Navigating Competing Administrative Trial Strategies & Pitfalls

A recorded CLE webinar

The dramatic impact of America Invents Act (AIA) trial proceedings on the patent monetization landscape has been undeniable. The Patent Trial & Appeal Board’s (PTAB) high invalidation rate coupled with the increasing willingness of district courts to stay infringement actions has forced a new monetization paradigm to the fore.

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Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements

A recorded CLE webinar

There has been an increase in the number of §101 rejections overall, including biotechnology related patents, since the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014). Further, the district courts have invalidated approximately 70% of the patents challenged under §101. The Alice Corp. decision and those applying it provide guidance on what subject matter is eligible for patent protection under §101.

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Evolving PTAB Trial Practice: Navigating Complex Procedural Rules

A recorded CLE webinar

The Patent Trial and Appeal Board (PTAB) has become the forum of choice for disputing U.S. patent validity. Since its inception, parties have turned to the PTAB for its unprecedented speed, predictability and expert insight. A thorough understanding of this evolving landscape includes not only mastering the unique rules of this forum (including proposed changes), but also an ever changing body of Board informative decisions, and growing CAFC precedent.

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Navigating the Chinese Patent System: What U.S. Patent Counsel Need to Know

A recorded CLE webinar

Protecting IP in China is an essential element in any global company’s overall strategy. By obtaining Chinese patents, U.S. companies are able to directly pursue alleged infringers in China. China may be favored for patent infringement litigation because the average time from filing to verdict at Beijing’s IP court is four months vs. the U.S. courts’ two-plus years. U.S. companies and their counsel must understand the Chinese system to leverage its advantages.

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Protecting IP Rights in Joint Development Agreements and Strategic Alliances

A recorded CLE webinar

In joint development and strategic alliances, intellectual property ownership and use are the most contentious aspects. There is no single approach to IP ownership and exploitation, and the concerns and goals of the parties in each situation are unique.

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Overcoming 101 Rejections for Computer and Electronics Related Patents

A recorded CLE webinar

Since the Supreme Court’s decision in Alice Corp. v. CLS Bank, the USPTO has dramatically increased its rejections under 35 U.S.C. §101, and the federal courts and the Patent Trial and Appeal Board have been increasingly active in invalidating issued patents. Further, the USPTO has released several memoranda and solicited public comments concerning patent examination under Alice.

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Selecting References and Authenticating Prior Art Status When Filing or Defending Petitions in Post-Grant Proceedings

A recorded CLE webinar

Petitions in inter partes reviews (IPRs) may be based “only on the basis of prior art consisting of patents or printed publications.” Post-grant reviews (PGRs) may also be based on “patents and printed publications.” Petitioners often don’t face difficulty in demonstrating the public accessibility of a patent.

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Latest PTAB Decisions: Leveraging Trends in Institution and Final Written Decisions, Understanding Federal Circuit Scrutiny To Date

A recorded CLE webinar

The Patent Trial and Appeal Board (PTAB) is the busiest jurisdiction for post-grant challenges to U.S. patents, as district court litigation filings continue their downward trend from a peak in 2013. Filings of petitions in the PTAB for inter partes review (IPR), post-grant review (PGR) and covered business method PGR (CBM) proceedings are approaching almost 2000 per year. Over the past year, there have been several administrative developments, new rules, and notable Federal Circuit decisions in appeals from the PTAB of AIA post-grant proceedings.

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How to Use Broadest Reasonable Interpretation to Your Advantage in Patent Prosecution

A recorded CLE webinar

Patent examiners often interpret claims in a way that practitioners think is broader than what is reasonable, but lack tools to fight. However, PTAB and Federal Circuit cases show that there are limits to how examiners can use the BRI in patent prosecution. The rulings underscore the importance of making focused arguments highlighting the ordinary and customary meaning of claim terms consistent with the specification and drawings.

 

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