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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 now 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):

Demonstrating Patent Eligibility Post-Alice: Impact of McRo and Other Recent Cases

A live CLE webinar on Tuesday, December 20 @ 1:00pm EST

The Federal Circuit and other federal courts, as well as the PTAB, are issuing rulings regarding patent eligibility based on and after the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014). These opinions provide guidance on the application of Alice Corp., in which the Court concluded the claims were not patent eligible because they were drawn to a patent-ineligible abstract idea. Click here for more information >>

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Patent Infringement: Structuring Opinions of Counsel

A live CLE webinar on Tuesday, December 13 @ 1:00pm EST

The role of opinions of counsel as a defense to willful patent infringement claims has recently been significantly altered by the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016), which overruled the Federal Circuit’s Seagate standard for determining willfulness. In Halo, the Supreme Court noted that “culpability [for willfulness] is generally measured against the knowledge of the actor at the time of the challenged conduct.” Thus, the Supreme Court concluded that the “subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regards to whether his infringement was objectively reckless.” Thus, the state of mind of the infringer has become of greatly enhanced importance in the willfulness determination. The Court further overruled the Federal Circuit’s conclusion that willfulness must be proved by “clear and convincing” evidence and held that the standard of proof was simply a “preponderance of the evidence.” Following Halo, more district courts are allowing juries to pass on willfulness. Thus, opinions of counsel may become more important as a factor courts examine in considering enhanced damages. In this context, more consideration must be given to the fact that asserting the advice of counsel as a defense to willful infringement can result in waiver of privilege. Click here for more information >>

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Patent Design Arounds: Minimizing Risk of Infringement or Reducing Likelihood of Design Arounds

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

When preparing to launch a product and discovering an already existing similar patent, patent counsel and their clients should weigh several considerations, including what elements can they do without that does not include all the same details, what can be altered or tweaked, and whether the owner of the patent that may be infringed by the client’s product have pendency. Click here for more information >>

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After-Final Practice: Navigating Expanding PTO Options to Compact Patent Prosecution

A recorded CLE webinar

As part of the Enhanced Patent Quality initiative, and related workflow optimizations, the USPTO has greatly expanded the after-final landscape for patent applicants. Where traditional options at the close of patent prosecution were limited to pre-appeal/appeal or request for continued prosecution, a number of options now exist to resolve disputes in far quicker and cost effective manners. Click here for more information >>

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Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection

A recorded CLE webinar

The Supreme Court’s decision in Alice implemented a two-step test, the first of which focuses on abstractness. Since Alice, the Federal Circuit has issued decisions that provide guidance on determining whether a claim is directed to an abstract idea. The Enfish, BASCOM, DDR Holdings, Rapid Litigation and McRO rulings help bring clarity to the Alice test. Click here for more information >>

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Design Patents and IPR: Challenging and Defending Validity at the PTAB

A recorded CLE webinar

Companies are looking to design patents as a way to protect their IP. The nature of design patents make challenging them in inter partes review (IPR) or post-grant review (PGR) desirable. However, challenging design patents in AIA proceedings is very different from challenging utility patents. Click here for more information >>

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

A recorded CLE webinar

Composition of matter patents are typically considered the most valuable of Orange-Book listable patents. Such patents are listed as “drug substance” patents in the Orange Book. More and more frequently, however, approved drugs having no or limited composition of matter patent protection are being launched. Click here for more information >>

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IP Protection for Mobile Apps: Navigating Name Selection, Trademark Clearance, Registration, Licensing and Infringement

A recorded CLE webinar

More than 130 billion mobile apps have been downloaded, and almost 90% of time spent on mobile devices involves the use of apps. Tablets, smartphones and other devices all provide a platform for consumers to connect with companies and their brands through apps. Click here for more information >>

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IP Agreements: Structuring Indemnification and Limitation of Liability Provisions to Allocate Infringement Risk

A recorded CLE webinar

Indemnification provisions are often overlooked but are an extremely important part of any IP agreement. Effective drafting and negotiation of indemnification provisions are key to protecting valuable business property interests, reducing the risk of future litigation and minimizing litigation costs if a dispute arises. Click here for more information >>

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Patent Inventorship: Best Practices for Determination and Correction

A recorded CLE webinar

The question of inventorship is often difficult to answer, particularly when scientists include all parties involved with an invention on the disclosure form. Patent counsel must determine which person(s) is actually an inventor and how each contributed. Click here for more information >>

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Defending Patents in IPR Proceedings: Best Practices to Mitigate Risks of Claim Cancellation

A recorded CLE webinar

Counsel to patent owners dread receiving notice that a petition for inter partes review (IPR) has been filed against a patent. The Patent Trial and Appeal Board (PTAB) is granting IPR petitions at a significant rate, while owners’ patent claims are being cancelled at a high rate in PTAB final decisions. Click here for more information >>

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Drafting and Prosecuting Patent Applications to Withstand PTAB Scrutiny

A recorded CLE webinar

IPRs are heavily weighted in favor of patent challengers, and the ability to amend, not just cancel, claims in post-grant proceedings has been rare. The Supreme Court in Cuozzo has spoken: broadest reasonable claim interpretation applies in PTAB AIA Post Grant Proceedings. And Cuozzo also cautions us that it will be very difficult to attack a PTAB institution decision. Practitioners must therefore act during drafting and prosecution to strengthen their potentially important patent applications against PTAB scrutiny.  Click here for more information >> 

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Structuring Patent Indemnification Provisions

A recorded CLE webinar

Indemnification provisions are often overlooked but are a critical part of any patent agreement. Effective drafting and negotiation of indemnification provisions are key to protecting business interests and minimizing litigation costs.  Click here for more information >> 

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Challenging Patents in IPR: Strategies for Filing Petitions

A recorded CLE webinar

An inter partes review (IPR) procedure provides a path to challenge the validity of a patent that is often a faster, cheaper and more likely way to invalidate the patent. However, potential challengers must carefully weigh several factors when considering whether to filing a petition. An IPR proceeding that results in a final written decision will bar the petitioner from raising any grounds for invalidity in the future that were raised or reasonably could have been raised. Further, if an IPR is not instituted, a district court will likely give weight to that if the matter is in litigation.  Click here for more information >> 

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Navigating Patent Eligibility: Leveraging New USPTO Guidance and the Enfish and TLI Communications Decisions

A recorded CLE webinar

In May 2016, the Federal Circuit issued two decisions that provide guidance on patent eligbility. In Enfish v. Microsoft Corp. (May 12, 2016), the Federal Circuit held the claims of software patents directed to a logical structure for a computer database were patent-eligible under 35 U.S.C §101. The court gave long-awaited direction regarding the application of step one of the Alice test regarding whether a claim is abstract.  Click here for more information >> 

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Structuring Patent Indemnification Provisions

A recorded CLE webinar

Indemnification provisions are often overlooked but are a critical part of any patent agreement. Effective drafting and negotiation of indemnification provisions are key to protecting business interests and minimizing litigation costs.  Click here for more information >> 

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