Patent Docs

LSI Current Issues in Complex IP Licensing Conference

Law Seminars International (LSI) will be holding its fourth annual conference on Current Issues in Complex IP Licensing on September 11-12, 2008 in Philadelphia, PA.  The workshop will provide information on:

• How to get what you want out of the deal;
• Legal update on major recent and pending cases;
• The fallout from the Tafas/GlaxoSmithKline v. Dudas decision;
• Business structures and receiving full value;
• The intersection of antitrust law and IP protection;
• Social networking and user generated content;
• Trademark and copyright transactions and patent law reform;
• University technology transfer;
• Special issues in information technology, outsourcing, and international transactions;
• Dealing with risky partners; and
• Evolving business, IP, and standards strategies.

In particular, LSI's faculty will offer presentations on the following topics:

I.  Current best practices for covering the fundamentals:  Making sure there will be a match between what you want to get out of the deal and what you actually get

• A structured approach to verifying the licensor's IP rights and litigation status;
• Third-party technology and rights in the subject matter;
• Verifying the other party's financial stability;
• Tips for resolving issues that are discovered.

II.  Legal update of major recent and pending cases

• Patent exhaustion or post-sale license restrictions;
• Quanta Computer v. LG Electronics;
• Implied licenses;
• Licensee Waiver of Sovereign Immunity (Baum Research v. University of MA, CAFC)

III.  Update on the fallout from the Tafas/GlaxoSmithKline v. Dudas decision

IV.  The lumbering movement towards patent law reform:  What are the current proposals and their prospects?  How are the elections likely to change the outcome?

• Details of the bill passed by the House;
• What is likely to happen in the Senate;
• Likely impact of the change in administration and political control of the Congress.

V.  The impact of business structures on your licensing strategy

• How your selection of a business entity affects taxes, liability, standing and potential damages from infringement;
• Additional business structure considerations for joint ventures;
• Impacts on a licensee's ability to enforce the patent;
• Remedies.

VI.  Maximizing the bottom line and receiving full value

• Effective auditing procedures:  How to define royalty base;
• Royalty triggering events;
• Parent subsidiary relationships.
• Sub-licensing:  Implications of the shift towards partnering as a primary driver;
• Most commonly negotiated rights;
• Provisions relating to licensor rights and licensee responsibilities, and to ensure sub-licensee compliance;
• Typical financial arrangements.

VII.  New developments at the intersection of antitrust law and intellectual property protection

• What the IP lawyer needs to know about antitrust in the U.S. and around the world;
• Update on patent tying, standards setting and patent pools;
• Settlement of IP litigation;
• Strategies for structuring transactions to avoid antitrust problems.

IX.  Special issues for outsourcing transactions

• Checklist for necessary clauses;
• Terms for ensuring compliance with privacy, information security, and other regulatory requirements;
• Norms for indemnifications, liabilities, and warranties.

X.  Social networking and user generated content

XI.  Current issues and best approaches for trademark and copyright licensing transactions

• Litigation update:  Areas where the cases suggest you may want to update your licensing and protection strategies;
• Current issues arising from the use of trademarks and copyrighted materials on the Internet:  Fair use in advertising;
• Web publishing;
• Data sharing arrangements and consumer privacy;
• Regulatory compliance strategies.

XII.  University technology transfer and licensing

• The necessary and unique approach for licenses of life sciences technologies from universities and research institutions;
• The differences from traditional licenses between commercial entities;
• The impact on the terms of the deal.

XIII.  Special issues in information technology transactions:  Licensing and distributing open source with closed source software

XIV.  Dealing with risky partners

• Avoiding problems arising from licensing with troubled companies:  Update on issues related to the interface between intellectual property law and insolvency law;
• Provisions for licensing agreements to minimize and better control bankruptcy risks.

XV.  Special terms for international transactions involving the export or import of technology

• Update on export control and the Freedom of Information Act;
• Technology transfer licensing competition rules in the EU and Pacific Rim.

XVI.  Evolving business, intellectual property and standards strategies for the information technology industry

The agenda for the Current Issues in Complex IP Licensing conference can be found here.  A complete brochure for this conference, including an agenda, list of speakers, and registration form can be downloaded here.

The registration fee is $497.50 for students and new employees, $795 for government employees, or $995 for all other attendees. Those interested in registering for the workshop can do so here, by calling 800-854-8009, or by faxing a registration form to 206-567-5058.

Conference & CLE Calendar

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28, 2008 - Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent (Practising Law Institute) - New York, NY

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 11, 2008 - Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent (Practising Law Institute) - San Francisco, CA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 18-20, 2008 - Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) - New York, NY

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

July 1, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - New York, NY

July 9-11, 2008 - Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) - San Francisco, CA

July 16, 2008 - Patent Claim Construction Workshop (Law Seminars International) - Seattle, WA

July 24-25, 2008 - Advanced Patent Prosecution Workshop 2008: Claim Drafting & Amendment Writing (Practising Law Institute) - New York, NY

August 11-12, 2008 - Advanced Patent Prosecution Workshop 2008: Claim Drafting & Amendment Writing (Practising Law Institute) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

LSI Patent Claim Construction Workshop

Law Seminars International (LSI) will be holding a Patent Claim Construction workshop on July 16, 2008 in Seattle, Washington.  The workshop will provide information on:

• Current case law and recent federal circuit developments.
• The development of claim construction theory and practice.
• Litigation strategies from plaintiff and defendant perspectives.
• Managing the prosecution process for the most effective claim drafting on a portfolio-wide basis.
• Drafting an application that complies with today's standards for a litigation or license ready patent.
• Effective use of graphics.

In particular, LSI's faculty will offer presentations on the following topics:

I.  The development of claim construction theory and practice

• Origins of patent claiming requirements;
• Patent claims' role to establish boundaries of exclusive rights & provide public notice of those rights;
• "Intrinsic" & "extrinsic" evidence of the meaning of patent claims;
• Legal theories of claim interpretation.

II.  Current case law and recent federal circuit developments in claim construction

• Review of 2007-2008 case law of the Federal Circuit on selected claim construction topics, such as whether preambles limit claim scope;
• Substantive and procedural issues.

III.  Ways for prosecutors to create patents worthy of litigation and tips to make it easier for litigators to defend

• In-house counsel perspective: Managing the prosecution process for the most effective claim drafting on a portfolio-wide basis;
• Outside counsel perspective: Drafting an application to comply with today's standards for a litigation or license ready patent;
• Responding to office actions that avoid file wrapper estoppel and increase the chance that allowed claims will be infringed.

IV.  Litigation strategies from plaintiff and defendant perspectives

• Advantages and disadvantages of evidentiary hearings;
• Laying the groundwork for successful summary judgment motions;
• What to do after the claim construction ruling.
• Getting claim constructions that strengthen all of your best defenses.

V.  Using graphics to help win claim construction disputes

• The increasingly important role of graphics in claim construction disputes;
• Elements of a successful graphic;
• How graphics can enhance your argument and increase your chances of winning;
• Examples from major disputes from around the country.

The agenda for the Patent Claim Construction workshop can be found here.  A complete brochure for this workshop, including an agenda, list of speakers, and registration form can be downloaded here.

The registration fee is $347.50 for students and new employees,$545 for government employees, or $695 for all other attendees. Those interested in registering for the workshop can do so here, by calling 1-800-854-8009, or by faxing a registration form to 1-206-567-5058.

PLI Advanced Patent Prosecution Workshop

Practising Law Institute (PLI) will be holding a conference entitled: "Advanced Patent Prosecution Workshop 2008: Claim Drafting & Amendment Writing" on July 24-25, 2008 in New York, NY and on August 11-12, 2008 in San Francisco, CA.  The conference will offer presentations on the following topics:

• Ethics for Patent Prosecutors
• On-Sale Bar
• Advanced Claim Drafting Issues
• Recent Patent Law Developments
• Claim Drafting Workshops - including a Biology/Chemistry breakout group
• Duty of Disclosure
• Examiner Interviews
• Post Final Practice
• Affidavit Practice
• Amendment Workshops - including a Biology/Chemistry breakout group

A full program for the Advanced Patent Licensing conference can be found here (New York) and here (San Francisco).  The registration fee for the conference is $1,495. Those interested in registering for the conference can do so here (New York) or here (San Francisco).

Conference & CLE Calendar

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30, 2008 - Public PAIR and Data-Mining Requests Webcast (U.S. Patent and Trademark Office)

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28, 2008 - Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent (Practising Law Institute) - New York, NY

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 11, 2008 - Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent (Practising Law Institute) - San Francisco, CA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 18-20, 2008 - Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) - New York, NY

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

July 1, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - New York, NY

July 9-11, 2008 - Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

PLI Advanced Patent Licensing Conference

Practising Law Institute (PLI) will be holding a conference entitled: "Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent" on May 28, 2008 in New York, NY and on June 11, 2008 in San Francisco, CA.  The conference will offer presentations on the following topics:

I.  What’s Hot in Patent Licensing Law

• MedImmune and SanDisk -- how licensors are trying to protect themselves from adverse case law
• What you really need to know about patents to license them
• What are the big issues facing patent owners trying to license their patents?
• The crucial patent reps and warranties
• What is a "reasonable royalty"?
• The licensee insists on indemnification.  What should you do?

II.  Critical Issues in Joint Development Agreements/Patent Purchases & Sales

• What is the best treatment of joint inventions in JDAs?  The worst?
• Can you keep your joint developer from becoming your competitor?
• Are patent assignments important in JDAs?
• The key provisions in a patent purchase agreement
• What are the landmines in purchasing patents?
• How to conduct due diligence in patent purchases
• Reservation of rights by seller
• Form of agreement:  IP (patent assignment) vs. corporate (asset purchase agreement)?

III.  Analysis of a Patent License Agreement

• The 30-page license agreement:  Where are the land mines?
• Are you a deal killer?  When to kill the deal
• What makes a patent license fair for both sides?
• What are the hot legal buttons?
• Are patent owners becoming more willing to indemnify against patent infringement?
• How far can a patent owner push before the potential licensee walks?
• Using fields of use and territorial restrictions to maximize revenues
• Learn from experienced licensing attorneys using clauses taken from actual agreements
• You want to pay me in what currency?  How to get royalties back to the States
• Does it matter which state's or country's law governs?
• Let's arbitrate in Hawaii!
• When licensees want to pay for prosecution of licensor's patents
• Your patents have expired;  Can you still collect royalties?

IV.  Mock Deal Negotiation of an International Patent License -- Learn the Key Issues from the Licensor & Licensee Points of View; Ethical Considerations in Licensing

• Perspectives of the licensor and licensee on key issues
• Negotiating international issues
• Hot issues in licensing
• Creating win-win negotiations
• Navigating through controversial provisions

V.  Intersection of Ethics & Lawyers Professional Liability in Connection with Patent Licensing Negotiations

• You doubt the validity of your client's patent.
• Any ethical obligation to the licensee?
• When does silence become fraud?
• The parties end up in litigation; Can your firm handle the case if you will have to testify about the negotiation?
• What are the implications of professional liability claims that allege ethical breaches in connection with:  Competence?  Confidentiality of information?  Conflicts of interest?  Declining or terminating representation?
• What adverse consequences are associated with conflicts of interest in patent licensing negotiations?  Disqualification motions and orders, disciplinary actions, forfeiture of fees and malpractice claims

A full program for the Advanced Patent Licensing conference can be found here (New York) and here (San Francisco).  The registration fee for the conference is $1,395. Those interested in registering for the conference can do so here (New York) or here (San Francisco).

PLI Fundamentals of Patent Prosecution Conference

Practising Law Institute (PLI) will be holding a conference entitled: "Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing" on June 18-20, 2008 in New York, NY and on July 9-11, 2008 in San Francisco, CA.  The three-day program will consist of morning lectures followed by small clinic sessions in the afternoon.  The conference will offer presentations on the following topics:

• Taking invention disclosures
• Overview of claim drafting and preparation of patent application
• Claim drafting
• Review of model claims
• Patent prosecution
• Conducting the examiner interview
• Review of model amendment
• Litigation issues

A full program for the Fundamentals of Patent Prosecution conference can be found here (New York) and here (San Francisco).  The registration fee for the conference is $1,395. Those interested in registering for the conference can do so here (New York) or here (San Francisco).

PLI Prior Art & Obviousness Conference

Practising Law Institute (PLI) will be holding a conference entitled: "Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103" on July 1, 2008 in New York, NY.  The conference will offer presentations on the following topics:

I.  Overview of Sections 102 and 103

A.  Section 102 and the MPEP, from (a) to (g) (or what isn't in the statute but is in the law?)

• "Public knowledge" vs. "public use," "in this country"
• When is a patent a "patent": (a) vs. (b) vs. (d)
• Availability on the "web," on the shelf, and routine practices
• The "invention" and "experimental use"
• Date of "invention"
• Abandonment under (c) and (g)
• The foreign origin C.I.P. trap; "claimed or could have claimed"
• Derivation: "authorship" vs. "inventorship"
• 102(g): Inter partes and ex parte and NAFTA/WTO

B.  Section 103 and the PTO KSR Guidelines

• From Jefferson to Graham v. John Deere: A brief history -- how we got here
• The CAFC (Patents-R-Us, the result-oriented court) -- how we got there
• KSR -- our just deserts; can we recover? The PTO Guidelines

II.  Section 102(a) - (d)

A.  102(a) and (b) and the CAFC 2008

• "Public" availability is the vanguard of (a) and (b)
• When is a patent a "patent" under the statute?
• Prior art date for "cancelled" subject matter
• Public accessibility -- on the Web, on the shelf, in the mail, "routine" practices
• Effects of "confidentiality"
• Third-party public use of inventor's own work
• "On sale" by whom and under what circumstances

B.  102(c) and (d): Abandonment and the "Four Steps"

• "Abandonment" and intent of the inventor
• Deliberate surrender of rights
• Four steps to the abyss of (d)
• Do the foreign and U.S. claims have to be the same for (d) to apply?
• The C.I.P. trap
• "Allowed applications" vs. "patents" under (d)

III.  102(f) and (g): Joint Ventures and Co-Development

• Derivation
• "Authorship" vs. "inventorship"
• Conception and communication to "another"
• Ex parte 102(g); abandon, suppress, conceal
• Actual vs. constructive reduction to practice (where (e) trumps (g))
• Diligence
• 102(f) and (g) under 103(c)

IV.  35 USC 103 and the CAFC

• KSR in 2008 in the District Courts
• KSR as implemented by the CAFC
• Where do we go from here?

V. 102(e) and the 9 Most Common Timelines: Effects of Priority Under 119, 120, 121, 365

• What have they done to 102(e)?
• The issues raised by successive common owner filings
• The published U.S. application
• The published international application
• The issued U.S. patent
• Priority under 119, 120, or 365
• A walkthrough of the "guidelines" and "timelines"
• Ethical requirements under 102(a) through (g)

A full program for the Prior Art & Obviousness 2008 conference can be found here.  The registration fee for the conference is $1,395.  Those interested in registering for the conference can do so here.

Conference & CLE Calendar

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30, 2008 - Public PAIR and Data-Mining Requests Webcast (U.S. Patent and Trademark Office)

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

Northwestern JTIP Third Annual Symposium

The Law Journal of Technology & Intellectual Property at the Northwestern University School of Law will be holding its Third Annual Symposium on April 18, 2008 in Chicago, IL.  The Symposium, entitled "Following the Yellow Brick Road:  The Future of Intellectual Property," will consist of the following sessions:

• IP Litigation in the 21st Century - a panel discussion on the difficulties of trying complex patent cases to juries featuring Michael H. Baniak, McDonnell, Boehnen, Hulbert & Berghoff LLP; Daniel A. Boehnen, McDonnell, Boehnen, Hulbert & Berghoff LLP; Jeanne M. Gills, Foley & Lardner LLP; and Binal J. Patel, Banner & Witcoff, Ltd.

• Keynote speaker James W. Dabney, Fried, Frank, Harris Shriver & Jacobson LLP will discuss the future of intellectual property.

• The Pendulum Swings Back:  The Impact of Recent SCOTUS and Federal Circuit Cases - a panel discussion on the impact of recent, signficant Supreme Court and Federal Circuit cases featuring Troy A. Groetken, McAndrews, Held & Malloy, Ltd.; Timothy R. Holbrooke, Chicago-Kent School of Law; Sean Seymore, Northwestern University School of Law; and Donald L. Zuhn, Jr. Ph.D., McDonnell, Boehnen, Hulbert & Berghoff LLP.

• Famous for Fifteen Minutes:  IP and Social Networking - a panel discussion on the IP issues posed by social networking sites featuring Patricia S. Abril, University of Miami; Jonathan Darrow, Plymouth State University; Peter Ludlow, Professor of Philosophy at University of Toronto and Editor of The Second Life Herald; and J. Michael Monahan, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP.

Additional information about the Symposium, including a schedule, list of speakers, and directions can be found at the Symposium's website.  Registration for the Symposium is free (CLE credit is available for a fee of $50 per credit hour).  Those wishing to register can do so here.

Conference & CLE Calendar

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30, 2008 - Public PAIR and Data-Mining Requests Webcast (U.S. Patent and Trademark Office)

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

USPTO News: Webcast Regarding Public PAIR Issues

    By Christopher P. Singer --

Recently, the U.S. Patent and Trademark Office announced that it will hold a webcast on April 30, 2008 at 3:00 pm (EDT) in order to address various issues concerning Public PAIR.  In particular, the Office will address the recent access and response time problems that Public PAIR has faced resulting from of downloads of large amounts of data.  The PTO will address its initial efforts to address this problem using the verification code "reCAPTCHA" security measure (see "USPTO e-Commerce Update and Public PAIR Verification System"), and will discuss potential long-term solutions to the problem.

The PTO is explicitly requesting public input regarding this issue in order to be sure that any permanent system solution will still be able to meet the needs of the IP community.  For those interested in viewing the webcast, you only need to enroll (free) for the event at this link.  Public comments and questions regarding the process of gathering information and requirements of the Public PAIR system can be e-mailed to the following address:  PAIR_webcast@uspto.gov.

Conference & CLE Calendar

April 7, 2008 - Successful Multilateral Patents (Law Seminars International) - Arlington, VA

April 10-12, 2008 - 23rd Annual Intellectual Property Law Conference (American Bar Association) - Arlington, Virginia

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

Conference & CLE Calendar

March 31-April 1, 2008 - Document Management, E-Discovery, and Litigation Readiness (American Conference Institute) - New York, NY

April 1-2, 2008 - IP Summit (Ocean Tomo) - San Francisco, CA

April 3-5, 2008 - Advanced Courses (Patent Resources Group) - Bonita Springs, FL

April 7, 2008 - Successful Mulitlateral Patents (Law Seminars International) - Arlington, VA

April 10-12, 2008 - 23rd Annual Intellectual Property Law Conference (American Bar Association) - Arlington, Virginia

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 16, 2008 - Prior Art & Obviousness 2008: The PTO and CAFC Perspective on Patent Law Sections 102 & 103 (Practising Law Institute) - San Francisco, CA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

June 23, 2008 - Multilateral Patents (Law Seminars International) - San Francisco, CA

***Patent Docs is a media sponsor of this conference or CLE

PLI Prior Art & Obviousness 2008 Conference

    By Donald Zuhn --

Practising Law Institute (PLI) will be holding a conference entitled: "Prior Art & Obviousness 2008:  The PTO and CAFC Perspective on Patent Law Sections 102 & 103" on June 16, 2008 in San Francisco, CA.  The conference will offer presentations on the following topics:

• Section 102 and the MPEP, from (a) to (g) (or what isn't in the statute but is in the law?)
• Section 103 and the PTO KSR Guidelines
• 102(a) and (b) and the CAFC 2008
• 102(c) and (d):  Abandonment and the “four steps”
• 102(f) and (g):  Joint ventures and co-development
• Section 103 and the CAFC
• 102(e) and the 9 most common timelines:  Effects of priority under 119, 120, 121, 365

A full program for the Prior Art & Obviousness 2008 conference can be found here.  The registration fee for the conference, which will also be webcast on June 16th, is $1,395.  Those interested in registering for the conference can do so here.

LSI Multilateral Patents Workshop

    By Donald Zuhn --

Law Seminars International (LSI) will be holding a workshop on Successfully Drafting Multilateral Patents on June 23, 2008 in San Francisco, CA.  The workshop will provide information on:

• Successful international patent preparation and prosecution.
• Managing multilateral patent procurement.
• Selecting foreign jurisdictions most appropriate for patent applications.
• Fast track patenting.
• Industry specific trends in global prosecution.
• Drafting specification and claims in a multilateral patent application.
• Country-specific considerations for litigation overseas.

In particular, LSI's faculty will offer presentations on the following topics:

-- Focus on Europe:

• Prosecution trends;
• Analysis of practice on divisional applications;
• Impact of the EPC Revision Act;
• The effects of the London Agreement;
• Formal requirements for the description and claims in the EPO;
• Recent case decisions affecting how descriptions and claims should be drafted for success;
• EPO operational issues.

-- Focus on Japan:  Successful Preparation and Prosecution

• How the JPO determines lack of inventive step;
• How the description and claims should be drafted for success.

-- Focus on Korea:  Successful Preparation and Prosecution

• Preparing specifications and claims to maximize patent protection in Korea;
• Tips and strategies for expediting Korea patent prosecution.

-- Focus on China:  Successful Preparation and Prosecution

• Perspectives and suggestions on patent prosecution in China;
• The current patent system and development trends of patent law in China.

-- Fast Track Patenting

• Using new fast track programs including U.S. accelerated examination, Patent Prosecution Highway, and New Route, and similar efforts in other countries;
• Risks of fast track patenting;
• Compare and contrast schemes - speed and effectiveness;
• Impact on pendency and enforcement.

-- Key Industry-Specific Trends in Global Prosecution

-- Drafting Specification and Claims in a Multilateral Patent Application

• Can a U.S. application be drafted for later successful foreign prosecution with minimal changes in the specifications?
• Proposed form introduced;
• Interactive panel addressing benefits and drawbacks;
• Drafting issues;
• Multiple jurisdiction claims.

-- Interpreting Claims and Litigating Patents Overseas:  Country-Specific Considerations

The agenda for the Multilateral Patents workshop can be found here.  A complete brochure for this workshop, including an agenda, list of speakers, and registration form can be downloaded here.

The registration fee is $347.50 for students and new employees, $545 for government employees, or $695 for all other attendees. Those interested in registering for the conference can do so here, by calling 1-800-854-8009, or by faxing a registration form to 1-206-567-5058.

Conference & CLE Calendar

March 30-April 1, 2008 - Advanced Courses (Patent Resources Group) - Bonita Springs, FL

March 31-April 1, 2008 - Document Management, E-Discovery, and Litigation Readiness (American Conference Institute) - New York, NY

April 1-2, 2008 - IP Summit (Ocean Tomo) - San Francisco, CA

April 3-5, 2008 - Advanced Courses (Patent Resources Group) - Bonita Springs, FL

April 7, 2008 - Successful Mulitlateral Patents (Law Seminars International) - Arlington, VA

April 10-12, 2008 - 23rd Annual Intellectual Property Law Conference (American Bar Association) - Arlington, Virginia

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 15, 2008 - The Federal Circuit: A National Court of Appeals: Addressing New Challenges (U.S. Court of Appeals for the Federal Circuit) - Washington, DC

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

***Patent Docs is a media sponsor of this conference or CLE

CAFC Judicial Conference

    By Donald Zuhn --

The U.S. Court of Appeals for the Federal Circuit will be holding a Judicial Conference entitled "The Federal Circuit: A National Court of Appeals: Addressing New Challenges" on May 15, 2008 in Washington, DC.  Topics and speakers at the conference will include:

• State of the Court -- Chief Judge Paul Michel
• Federal Circuit Rules Update -- Jan Horbaly, Circuit Executive and Clerk of the Court
• Mediation Program Update -- James Amend, Chief Circuit Mediator
• Litigation Today: The View from the Trial Court -- panel moderated by Senior Circuit Judge S. Jay Plager, and including Roderick McKelvie, Covington & Burling LLP; District Judge Kathleen O'Malley; Judge Donald Pogue; Judge Mary Ellen Coster Williams; and District Judge William Young
• Litigation Today: The View from the Parties -- panel moderated by Senior Circuit Judge Raymond Clevenger, and including Andrew Cadel, JP Morgan Chase & Co.; Shelia Cheston, BAE Systems; Jeanne Davidson, U.S. Department of Justice; James Johnson, Procter & Gamble; and David Kappos, IBM Corp.
• En Banc Session of the U.S. Court of Appeals for the Federal Circuit -- moderated by Senior Circuit Judge Daniel Friedman, and including Chief Judge Paul Michel and Circuit and Senior Circuit Judges Pauline Newman, Haldane Robert Mayer, S. Jay Plager, Alan Lourie, Raymond Clevenger, Randall Rader, Alvin Schall, William Bryson, Arthur Gajarsa, Richard Linn, Timothy Dyk, Sharon Prost, and Kimberly Moore
• Luncheon Speaker Paul Clement, U.S. Solicitor General
• The Circuit Mediation Program -- James Amend, Chief Circuit Mediator and Wendy Dean, Circuit Mediator Officer
• Patent Issues Ripe for Judicial Clarification -- panel moderated by Professor Lisa Dolak, Syracuse University College of Law, and including District Judge Patti Saris; District Judge Liam O'Grady; Meredith Martin Addy, Brinks Hofer Gilson & Lione; Morgan Chu, Irell & Manella LLP; William Lee, WilmerHale; Professor Margo Bagley, University of Virginia School of Law; and Associate Professor Joseph Miller, Lewis & Clark Law School.

The program for the conference can be found here.  The registration fee ranges from $225 (for government employees) to $275 (general registration).  Those interested in registering for the conference can do so here.

Conference & CLE Calendar

March 17, 2008 - Recent Decisions: How They Affect Your Corporate IP Practice (Intellectual Property Owners Association) - Arlington, VA

March 30-April 1, 2008 - Advanced Courses (Patent Resources Group) - Bonita Springs, FL

March 31-April 1, 2008 - Document Management, E-Discovery, and Litigation Readiness (American Conference Institute) - New York, NY

April 1-2, 2008 - IP Summit (Ocean Tomo) - San Francisco, CA

April 3-5, 2008 - Advanced Courses (Patent Resources Group) - Bonita Springs, FL

April 7, 2008 - Successful Mulitlateral Patents (Law Seminars International) - Arlington, VA

April 10-12, 2008 - 23rd Annual Intellectual Property Law Conference (American Bar Association) - Arlington, Virginia

April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA

April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA

May 28-30, 2008 - PharmaBiotech IP Summit (Worldwide Business Research) - Philadelphia, PA

June 17-20, 2008 - BIO International Convention (Biotechnology Industry Organization) - San Diego, CA

***Patent Docs is a media sponsor of this conference or CLE

Ocean Tomo Announces Agenda for Spring 2008 Live IP Auction & Summit

    By Christopher P. Singer --

Ocean Tomo will be holding its Live IP auction this spring at the Ritz-Carlton in San Francisco on April 1-2, 2008.  The two day program is divided into two separate tracks, with one track titled "Leveraging IP for Investors" and the other titled "Corporate IP Strategies."  The scheduled programs will include over 50 speakers from an array of corporations, law firms, and universities.  The schedule for each track, including topics and speakers, can be viewed here.  The Live IP Auction is scheduled to be held on the afternoon of April 2.  The online edition of the Auction Catalogue can be viewed here.