Knobbe Martens Partner Joseph Re presented at the Washington State Patent Law Association (WSPLA) event "Patent Prosecution Through the Eyes of a Patent Litigator" on Wednesday, September 19, from 12:00 p.m. to 1:30 p.m. View these slides for an in-depth view of patent prosecution and how recent court decisions have impacted IP law.
Our panel of Knobbe Martens partners hosted this complimentary and informative webinar to discuss the state of software and hardware IP protection and enforcement.
Challenges to obtaining broad software and hardware IP protection are coming from every side. The Supreme Court may decide this year whether certain software even qualifies as patentable subject matter. The USPTO is also examining certain types of software applications with higher scrutiny.
Many recent decisions at the Federal Circuit have made it harder to enforce the IP that you do obtain. In addition to those difficulties, pending patent reform legislation may force a “loser pays” approach in court, where a company may have to pay millions of dollars in legal fees if they don’t win their litigation.
Our panel explained these issues, and provided real-world strategies to help maximize the protection and enforcement of your intellectual property.
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
Knobbe Martens hosted a Pre-Conference Workshop on Monday, October 15, 2012, at the IN3 Medical Device Summit in San Francisco. Knobbe Partners Paul Conover, Curtis Huffmire, and Karen Vogel Weil presented a “Patent Update for Medical Device Companies.” This forum took place in the hub of device investment and innovation in the San Francisco Bay Area, and brought together a diverse group of medtech’s key thought leaders to candidly discuss the critical issues that will define the future of all players in the evolving device space.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Licensing to Foreign Manufacturers Satisfies Domestic Industry
Appeal Found to Be Moot in Light of “Side Bet”
Mere Design Choice Leads to Obviousness Finding
Design Patent Infringement Complaint Survives Dismissal
Knobbe Martens Partner Joseph Re presented at the Washington State Patent Law Association (WSPLA) event "Patent Prosecution Through the Eyes of a Patent Litigator" on Wednesday, September 19, from 12:00 p.m. to 1:30 p.m. View these slides for an in-depth view of patent prosecution and how recent court decisions have impacted IP law.
Our panel of Knobbe Martens partners hosted this complimentary and informative webinar to discuss the state of software and hardware IP protection and enforcement.
Challenges to obtaining broad software and hardware IP protection are coming from every side. The Supreme Court may decide this year whether certain software even qualifies as patentable subject matter. The USPTO is also examining certain types of software applications with higher scrutiny.
Many recent decisions at the Federal Circuit have made it harder to enforce the IP that you do obtain. In addition to those difficulties, pending patent reform legislation may force a “loser pays” approach in court, where a company may have to pay millions of dollars in legal fees if they don’t win their litigation.
Our panel explained these issues, and provided real-world strategies to help maximize the protection and enforcement of your intellectual property.
The second breakout session was directed to attendees in the information technology (IT) and biotechnology sectors, with discussion about the recent Alice v. CLS Bank Supreme Court decision.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
Knobbe Martens hosted a Pre-Conference Workshop on Monday, October 15, 2012, at the IN3 Medical Device Summit in San Francisco. Knobbe Partners Paul Conover, Curtis Huffmire, and Karen Vogel Weil presented a “Patent Update for Medical Device Companies.” This forum took place in the hub of device investment and innovation in the San Francisco Bay Area, and brought together a diverse group of medtech’s key thought leaders to candidly discuss the critical issues that will define the future of all players in the evolving device space.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Licensing to Foreign Manufacturers Satisfies Domestic Industry
Appeal Found to Be Moot in Light of “Side Bet”
Mere Design Choice Leads to Obviousness Finding
Design Patent Infringement Complaint Survives Dismissal
Knobbe Martens' attorneys Brenden Gingrich and Kathleen Mekjian conducted a workshop on Sunday, May 5, 2012 at the 99th Annual Meeting of The American Association of Immunologists (AAI), entitled "Monetizing Your Intellectual Property: Protecting Ideas that Generate Income." This presentation explores the types of research innovations that are protectable and provides practical tips for protecting innovations while avoiding some common pitfalls, which can compromise intellectual property.
“IP News You Need To Know” featured a discussion of significant recent court decisions and the latest trends from the U.S. Patent Office involving inter partes review (IPR) proceedings and other proceedings.
Partner Michael Guiliana presented on "Best Practices for Employee, Contractor and Consulting Agreements" at the Association of Corporate Counsel - Southern California Chapter "DoubleHeader" event.
In view of the U.S. approval process for biosimilars, companies are gearing up to either produce their own biosimilar products, or to defend against their entry onto the market. While the Biologics Price Competition and Innovation Act (BPCIA) spells out many of the requirements, the pathway for approval is complicated. Our panel of experts discuss the features of the BPCIA and how it operates for both approved biologics as well as biosimilar entrants. They also make some predictions on its impact for life science companies.
The webinar is 60 minutes, complete with Q&A.
Our panel discussed the state of software patent eligibility after Alice Corp v. CLS Bank International in a recent webinar.
Since the Supreme Court's decision last year in Alice v. CLS Bank, business method and software-based patents have been invalidated at an alarming pace. The basis for invalidation has been "ineligible" subject matter under 35 USC § 101, despite the fact that the Supreme Court clearly stated that such software inventions were not per se unpatentable. This phenomenon has resulted in an "analysis paralysis" in the PTO which has brought new business method and software-based patent issuance to a virtual standstill. Recently, however, Knobbe Martens software prosecution teams have found success in overcoming § 101 rejections by PTO examiners.
Topics include:
- Aligning patent filing strategies with the company’s business goals
- Understanding the importance of the initial disclosure
- Analyzing PTO methods and processes in classifying and assigning applications for examination
- Preparing the application to focus on technical innovations and not business methods
- Developing claim strategies that satisfy § 101
- Interviewing and expediting prosecution to overcome § 101 rejections and push to issuance
- Using issued software patents to further short and long term competitive strategies
Knobbe attorneys presented "Post Issuance Inter Partes Disputes" at a recent seminar held in Japan. The topics for this presentation are: AIA's changes to post-issuance disputes (third party challenges to issued patents); practice and procedure; and how do the new proceedings operate?
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
On March 30 and 31, 2017, Knobbe Martens attorneys presented written and oral educational material at an IP Seminar Series “Overseas Intellectual Property Rights Protection for Chinese Enterprises” sponsored by CHOFN, a Chinese IP law firm in Guangzhou and Shenzhen, China.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorney Andrew H. Simpson presented on "What You Need to Know About Patent Filing and Litigation in Europe", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
The Federal Circuit Review monthly newsletter is now available. This month’s newsletter covers the latest decisions handed down from the Federal Circuit:
Otsuka Pharmaceutical Co. v. Sandoz Inc.; In Re Youman; In re Montgomery; Leader Technologies, Inc. v. Facebook, Inc.; Apple, Inc. v. Samsung Electronics Co., Ltd.; In Re Baxter International, Inc.; Mintz v. Dietz & Watson, Inc.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
Sharing slides from my presentation at the Legal Tech Fair 2018. Loved the idea of engaging on the inter-play of blockchain and the law!
The attached slides are intended to discuss:
1. The basics of blockchain;
2. the applicability of existing laws to blockchain; and
3. what blockchain (and smart contracts) mean for lawyers and the legal profession.
Reach out to have a chat and exchange thoughts!
Knobbe Martens' attorneys Brenden Gingrich and Kathleen Mekjian conducted a workshop on Sunday, May 5, 2012 at the 99th Annual Meeting of The American Association of Immunologists (AAI), entitled "Monetizing Your Intellectual Property: Protecting Ideas that Generate Income." This presentation explores the types of research innovations that are protectable and provides practical tips for protecting innovations while avoiding some common pitfalls, which can compromise intellectual property.
“IP News You Need To Know” featured a discussion of significant recent court decisions and the latest trends from the U.S. Patent Office involving inter partes review (IPR) proceedings and other proceedings.
Partner Michael Guiliana presented on "Best Practices for Employee, Contractor and Consulting Agreements" at the Association of Corporate Counsel - Southern California Chapter "DoubleHeader" event.
In view of the U.S. approval process for biosimilars, companies are gearing up to either produce their own biosimilar products, or to defend against their entry onto the market. While the Biologics Price Competition and Innovation Act (BPCIA) spells out many of the requirements, the pathway for approval is complicated. Our panel of experts discuss the features of the BPCIA and how it operates for both approved biologics as well as biosimilar entrants. They also make some predictions on its impact for life science companies.
The webinar is 60 minutes, complete with Q&A.
Our panel discussed the state of software patent eligibility after Alice Corp v. CLS Bank International in a recent webinar.
Since the Supreme Court's decision last year in Alice v. CLS Bank, business method and software-based patents have been invalidated at an alarming pace. The basis for invalidation has been "ineligible" subject matter under 35 USC § 101, despite the fact that the Supreme Court clearly stated that such software inventions were not per se unpatentable. This phenomenon has resulted in an "analysis paralysis" in the PTO which has brought new business method and software-based patent issuance to a virtual standstill. Recently, however, Knobbe Martens software prosecution teams have found success in overcoming § 101 rejections by PTO examiners.
Topics include:
- Aligning patent filing strategies with the company’s business goals
- Understanding the importance of the initial disclosure
- Analyzing PTO methods and processes in classifying and assigning applications for examination
- Preparing the application to focus on technical innovations and not business methods
- Developing claim strategies that satisfy § 101
- Interviewing and expediting prosecution to overcome § 101 rejections and push to issuance
- Using issued software patents to further short and long term competitive strategies
Knobbe attorneys presented "Post Issuance Inter Partes Disputes" at a recent seminar held in Japan. The topics for this presentation are: AIA's changes to post-issuance disputes (third party challenges to issued patents); practice and procedure; and how do the new proceedings operate?
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
On March 30 and 31, 2017, Knobbe Martens attorneys presented written and oral educational material at an IP Seminar Series “Overseas Intellectual Property Rights Protection for Chinese Enterprises” sponsored by CHOFN, a Chinese IP law firm in Guangzhou and Shenzhen, China.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorney Andrew H. Simpson presented on "What You Need to Know About Patent Filing and Litigation in Europe", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
The Federal Circuit Review monthly newsletter is now available. This month’s newsletter covers the latest decisions handed down from the Federal Circuit:
Otsuka Pharmaceutical Co. v. Sandoz Inc.; In Re Youman; In re Montgomery; Leader Technologies, Inc. v. Facebook, Inc.; Apple, Inc. v. Samsung Electronics Co., Ltd.; In Re Baxter International, Inc.; Mintz v. Dietz & Watson, Inc.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
This presentation describes history and impact of Alice decision in 2014. It also lists out key court decisions and important examples in USPTO guideline. Finally, it provides key take-aways and recommendations.
Sharing slides from my presentation at the Legal Tech Fair 2018. Loved the idea of engaging on the inter-play of blockchain and the law!
The attached slides are intended to discuss:
1. The basics of blockchain;
2. the applicability of existing laws to blockchain; and
3. what blockchain (and smart contracts) mean for lawyers and the legal profession.
Reach out to have a chat and exchange thoughts!
Archiving and e-Discovery for Novell GroupWiseNovell
With an increase in regulations and internal policies governing data retention, e-mail has come into the spotlight. In fact, securing and preserving e-mail data is more important than ever before. Attend this session to hear the perspective of a legal expert in e-mail archiving and e-Discovery. We'll also discuss the options available for addressing this need through our partners, many of whom have significant expertise in this area.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
Document Retention Policies Intersect Electronic Discovery Obligations - by M...SHIMOKAJI IP
There is an entitlement to electronic discovery, while a document retention policy can provide a safe harbor. What are the duties to preserve documents, and what are the risks of destruction?
Webcast Slides--Gibson Dunn 2012 Year-End Report and Hot TopicsGareth Evans
These are the slides from our Webcast on the Gibson Dunn 2012 E-Discovery Year-End Report. Watch for our 2013 Mid-Year E-Discovery Report around the end of June.
Topics covered in this month’s patent group presentation include information about the current backlog of patent applications at the United States Patent and Trademark Office (USPTO), new rules regarding derivation proceedings, a practice tip for releasing search results to the European Patent Office, proposed USPTO ethics rules codifying with the ABA rules, patentability of computer software, and recent cases about inter partes reexamination.
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
Similar to Patent Eligible Subject Matter and High Tech Inventions (20)
Partner Ben Anger discusses the latest developments and advanced strategies for PTAB practice, specifically focused on the petitioner side. Ben covers issues related to selecting the prior art, anticipation versus single-reference obviousness, motivation to combine, post-institution practice, and more.
Partners Susan Natland and Jessica Sganga discussed potential trademark and copyright issues in the emerging metaverse, including the surge in popularity of NFTs (non-fungible tokens) and how they may affect intellectual property protections. Get up-to-speed on the “hot” cases in this evolving area and get practical tips on how best to protect your intellectual property from infringement in this virtual space.
Speakers: Susan Natland, Jessica Sganga
Knobbe partners Jeff Van Hoosear (OC) Jason Jardine (SD) and associate Julia Hanson (SD) recently gave a presentation at San Diego Fashion week on intellectual property for designers and artists. The presentation explored what IP is, why it is important to designers, top 5 misconceptions, how to get a copyright, how to get a trademark and how to get a design patent.
Partner Mauricio Uribe continued the two-part, comprehensive discussion on responding to IP threats and assertions. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios.
Speakers: Mauricio Uribe
Partners Melanie Seelig and Mauricio Uribe kicked off a two-part, comprehensive discussion on responding to IP threats and assertions. The presentation served as an introduction to the topic and provided more general information.
Speakers: Melanie Seelig and Mauricio Uribe
Partner Mauricio Uribe continued the two-part, comprehensive discussion on open-source software and third-party vendors. The presentation focused on a more detailed exploration of the topic and strategic implications for various scenarios.
Speakers: Mauricio Uribe
Partner Jason Gersting, Ph.D. moderated a panel of his peers in a discussion about learning how to identify the waves in current written description and enablement law and tips for smoothly riding them to expand, enhance and protect life sciences intellectual property rights. Panelists included Knobbe Martens partners Jessica Achtsam, Eric Furman, Ph.D., and Dan Altman.
Partner Mauricio Uribe kicked off a two-part, comprehensive discussion on open-source software and third-party vendors. The presentation served as an introduction to the topic and provided more general information.
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Speakers: Mauricio Uribe
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Speakers: Mauricio Uribe
Partners Mauricio Uribe and Vlad Lozan gave an informative presentation on design patent law in the United States. The partners provided best practices for filing and prosecuting design patents in the U.S. and techniques and strategies for including multiple design embodiments in design patent applications. They also discussed how to identify and protect visual elements in computer-related technologies and how to integrate design patents into a holistic intellectual property strategy.
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Speakers: Melanie Seelig and Mauricio Uribe
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Speakers: Melanie Seelig and Mauricio Uribe
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Speakers: Mauricio Uribe, Vlad Teplitskiy
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Speakers: Melanie Seelig and Maria Stout
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Patent Eligible Subject Matter and High Tech Inventions
1. Patent Eligible Subject Matter and High
Tech Inventions Eric Nelson
October 19, 2012 Tokyo
The recipient may only view this work. No other right or license is granted. knobbe.com
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Eric.Nelson@knobbe.com
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