Master Class 1

Introducing the PCT Alternative - Better, Faster and Literally, Without a Doubt. (Open to In House Professionals Only)

 

In this Master Class we will address most substantial applicant concerns relating to the patent process, by reconfiguring global strategy filing and prosecution. We will present a smart fabrication of local prosecution, global conventions and PPH schemes that yields the best of the “significant worlds”. We will review the required paradigm shift, its essentials, tricks and tweaks, that have been refined over a decade of experience with multiple cases.

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Faculty: Eliav Korakh, founding partner at Korakh & Co.

Eliav Korakh graduated from Tel Aviv University (B.Sc., Physics, 1990; LL.B., 1995), became a registered Patent Attorney in 1993, and was admitted to the Israeli bar in 1997, where after in 1998 he became founding partner at Korakh & Co. Throughout the years, in parallel Eliav served in the Israeli Defense Forces mainly in the field of computer system analysis applying as well as enhancing his knowledge.
Eliav's fields of practice include Intellectual Property Law, Patent and Trademark Prosecution, predominantly directed towards US and international practices. In particular expertise in the fields of:  Computer Hardware & Software, Tele-Communications, Optics, Applied Mathematics & Physics, Electronics and Medical Devices. 
 

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Master Class 2

You Have the Right to Remain Silent: The Intersection of Civil and Criminal Liability for Trade Secret Misappropriation, Competing Jurisdictions and Implications for Disputed Inventorship

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Trade Secret litigation has far ranging implications for plaintiffs and defendants. Having domestic and international dimensions, claims brought under the Federal Defend Trade Secrets Act, 18 U.S.C. § 1836, often raise issues that cross international borders, give rise to civil and criminal proceedings, all of which may affect patent ownership and inventorship. 

 

Topics will include:

• Jurisdiction and extraterritorial enforcement;

• Government investigations, grand jury subpoenas, indictments and co-pending criminal proceedings under 32 U.S.C. § 1831-32;

• Implications affecting validity, ownership and inventorship of pending patent applications and issued patents;

• Discovery, forensics and cross-border implications of national data and privacy laws; 

• Civil and criminal penalties for misappropriation, including sanctions under the newly-enacted Protecting American Intellectual Property Act of 2022.

 

​Faculty: Adam Samansky, Member, Mintz

Adam’s practice focuses on intellectual property litigation. He handles patent, trademark, and trade secret matters on behalf of innovators and investors in various industries. His core practice includes patent and trade secret litigation involving complex technologies in the pharmaceutical, medical, high-tech, and defense industries.

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Master Class 3

U.S. Design Patents -- A Cost-Effective, Valuable Addition to a Well-Rounded IP Portfolio

 

Why limit yourself to utility patents and trademarks?  Innovative companies—from consumer products and medical device companies to heavy equipment makers and software companies—rely on design patents to protect their innovative product designs.  Recent developments in the law mean that design patents are often a critical component to a well-development IP portfolio.

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This master class focuses on design patents basics and advanced strategy in the United States, including:

• Overview of design patents and why today companies big and small rely on them

• Key points of design patent prosecution in the U.S., including a comparison with utility patents and trade dress (passing off)

• Understanding how design rights can be challenged in the U.S., at both the U.S. Patent and Trademark Office and in court

• Effectively enforcing your design rights, including special considerations for design patents, as well as assertion with other forms of IP

• Learning how damages are calculated for design patents in the U.S., with case law examples

 

If you invest in product or user interface design, you must understand how to protect that investment. Design patents can be an effective tool for doing so, if they are deployed strategically and thoughtfully.

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Faculty: Beth Ferrill and Elliot Cook, Finnegan

Elizabeth Ferrill is a partner in Finnegan LLP’s Washington, DC office, focusing on design patents, including prosecution and litigation, including jury trial.  Intellectual Asset Management named her one of seven top design patent professionals in the U.S.  Beth is the Editor-in-Chief of Comparative Global Design Law, published by Bloomberg Law.  She also co-leads Finnegan’s women’s business initiative.

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Elliot Cook, Partner at Finnegan, maintains a diverse intellectual property practice, including patent litigation, post-grant patent challenges, patent prosecution, and patent monetization. Mr. Cook focuses on helping clients strategically develop patent portfolios that effectively block competitors and build corporate value.

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Master Class 4

Incentivizing the Development of Patent Portfolios:  Inventor Awards and Recognition - What Works and What Doesn’t?

Developing a meaningful and valuable patent portfolio within a company or organization is critical but can be challenging. It’s imperative to encourage your would-be inventors and management to pursue and identify relevant inventions, assess the potential impact on the company’s success, and decide which inventions to pursue for potential patent protection.

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However, before management can decide on candidate inventions, the would-be inventors often need to be properly incentivized to develop and identify suitable inventions to bring to management's attention.

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Various types of incentives can be offered, including monetary, peer recognition, career advancement, and the like. However, if not done properly, based on the culture and objectives of the company or organization, such initiatives can sometimes backfire or create unintended consequences.

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This Master Class will discuss various options for providing inventor awards and recognition, including “war stories” (good and bad), to find the right balance in providing incentives and recognition to your employee inventors.

 

Faculty: Greg Kirsch, Smith Gambrell Russell  

Greg Kirsch is a partner and Head of the Intellectual Property (IP) Dept. at Smith, Gambrell & Russell, LLP, a full-service law firm of 280 lawyers, including 30 IP attorneys and patent agents.  Greg’s legal practice focuses on patent law matters, with clients ranging from small start-ups to major tech companies, as well as universities located in the United States, Israel, and other countries.  In addition to his full-time legal practice, Greg is an adjunct professor of patent/IP law at Emory University School of Law (Atlanta) and Washington University School of Law (St. Louis).

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Faculty: Cary Levitt, Cary Levitt Consulting Services

Cary is an accomplished IP executive with an entrepreneurial focus, including roles as IP Consultant with Hyperion, an Epiq Company; Chief IP Counsel of a global industrial company, General Counsel of start-up and a publicly traded company, and Chief Operating Officer of a global IP services business.  Cary's success has been fueled by curiosity, collegiality, and commitment with a creative approach to legal service delivery.    Cary has enjoyed diverse experiences that have furnished him with skills directed to: (i) business strategy and leadership, (ii) procurement and exploitation of patents, and (iii) operational excellence – and combining those skills to add value.  Cary also has a family heritage in the IP industry, as his father was Chief Patent Counsel of Merck and his son is a US patent attorney with Pearl Cohen.

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Master Class 5

IP and Patents as Essential and Strategic Business Tools

By delaying the progress of handling IP, companies adopt a stance of disregard for one of the steps for raising the companies’ commercial value. The question to be addressed, in current times, should not be whether or not a company needs an IP strategy or whether IP should be formulated or filed to protect the company’s assets, but rather which IP type best serves the company’s dynamic business goals, such that the company may reach its next substantial stage with the highest value.

 

This masterclass focuses on IP as business tools, and includes the following topics:

• IP in modern times 

• Types of IP and their use

• Discussion of trends in IP filings

• Discussion of trends in technologies

• Computer-implemented inventions

• China and IP

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Faculty: Saleit Shahar, Reinhold Cohn Group (RCG)

Saleit Shahar is a Partner at the Reinhold Cohn Group (RCG), specializing in building effective IP portfolios for clients, from startup companies to multi-national companies, which serve the clients’ dynamic business goals, while increasing their commercial value. Saleit focuses on patents and specializes in drafting and prosecuting patent applications in computer-related inventions, including AI/ML/DL, Virtual/Augmented/Mix Reality worlds, Cyber Security, Blockchain technology, Big Data, Digital Health, Cloud Computing, Network Communications, IoT, Automotive, Digital Media and E-commerce, Fintech, Gaming, and more. Saleit is responsible for prosecution in Israel handled by the Hi-Tech department of RCG, and her expertise and knowhow greatly assisted in formulating the current Israeli Patent Office examination guidelines for computer-related inventions.

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Master Class 6

Things Your Patent Attorney Doesn’t want you to Know: The Secret Spices of Patent Appeals

Bonus add-on: 

AI as the Inventor - The Current and PREDICTED USPTO and US Court's view of AI-made inventions including OpenAI (ChatGPT)   Greenberg Traurig Offices (13.30 Lunch) 14.00 – 16.30  

Most Applicants believe that the only viable alternatives to receiving a Final Office Action from the U.S. Patent Office are filing a Request for Continued Examination (RCE), filing a new application (such as a Continuation or Divisional), or abandoning the application altogether. Applicants are frustrated by the prospect of continuing to present the same arguments to the same Examiner, often with the same results. Companies make the mistake of failing to consider appealing the Examiner’s decision to the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB). Most Applicants fail to realize that the appeal process is much shorter, less expensive, and more straightforward than they had imagined. This Master Class will provide practical tips and tools for companies to be able to understand the Patent Appeals process better, when it is advisable to opt for an appeal, and what steps are key to succeeding. Join us for a hybrid Master Class that includes the “Dos and Don’ts” of Patent Appeals and a live mock appeal court argument.

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Topics will include:

• The ABCs of Preparing for an Appeal

• The historical avoidance of Israeli firms to appeal during patent prosecution

• Cases in which it is advisable to appeal to the Patent Trial and Appeal Board (PTAB) after receiving a final rejection, including 35 USC 101 considerations

• The Pre-Appeal Conference to break the endless examination loop with the same Examiner

• Demystifying the decision-making process of judges and the changing attitude of the PTAB

• The STH steps of appealing to court: Setup of appeal, right Timing and How the process should work

• Whether to have Oral Arguments in front of judges: cost vs. benefits

 

BONUS ADD - ON

AI as the Inventor - The Current and PREDICTED USPTO and US Court's view of AI-made inventions including OpenAI (ChatGPT)

  

• Overview of AI-made inventions and an analysis of the current US patent law implications of naming the correct inventor

• Considerations when avoiding the naming of AI made inventions as an inventor including claim drafting

• Confidentiality and privilege considerations when using OpenAI in the patenting process

 

Faculty: Barry Schindler, Philip Hoffmann and Dr. Mark Ruberto

Barry Schindler: With over 30 years of experience in handling all aspects of patent prosecution and IP protection, Barry is the Co-Chair of Greenberg Traurig's Global Patent Prosecution Group, which handles 1,600 domestic and foreign applications per year.

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Philip Hoffmann: Philip is an ex-PTAB judge with over 600 appeal decisions and more than 20 years of experience in representing clients in intellectual property matters, with an emphasis on PTAB proceedings, patent prosecution, portfolio management and IP counseling.

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Dr. Mark Ruberto: With 20 years of industrial experience, including an R&D Project Leader at Intel Corporation, Mark is an experienced Patent Agent who prepares and prosecutes patent applications, conducts patentability evaluations, and prepares corporate due diligence IP Assessments.