Post Grant Proceedings

SVIPLA 6-21-18 – “Post Grant Proceedings Before the European Patent Office and the USPTO”

  • 21 Jun 2018
  • 6:00 PM – 8:00 PM
  • Crowne Plaza Hotel, Palo Alto, CA

Registration


SVIPLA June 2018 Program

“Post Grant Proceedings Before the European Patent Office and the USPTO – Differences and Similarities Between the Proceedings”

Thursday, June 21, 2018

Crowne Plaza Hotel
4290 El Camino Real, Palo Alto (just north of San Antonio Road)

6:00 p.m. – Registration, Networking and Cocktails
6:30 p.m. – Buffet Dinner
7:00 p.m. – 8:00 p.m. – Program

Thank you to our sponsor:
CARDINAL Intellectual Property

PROGRAM:
Please join us for a panel discussion on European opposition proceedings and their differences with inter partes reviews. During the seminar the post grant proceedings of two of the main worldwide recognized patent systems, the opposition/appeal proceedings and the Post Grant Proceeding (PGR) and Inter Parties Proceedings (IPR) will be discussed and compared.The panelists will focus on the strategic use of such procedures as tools for managing the relations with the competitors.

Discussion to include:

  • EP patentability, including novelty, inventive step, and problem-solution approach
  • Grounds for opposition
  • Burden of proof
  • Procedure
  • Strategy
  • Appeal

SPEAKERS:
Andrea Tiburzi, Barzanò & Zanardo
Andrea is an electronic engineer and a European patent attorney with particular expertise in patent prosecution, multinational client counseling, and IP litigation before the European Patent Office as well as Italian courts, with an emphasis on electronics, AI and software patent protection. Andrea also deals with financial valuation of intellectual property rights and with counseling multinational clients on the matters.

About Barzanò & Zanardo: the firm was established in 1878. It is one of the oldest European IP firms.The group has two head offices, located in Roma and Milan, and five branch offices in Turin, Vicenza, Biella, Rimini and Pordenone, with 190 employees, including 65 IP consultants. the firm takes care of the intellectual property rights of multinational European and extra-EU companies, and it is therefore assisted worldwide by carefully selected local agents in order to cope with any kind of IP issues, whether it is legal, technical, financial, tax or corporate related.

Andy Piatnicia, Founder, Piatnicia Legal
Andy is a patent litigator and a registered patent attorney, who also conducts inter partes reviews and counsels on patents, including patent portfolios. A former design engineer and registered professional engineer, he has Bachelor and Masters degrees in electrical engineering and handles a variety of technologies. Andy started his firm Piatnicia Legal in 2011. Before that, Andy was a partner at Howrey LLP.

About Piatnicia Legal: the firm handles matters of various sizes and complexities. On particular matters with client consent, Piatnicia Legal associates with legal personnel including independent and experienced lawyers.

Moderator: Nathan Frederick, Cardinal Intellectual Property, Director, IP Services
Nathan manages Cardinal’s corporate and law firm accounts, concentrating on IP Search, E-Discovery, Valuation, Patent Monetization, and Competitive Monitoring products and services. He is the author and editor of various CLE presentations, most notably “Post Grant Review Strategy – Choose Wisely” which he has presented at various recent events. Prior to joining Cardinal, Nathan’s industry experience includes both litigation and prosecution work at two major international law firms and software programming at a Fortune 500 company.

About Cardinal Intellectual Property: as the leading IP services company in the United States, the USPTO selected Cardinal Intellectual Property to conduct their PCT searches and prepare preliminary opinions across all subject categories. For patent searching, Cardinal offers an experienced team of over 150 U.S.-based research professionals, more than half holding Masters, Ph.D.s, and/or J.D.s. Cardinal also provides expertise and customized solutions for 91 of the AM Law 100 firms including: patent and trademark searching, competitive monitoring, managed docketing, paralegal services, e-discovery, and professional services.

If you have problems registering for the June meeting and want to make a reservation, please email Casey at caseymj10@hotmail.com.

DEADLINE FOR REGISTRATION OR CANCELLATION: Tuesday noon, June 19, 2018. Online registration automatically closes at that time – please make your reservation online by the deadline as there are only a few extra spaces allotted at the meeting for walk-ins. The venue may not be able to serve meals beyond the guaranteed number expected for the meeting.

SVIPLA Tax ID#-77-0491659

MCLE: An application requesting MCLE ethics credit for this activity is pending for approval by the State Bar of California.

Introduction to Design Patents

Introduction to Design Patents

The Silicon Valley USPTO hosts a monthly Introduction to Design Patents lunch and learn session in its San Jose office from noon to 1:00 p.m. PT. A supervisory patent examiner will give an overview of the design patent system and answer general design patent questions during a live information session. This session is designed for inventors, entrepreneurs, and those who would like to learn more about the patent system and have a beginning to intermediate knowledge of the patent system. This event is free and open to the public. Please bring your own lunch to enjoy during the session, lunch is not provided. Space is limited. Please register by June 20, 2018.

Register Now(link is external)

Please note that the Silicon Valley USPTO is a federal facility. Attendees are required to present a valid form of government-issued identification (driver license or passport) and may be subject to screening to gain access.

This event is accessible to individuals with disabilities. To request a reasonable accommodation, including captioning, sign language interpreting, or other, please email siliconvalley@uspto.gov or call (408)918-9900.

Inventor Info Chat: Strategies for Filing Internationally – Webcast

Inventor Info Chat: Strategies for Filing Internationally – Webcast

Join us at the Silicon Valley USPTO in San Jose to view the Inventor Info Chat series June topic: Strategies for Filing Internationally: Including the PCT and the Hague System for Industrial. The series is designed to provide inventors with relevant information on topics that assist with applying for a patent. Each Inventor Info Chat webinar includes speaker(s) presenting for approximately 30 minutes with the remaining time for questions and comments. A Silicon Valley resource supervisory patent examiner will be available during and after the webinar to answer any questions.

Inventor Info Chats occur on the 3rd Thursday of each month, are free and open to all.

Not able to join us in person? Visit the Inventor Info Chat webpage for complete webinar participation instructions, upcoming events, and recordings of past events.

The event is free, but space is limited. Please register by June 21, 2018.

Register Now(link is external)

Please note that the Silicon Valley USPTO is a Federal facility. Attendees are required to present a valid form of government-issued identification (driver license or passport) and may be subject to security screening.

This event is accessible to individuals with disabilities. To request a reasonable accommodation, including captioning, sign language interpreting, or other, please email SiliconValley@USPTO.GOV(link sends e-mail) or call 408-918-9900.

$17M for a Patent

“$17M for a Patent “Franchise”? – IPRs and “Oil States” Impact on Patent Owners”

Panel Discussion and Networking Lunch

Online registration ends Monday, June 18, 2018.

REGISTER

EARLY BIRD:
Prior to June 15:
LES Member: 
$40.00
Non-Member: $45.00
LES Student Member: $25.00
After June 15:
LES Member: 
$50.00
Non-Member: $55.00
LES Student Member: $35.00

 

Program:
Josh Malone (Bunch of Balloons) has spent $17M on patent litigation now totaling six patents, five patent suits, five PTAB petitions/trials, four preliminary injunctions, and eight appeals at the Federal Circuit. According to the U.S. Chamber of Commerce 2018 study, the U.S. innovation economy has declined from first to twelfth place, mainly because of uncertainties created by IPRs and patentable subject matter challenges in the USPTO and District courts.

Further uncertainties arise from the recent Supreme Court’s decision in “Oil States” which ruled that issued patents are not private property rights but rather public rights in the form of a franchise granted by the Government that can be withdrawn by executive branch action without resort to the courts.

What are potential consequences of patents as franchises? What happens to patents issued before the AIA? Are they also franchises subject to IPRs? “Oil States” also explicitly left open whether patents franchises can be confiscated with notice and the opportunity to be heard and with just compensation under the Fifth Amendment’s due process and takings clauses. Christy, Inc. has already filed a class action lawsuit alleging the PTAB violates takings and due process.
Most recently, the USPTO has proposed abandoning the “broadest reasonable interpretation” claim construction standard used in IPRs in favor of the “Phillips” standard used in Federal Court proceedings. Will “Phillps” make a difference at the PTAB?

At this June meeting, you will hear a panel of experts discuss the consequences of these developments on patents as business tools and on the innovation economy nationally and here in Silicon Valley.

Speakers to be announced.

 Generously sponsored by

Finnegan logo 218

Thank you to our chapter sponsorRichardson Oliver logo 2018

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MCLE: An application requesting MCLE credit for this activity is pending for approval by the State Bar of California.

Registration:
The SV Chapter uses online registration for members and non-members.  Members should login to the LES website to access their account.

Cancellations:
A $5.00 cancellation fee is applied to all refunds.  Cancellations are non-refundable after June 15. Substitutions will be accepted.  Contact LES for assistance: (703) 234-4058 (8:00-4:00 ET).

Disability/Dietary Needs:
Requests for ADA accommodations and special dietary needs should be submitted to the event contact listed at the top of the page.

Photography Consent:
By registering for this event, you permit LES and its chapters to use photographs of you with or without your name and for any lawful purpose, including for example such purposes as publicity, illustration, advertising and web content.

Approaching the Corporate World with Your Product(s)

Approaching the Corporate World with Your Product(s)

Approaching the Corporate World with Your Innovation, Product, or Patent

This session covers best practices for successfully pitching your product(s) to corporations – plus, learn about patents and licensing from a corporate perspective.

The core mission of most corporations is to generate superior investor returns through revenue growth. For large corporations to move the share price needle significantly requires huge increases in revenue from new products. Many corporations openly acknowledge that this level of innovation is very difficult (if not impossible) to generate internally. As a result, corporations are becoming increasingly creative in seeking out the best external innovations.

The presentation will cover “the corporate inside perspective” on filtering the wheat-from-the-chaff of external innovation. The speaker will provide guidance as to how best to generate, position and pitch your innovations and new concepts to corporations, and will cover the 6 key factors to focus on that will ensure you have the inside track in corporate decision making.

Speaker:
Chris Talbot, Senior Director Strategic Licensing, Applied Materials, Inc.

This is a free, public event. Space is limited. Register by June 12, 2018.

Register Now(link is external)

More about the Navigating Through the Invention Process: From Idea to Product to Market Series, presented by the Licensing Executives Society Silicon Valley Chapter(link is external) and the California Invention Center(link is external)–Got an idea but don’t know where to start? This series will guide you through turning ideas into new ventures. From researching and protecting your invention to packaging and marketing your product, each course targets steps you should consider for a successful product launch. Series topics include the following:

  • What is the patentability of my invention and how do I apply for a patent?
  • How do I evaluate the market value of my invention?
  • Who are my competitors and what is the size of the market?
  • Should I consider going into business with my idea?
  • Should I consider licensing and collecting royalties?
  • Where do I find funding?

Facilitators:
Soody Tronson
, Founder and Principal, STLGip Intellectual Property Law Firm
Larry Udell, Chairman, California Invention Center and Licensing Executives Society, Silicon Valley Chapter

 

TC 2800 Circuits Customer Partnership Meeting – Webcast

TC 2800 Circuits Customer Partnership Meeting – Webcast

Please join us for the TC 2800 Circuits Customer Partnership meeting. Meet with USPTO staff to share your ideas, experiences, and insights. We will discuss trends and initiatives in the circuits area, learn about WebEx interview capabilities, and brainstorm topics for future discussions. The circuits workgroup examines technology areas related to electrical power generation and transmission, protection systems, switches, connectors, motors, conductors and insulators, electrical device housings and mounting assemblies, electrical power regulation and conversion, miscellaneous nonlinear and digital logic circuits, radio wave antennas, and musical instruments.

TC 2800 Circuits Customer Partnership Meeting Agenda

The event is free, open to the public, and will be webcast; however, please register in advance (link is external)by May 21.  You may attend in-person at the Alexandria main campus, in-person at a regional office, or remotely via WebEx.

Patents Customer Partnership Meetings (CPMs) like this one provide an opportunity for our customers to meet directly with technology center representatives in a collaborative forum to share ideas, experiences, and insights and discuss examination policies and procedures, mutual concerns, and solutions to common problems.

For more information, and accessibility requests, please contact:

Please note that the Silicon Valley USPTO is a federal facility. Attendees are required to present a valid form of government-issued identification (driver license or passport) and may be subject to screening to gain access.

This event is accessible to individuals with disabilities. To request a reasonable accommodation, including captioning, sign language interpreting, or other, please email siliconvalley@uspto.gov or call (408)918-9900.

Trademark Tuesday

Trademark Tuesday

The Silicon Valley USPTO hosts an interactive question and answer session with the Trademark Assistance Center (TAC). During this virtual meeting with TAC, participants will learn about the trademark registration process and be able to ask questions of experts through our video teleconferencing capability. The Trademark Assistance Center, located in Alexandria, Virginia, provides general information about trademarks.

This event is intended for individuals with a beginning to intermediate level of knowledge of trademarks. To get the most out of this event, we recommend participants view some of the informational videos regarding trademark registration before the session and prepare specific questions to ask the experts.

Please bring your own lunch to enjoy during the session. The event is free and open to the public with limited space. Please register by June 11, 2018.

Register Now(link is external)

Please note that the Silicon Valley USPTO is a federal facility. Attendees are required to present a valid form of government-issued identification (driver license or passport) and may be subject to screening to gain access.

This event is accessible to individuals with disabilities. To request a reasonable accommodation, including captioning, sign language interpreting, or other, please email siliconvalley@uspto.gov or call (408)918-9900.

IPBC Global 2018

IPBC Global 2018
The Annual Event for Global IP Leaders
June 10-12, 2018 – Palace Hotel, San Francisco

LES-SVC has partnered with IAM in its upcoming IPBC Global, June 10-12, 2018 at the Palace Hotel in San Francisco. IPBC is able to offer a 20% discounted rate to LES-SVC – see below.

IAM’s 11th annual IPBC Global will be an unmatched opportunity to put yourself at the heart of discussions involving those who make the world’s IP weather. The programme featuring top-level IP business experts will provide key strategic insights into cutting-edge value creation issues, and offer deep insights into how corporate executives can most effectively tackle the challenges posed by the constantly changing IP landscape. It is the one IP event that senior executives always make sure to attend and the one you cannot afford to miss.

This event offers deep insights into the dynamics that drive corporate IP strategies and how executives can most effectively plan to tackle the challenges created by today’s fast-moving business, regulatory, legal and political environment.

Over 500 attendees will benefit from keynote addresses and panel discussions featuring senior experts from the US Patent and Trademark Office, GE, Google, Dolby, ZTE, Ericsson, Uber, Nokia, Stanford University, Starbucks and many more.

Ron Laurie, LES-SVC Co-Chair, will be moderating a panel at the IPBC on “CIPO Scenarios: The Good, the Bad and the Ugly – Part Two.”Discussion will include:

  • Your CEO asks you to appear before the company board to justify current IP spend and to demonstrate the value that the IP department brings to the company as a whole – what is in your presentation?
  • You are worried that the growth of the Cloud, AI, the Internet of Things and other areas challenges your existing IP strategy, which is heavily reliant on patents: what do you need to change and how do you do it?
  • The Unified Patent Court and unitary patent in Europe finally come into force. The CIPO you have just succeeded at a US-based general industrials company did not think they ever would so has not planned for this scenario. How do you go about reducing your company’s risk exposure as quickly as possible?
  • You have been hired by the ambitious CEO of a fast-growing Asian smartphone manufacturer to build an IP group and strategy that will enable it to start selling products into the US and European markets. What are your priorities and how long will you need?

Panel:
Colm J Dobbyn, General Counsel, IP, Mastercard
Lisa McFall, Deputy General Counsel, IP, Workday, Inc
John Mulgrew, Global Head, IP, Uber
Ilkka Rahnasto, Head, Patent Business, Nokia

For details and registration, click here.  Use code LES20 to save 20%.

Silicon Valley USPTO Public Tour

Silicon Valley USPTO Public Tour

The Silicon Valley USPTO will host an informational public tour of its office located in the 3-story Wing building of the San Jose City Hall Complex. Participants will tour the office and learn about the U.S. Patent and Trademark Office from USPTO representatives. The event is free and open to the public. Please register by May 31, 2018.

Register Now(link is external)

Please note that the Silicon Valley USPTO is a federal facility. Visitors are required to show a valid form of government-issued identification (driver license or passport) and may be subject to security screening to gain access.

This event is accessible to individuals with disabilities. To request a reasonable accommodation, including captioning, sign language interpreting, or other, please email siliconvalley@uspto.gov or call (408)918-9900.