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Webinars

Past Webinars


  • Recorded Webinar from November 29, 2023

Presented by Joseph E. Shipley and Mary F. Fetsco

Please join Fitch Even for a free webinar, “180 Days of UPC: How It Started… How It’s Going…,” on Wednesday, November 29, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 Noon EST.

The Unified Patent Court (UPC) went live on June 1, 2023. While it’s still early, we now have almost six months of data on the unitary patent and the UPC to help guide decisions as to whether to request unitary effect for European patents, and whether to bring enforcement actions in the UPC.

During this webinar, our presenters will address these topics and more:

  • Latest Developments
  • Predicted Trends
  • Considerations for U.S. Attorneys Contemplating the UP/UPC Pathway
  • Highlights from the U.S. Bar - EPO Liaison Council's Discussions with EPO Managing Officials last month

Our speakers will be Fitch Even attorneys Joe Shipley and Mary Fetsco and Appleyard Lees partner Simon Bradbury.

Joe has assisted clients with international patent portfolio management, litigation, and other IP matters for over 40 years. He is a delegate to the U.S. Bar – EPO Liaison Council and has been elected to serve as secretary to the Council next year.

Mary is an experienced IP litigator, with an extensive background in both patent litigation and trademark anti-counterfeiting litigation and enforcement.

Simon is a partner at Appleyard Lees in the UK. Simon’s practice encompasses a wide range of technologies within life sciences and biotechnology, and he is particularly involved in formulating IP strategies for start-ups, spin-outs and SMEs.   

A recording of this webinar is available through November 28, 2024.

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  • Recorded Webinar from November 2, 2023

Presented by Danielle K. Muñoz

Please join Fitch Even for a free webinar, “The Latest Changes in Copyrights & Trademarks,” on November 2 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

In 2020, legislation was passed that changes the landscape of trademark and copyright law. Various provisions of the new laws have gone into effect on a rolling basis over the past nearly two years. This webinar will give attendees an overview of these legislative updates, their effects, and related case law developments.

During this webinar, the presenter will cover these topics and more:

  • The Trademark Modernization Act
  • New Mechanisms for Trademark Enforcement
  • The Copyright Alternative in Small-Claims Enforcement (CASE) Act
  • The Copyright Claims Board

Our presenter will be Fitch Even partner Danielle K. Muñoz.

Dani Muñoz’s practice focuses on trademark and copyright clearance and prosecution, brand protection, and general IP counseling. She has commercial and trademark litigation experience in federal court and the Trademark Trial and Appeal Board (TTAB), and regularly handles cease-and-desist letters and settlement negotiations.

A recording of this webinar is available through November 1, 2024.

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  • Recorded Webinar from July 27, 2023

Presented by Paul B. Henkelmann

Please join Fitch Even for a free webinar, “Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice,” on July 27 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum issuing guidance on discretionary denial practice and continuing up to the Office’s recent Advance Notice of Proposed Rulemaking, this webinar will give attendees an overview of the latest precedent affecting AIA trial practice from the PTAB and the Federal Circuit, as well as current practice guidance and potential future rulemaking issued by the USPTO.

During this webinar, our presenters will address these topics and more:

  • Recent guidance and proposed changes to discretionary denial procedures
  • The latest notable decisions from the PTAB and the Federal Circuit affecting AIA trial practice
  • A summary of proposed changes to AIA trial practice issued by the USPTO

Our presenters will be Fitch Even attorneys Paul B. Henkelmann and Brian P. Herrmann.

Paul Henkelmann focuses his practice on patent post-issuance proceedings, U.S. and international patent procurement, and intellectual property litigation and counseling. Paul has represented clients in dozens of AIA trials before the PTAB in a wide variety of technical fields including nanotechnology, software, semiconductors, and computer peripherals. He also has substantial experience in both asserting and defending against patent and trademark infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios.

Brian Herrmann is a registered patent attorney who has centered his career on complex litigation. He has practiced at numerous venues including the PTAB, the International Trade Commission, and many district courts across the country. Brian has represented clients in telecommunications, computer infrastructure, networks (LTE, WiFi), electronic devices and their parts such as LCD televisions, Bluetooth, and video technology.

A recording of this webinar is available through July 26, 2024.

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  • Recorded Webinar from May 23, 2023

Presented by Thomas F. Lebens

Please join Fitch Even for a free webinar, “Terrifying Tales of the USPTO’s DOCX Filing System,” on May 23 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

The USPTO .docx filing system was meant to streamline and automate the agency’s processes but has generated numerous problems since its introduction. As a result, the USPTO has repeatedly delayed implementing the surcharge for filing certain U.S. applications in a format other than .docx.

Join our presenters as they discuss the following topics and more:

  • Brief history of the USPTO’s earlier structured text filing initiatives
  • Problems caused by the .docx filing system
  • Remedial actions in the case of filing errors

Our presenters will be Fitch Even partners Giles N. Turner and Thomas F. Lebens.

Giles’ practice focuses on the preparation and prosecution of patent applications in the chemical and mechanical arts for both domestic and foreign corporations.

Tom manages Fitch Even’s California offices and has extensive experience with patent preparation and prosecution as well as ex parte appeals and post-issuance proceedings before the USPTO.

A recording of this webinar is available through May 22, 2024.

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  • Recorded Webinar from February 23, 2023

Presented by David M. Kogan and Nicholas T. Peters

Please join Fitch Even for a free webinar, “Navigating the Patent Gauntlet: Considerations for New Product Launch,” on February 23 at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.

A new product launch comes with various considerations and risks. This includes different types of searches such as patentability and freedom-to-operate (FTO). Obstacles may arise; however, there may be alternatives for achieving at least reasonably similar functionality while reducing the risk of infringing an existing patent.

During this webinar, our presenters will share a number of practical tips and cover these topics:

  • How to assess a new product and perform and analyze a patentability search
  • How to perform a focused FTO search and identify potential risks
  • Finding alternatives for proceeding when a potentially troublesome patent is identified during the FTO search
  • What to do with a potentially troublesome pending patent application
  • Comparison of the inter partes review, reexamination, and litigation options to reduce patent infringement risk

Our speakers are Fitch Even partners Nicholas T. Peters and David M. Kogan.

Nick focuses his practice on patent licensing, patent post-issuance proceedings, sophisticated patent portfolio management, and the prosecution of complex patents. He uses his litigation experience to advise clients on managing patent risk and leverages his extensive USPTO experience into successful representation in post-issuance proceedings work. Nick was ranked among the top 10 most-active attorneys representing patent owners in IPR proceedings based on data collected from 2013 through 2022.

David has substantial experience in both patent prosecution and litigation, handling matters relating to mechanical, chemical, pharmaceutical, and software technologies. David also counsels clients on worldwide IP portfolio management, strategic development, and licensing. He also has extensive experience performing patentability studies and freedom-to-operate studies for start-ups and global companies contemplating patenting their core technology and/or launching a new product.

A recording of this webinar is available through February 22, 2024.

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  • Recorded Webinar from January 31, 2023

Presented by Steven G. Parmelee

Please join Fitch Even for a free webinar, “Full Disclosure About Non-Disclosure Agreements,” on January 31, 2023 at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.  

Non-disclosure agreements (NDA) are often perceived as the simplest and easiest of agreements. Many practitioners have their one favorite form and observe a “one size fits all” approach to its use. NDA’s, however, serve to protect secrets, and the great variability of characterizing facts in a given application setting can greatly impact how well, or how poorly, a given NDA performs that seemingly simple purpose.   

During this webinar, our presenters will address these topics and more: 

  • Building the best NDA for a given situation 
  • The reason for an NDA (this may be more complicated than you think)
  • How information can be disclosed 
  • Why is the information being disclosed 
  • Practice tips  

Our presenters will be Fitch Even attorneys Steven G. Parmelee and Michael R. Anderson. 

Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 45 years. 

Michael has experience assisting clients with patent preparation and prosecution, opinions on invalidity, and non-infringement issues relating to patent clearance and diligence matters.   

A recording of this webinar is available through January 30, 2024.

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  • Recorded Webinar from October 18, 2022

Presented by Paul B. Henkelmann

Please join Fitch Even and Greaves Brewster for a free webinar, “The European Patent System Is A-Changin’: The Unitary Patent and Unified Patent Court,” on October 18 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT / 5:00 p.m. BST.

A major change to the European patent system is imminent. A new Unitary Patent and Unified Patent Court are expected to come into effect in early 2023. Action is required to avoid the prospect of a powerful central validity challenge against your existing European patents in an unpredictable and untested system. Find out about the new system and how to navigate its risks and opportunities in this short and practical webinar.

During this webinar, our presenters will address these topics and more:

  • Introduction and review of the current European patent system
  • Implementation, timing, and geographical coverage of the new system
  • Overview of the Unitary Patent
  • The Unified Patent Court
  • Strategies for navigating the new system

Our discussion will be presented by Greaves Brewster director Jade Powell, partner Jakob Bumke, director Paul Casbon, and director Lee Chapman. Fitch Even partner Paul B. Henkelmann will moderate the discussion.

Jade Powell is a UK Patent Attorney and European Patent Attorney. Jade has experience in the drafting and prosecution of patent applications in a range of chemical fields. Jade also has experience in helping clients manage their patent portfolios worldwide. She has successfully defended and attacked key patents and is an expert on case law and procedure.

Jakob Bumke has experience managing and consolidating very large patent portfolios. In addition to drafting, prosecution, and strategic management of intellectual property portfolios, a particular specialism of Jakob’s practice lies in European Patent Office opposition and appeal proceedings.

Paul Casbon is a UK Patent Attorney and European Patent Attorney. He has strong relationships with overseas IP attorneys and takes a pro-active approach to help adapt clients’ IP strategies to suit Europe and the UK.

Lee Chapman is a UK Patent Attorney and European Patent Attorney and a Higher Courts Patent Attorney Litigator. He leverages his in-house experience to provide clients with tailored and pragmatic IP solutions, including insightful advice on how best to develop a complete IP portfolio.

Paul Henkelmann focuses his practice on patent post-issuance proceedings, U.S. and international patent procurement, and intellectual property litigation and counseling. Paul has substantial experience in both asserting and defending against patent and trademark infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios.

A recording of this webinar is available through October 17, 2023.

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  • Recorded Webinar from July 21, 2022

Presented by Steven G. Parmelee

Please join Fitch Even for a free webinar, “AI Is Coming to an Invention Near You,” on July 21 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

Artificial Intelligence (AI) is everywhere and it’s evolving. AI finds application in virtually every technology and business paradigm. If you haven’t seen it already, AI is coming soon to an invention near you and can be found in a greatly increasing number of patent applications and patent claims.

During this webinar, our presenter will address these topics and more:

  • A general explanation of AI and machine learning (ML) in particular
  • A statistical overview of ML in US patenting
  • A patent eligibility overview of ML claims
  • Various approaches to claim drafting
  • Practice tips

Our presenter will be Fitch Even partner Steven G. Parmelee. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 45 years.

A recording of this webinar is available through July 20, 2023.

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  • Recorded Webinar from November 18, 2021

Presented by Timothy P. Maloney and Paul B. Henkelmann

Please join Fitch Even for a free webinar, “Leveraging Separate IPR Counsel to Maximize Litigation Success,” on November 18 at 9 a.m. PST / 10 a.m. MST / 11 a.m. CST / 12 noon EST.

Most patents challenged in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are involved in co-pending litigation. A threshold question is whether litigation counsel will also handle the IPR proceedings. When engaging separate counsel for the IPR proceedings, cooperation between litigation and IPR counsel is paramount to a successful outcome both at the PTAB and in the district court. Numerous issues that require close coordination must be addressed, including whether to engage separate expert witnesses, claim construction, discretionary denial, validity (or invalidity) arguments, stays, discovery, objective evidence of nonobviousness, motions to amend, and estoppel.

During this webinar, we will cover these topics and more:

  • Pros and cons of engaging litigation counsel or separate counsel for IPR proceedings  
  • Critical issues common to both litigation and IPR proceedings that require close coordination
  • Practical guidance when working with separate litigation or IPR counsel
  • Strategies for improving cooperation between litigation and IPR counsel

Our speakers will be Fitch Even partners Timothy P. Maloney and Paul B. Henkelmann.

Tim has had a primary role in over 100 PTAB trial proceedings emanating from high-stakes patent litigations, developing a notably strong track record. Tim was recognized in an independent study as the #3 best performing attorney nationwide representing patent owners in IPR proceedings in 2017, consistently achieving favorable outcomes.

Paul focuses his practice on PTAB trial proceedings, patent procurement, patent litigation, and IP portfolio management. Nationally recognized for his active practice before the PTAB, he has represented clients in over 60 IPR proceedings.

A recording of this webinar is available through November 17, 2022.

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  • Recorded Webinar from June 30, 2021

Presented by Karen J. Wang

Please join Fitch Even for a free webinar, “The Better Part of Valor? Discretionary Institution in PTAB Proceedings,” on June 30 at 9 a.m. PDT / 10 a.m. MDT / 11 a.m. CDT / 12 noon EDT.

Filing a meritorious petition does not guarantee the Patent Trial and Appeal Board (PTAB) will institute trial in inter partes review (IPR) or post-grant review (PGR) proceedings. Congress allowed that the PTAB “may not authorize” IPR proceedings unless they identify a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged. This leaves the PTAB with discretion over whether to institute if the relevant conditions are present. The PTAB has issued guidance and precedential decisions to help petitioners and patent owners evaluate whether the PTAB should apply its discretion to deny institution.

During this webinar, we will cover these topics and more:

  • How the PTAB exercises its discretion to deny institution in the face of parallel district court proceedings, e.g., in the Western District of Texas “rocket docket”
  • Whether prior reexamination, IPR, PGR, or even prosecution will cause the PTAB to exercise its discretion and deny institution
  • Why the PTAB may or may not deny institution of multiple petitions challenging a single patent

Our speakers will be Fitch Even partners David A. Gosse and Karen J. Wang.

Dave represents clients in district court and PTAB litigation, with deposition and courtroom experience in both venues. His diverse IP law practice also includes acquisition of patent rights in the electronic, software, and mechanical fields. Dave currently chairs the American Intellectual Property Law Association PTAB Trial Committee.

Karen counsels clients ranging from individual inventors to multinational corporations with patent prosecution, post-issuance proceedings, and patent portfolio development and management. She has notable experience collaborating with foreign counsel in prosecuting both foreign and domestic applications for global clients and has represented clients in inter partes review and oral arguments at the PTAB.

A recording of this webinar is available through June 29, 2022.

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  • Recorded Webinar from May 20, 2021

Presented by Calista J. Mitchell

Please join Fitch Even for a free webinar, “Design Patents in the U.S. and Japan: Leveraging the Differences in Laws to Maximize Protection,” on May 20 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

Design patent laws can differ significantly from one country to another. A lack of understanding of these differences can result in not obtaining the broadest patent protection possible. This webinar will provide an overview of the basics of the design patent laws in the U.S. and Japan and then examine how applicants can take advantage of unique opportunities each country’s laws have to offer.

In particular, our presenters will address the following topics:

  • Patentability requirements for designs in the U.S. and in Japan
  • Best practices for preparing a priority application in one country that is suitable for filing in the other
  • Unique filing or prosecution strategies permitted in each country
  • Enforcement considerations
  • Highlights of Japan’s New Design Act of 2020 and the implications and opportunities for applicants filing secondary applications in Japan

Our speakers will be Fitch Even partner Calista J. Mitchell and Konishi & Nakamura partner Tomohiro Nakamura.

Calista focuses her practice primarily on complex patent prosecution, both domestic and global, and freedom-to-operate, patent validity, and patentability opinions. She works closely with U.S. and foreign clients to develop global design filing strategies and has filed hundreds of design applications on their behalf. Calista advises clients in a variety of technical fields, including pharmaceutical, biotechnology, and food science, among others.

Tomohiro has represented Japanese and international clients in trademark and industrial design protection for over 20 years. Prior to that he worked in the Intellectual Property Division at Toyota Motor Corp., where he prosecuted and enforced trademark and design rights to protect global brands including TOYOTA and LEXUS for 12 years. Tomohiro is a chapter author of the AIPPI book Design Rights: Functionality and Scope of Protection, contributing the chapter on design protection in Japan.

A recording of this webinar is available through May 19, 2022. 

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  • Recorded Webinar from April 22, 2021

Presented by Karl R. Fink and Timothy P. Maloney

Please join Fitch Even for a free webinar, “Using Persuasion Techniques to Achieve Litigation Success: Part Two,” on April 22 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT.

During this webinar, we continue our discussion of how the persuasion techniques ethos, pathos, and logos can be effectively used during intellectual property litigation. In Part One (recording available here), we explored how these persuasion concepts can be applied when developing case themes, building a litigation team, and selecting and preparing fact witnesses.

In Part Two, we’ll explore compelling ways to leverage the concepts of ethos, pathos, and logos in other aspects of litigation, including these:

  • Expert witness selection and reports
  • Written and oral communications with the court
  • Trial

Our speakers will be Fitch Even litigators Karl R. Fink, Nikki Little, and Timothy P. Maloney. They will provide practical insights drawn from their expansive experience handling hotly contested IP disputes. 

Karl has been a trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the U.S., with positive results as first chair in all stages of litigation, including trial and appeal. His practice includes all aspects of IP litigation, creation, management, enforcement, and licensing, with a particular emphasis on complex patent litigation.

Nikki is an IP litigator who represents clients in cases across a broad spectrum of technologies. She has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. Nikki also represents clients in patent post-issuance proceedings in the USPTO in parallel with ongoing district court proceedings.

Tim is a nationally recognized trial lawyer active in all aspects of IP enforcement and defense, with an emphasis on patent, trade secret, and other technology-related litigation. He is an established first-chair trial lawyer with a strong track record in numerous jury and bench trials and in various appeals before the Federal Circuit. Tim has handled over 100 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes.

A recording of this webinar is available through April 21, 2022.

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  • Recorded Webinar from March 10, 2021

Presented by Karl R. Fink and Timothy P. Maloney

Please join Fitch Even for a free webinar, “Using Persuasion Techniques to Achieve Litigation Success: Part One,” on March 10 at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.

In the fourth century B.C., Greek philosopher Aristotle described three key methods of persuasion that can be used to influence your audience—ethos, pathos, and logos. These persuasion techniques are used in all types of communication in our everyday lives. And when complex issues are involved, such as in intellectual property litigation, effectively applying these principles becomes even more important.

During this webinar, we’ll explore the ways these modes of persuasion can be used to effectively communicate throughout the life of a case, covering the following:

  • An introduction to the concepts of ethos, pathos, and logos
  • How to integrate persuasion techniques when developing case themes
  • The importance of building a team that can communicate and persuade
  • How to select and prepare effective fact witnesses

In April we will present Part Two, which will cover additional aspects of a case, including expert witnesses, communications with the court, and trial.

Our speakers will be Fitch Even litigators Karl R. Fink, Nikki Little, and Timothy P. Maloney.

Karl has been a trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the U.S., with positive results as first chair in all stages of litigation, including trial and appeal. His practice includes all aspects of IP litigation, creation, management, enforcement, and licensing, with a particular emphasis on complex patent litigation.

Nikki is an IP litigator who represents clients in cases across a broad spectrum of technologies. She has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. Nikki also represents clients in patent post-issuance proceedings in the USPTO in parallel with ongoing district court proceedings.

Tim is a nationally recognized trial lawyer active in all aspects of IP enforcement and defense, with an emphasis on patent, trade secret, and other technology-related litigation. He is an established first-chair trial lawyer with a strong track record in numerous jury and bench trials and in various appeals before the Federal Circuit. Tim has handled over 100 litigation-related patent post-issuance proceedings in the USPTO, consistently achieving favorable outcomes.

A recording of this webinar is available through March 9, 2022.

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  • Recorded Webinar from January 27, 2021

Presented by Jon A. Birmingham

Please join Fitch Even for a free webinar, “Means-Plus-Function Claim Construction in Patent Prosecution and Litigation,” on January 27, 2021, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.

Means-plus-function claim construction is being applied by courts and the USPTO when the term “means” is not explicitly used. When does this happen, and what is the impact? Understanding the law of means-plus-function claim construction, as well as its application in litigation and patent prosecution, can provide answers.

During this webinar, we will discuss these topics and more:

  • How to identify means-plus-function claim terms
  • How to construe means-plus-function claim terms
  • How to avoid a means-plus-function claim construction in patent prosecution
  • How to use means-plus-function claim terms in patent prosecution
  • Indefiniteness and means-plus-function claim terms
  • Differences between the Doctrine of Equivalents and means-plus-function equivalents

Our speaker will be Fitch Even partner Jon A. Birmingham. For over 20 years, Jon has represented clients ranging from Fortune 100 companies to startups in intellectual property litigation, opinion matters, and complex patent prosecution matters.

A recording of this webinar is available through January 26, 2022. 

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  • Recorded Webinar from December 16, 2020

Presented by Steven G. Parmelee

Please join Fitch Even for a free webinar, “Legal Ethics for IP Practitioners: A Cautionary Tale of Professional Irresponsibility,” on December 16, 2020, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 noon EST.

Registered patent practitioners must follow the USPTO Rules of Professional Conduct, which conform to the ABA Model Rules of Professional Conduct. Although largely similar to state bar rules, the USPTO rules can be applied in some fact scenarios that are unique to the intellectual property world.

During this webinar, we will take a deep dive into how one patent attorney repeatedly ran afoul of the USPTO Rules of Professional Conduct in the context of a business venture that purported to serve the unique needs of the inventor community. This troublesome tale showcases some interesting ways in which the USPTO Office of Enrollment and Discipline interprets and applies these USPTO rules. We’ll examine these and other behaviors to which the USPTO objected:

  • Following instructions from an intermediary on when to file a patent application for a client
  • Disclosing a fee arrangement with a client
  • Supervising an employee working for a client via an intermediary
  • Doing business under an assumed name

Our presenter will be Fitch Even partner Steven G. Parmelee. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 40 years.

Steve frequently speaks on intellectual property law topics, ranging from the basics to the innovative and beyond. He has contributed to several books on IP-related issues, most recently The Essentials of Japanese Patent Prosecution, published in August by the ABA.

A recording of this webinar is available through December 15, 2021.

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  • Recorded Webinar from October 29, 2020

Presented by Jonathan H. Urbanek and Jacqueline L. Thompson

Please join Fitch Even for a free webinar, “Aftermarket, Not Afterthought: Patent Strategies for Protecting Aftermarket Parts,” on October 29, 2020, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.

Aftermarket parts for a product such as a vehicle or large machine can provide an important revenue stream for the product manufacturer. Aftermarket parts sales are often highly profitable for the manufacturer, which invites will-fitters to sell their own aftermarket parts. These competing parts may not only negatively impact the manufacturer’s sales, but may cause safety and warranty concerns due to potential quality issues.

This webinar will provide approaches for cost-effectively protecting aftermarket parts, including these tactics:

  • Preparing, filing, and prosecuting patent applications to develop a strong portfolio focused on aftermarket parts
  • Integrating business input into the patent life cycle
  • Detecting and stopping will-fitters
  • Creating non-patent challenges for will-fitters

Our presenters will be Fitch Even attorneys Jonathan H. Urbanek and Jacqueline L. Thompson.

Jon focuses his practice on developing and managing patent portfolios in the U.S. and abroad. He works with each client to create a comprehensive patent strategy through skilled patent prosecution, freedom-to-operate opinions, patent design-arounds, competitive technology analysis, and a keen understanding of their business. Jon advises clients in the mining, commercial vehicle, rail, heat transfer, and industrial IoT device fields.

Jackie assists clients with patent preparation and prosecution, product clearance and legal opinions, and IP litigation. She leverages her hands-on engineering experience to better serve clients working in the chemical engineering, food science, mechanical engineering, and biomedical engineering industries, among others.

A recording of this webinar is available through October 28, 2021.
 

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  • Recorded Webinar from September 24, 2020

Presented by Thomas F. Lebens and Zachary Van Engen

Please join Fitch Even for a free webinar, “Latest Developments in the Patentability of AI- and Software-Based Inventions,” on September 24, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

The changes in subject matter eligibility prompted by the Supreme Court’s decision in Alice v. CLS Bank and subsequent Federal Circuit and district court cases have continued to make it challenging to patent inventions tied to artificial intelligence and other types of software. The legal analysis often turns on how the software interacts with the outside world and the nature of the problems it solves.

During this webinar, we will provide an update on the latest legal developments in computer software patentability along with guidance on best practices for protecting software-related innovations, covering these topics and more:

  • Ramifications of recent post-Alice Federal Circuit cases
  • Updated USPTO guidelines
  • Tips for patent application drafting
  • Tips for responding to office actions

Our presenters will be Fitch Even attorneys Thomas F. Lebens and Zachary Van Engen.

Tom has served clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences, since 1991. He often assists clients with a wide variety of software-based and software-implemented inventions, many involving artificial intelligence. Tom also offers counsel in IP and business strategy, licensing issues, validity analysis and opinions, and copyright matters.

Zach’s IP law practice encompasses patent preparation and prosecution, product clearance studies, freedom-to-operate and infringement analysis, and IP-related due diligence and transactions. He works with clients in high-tech areas including electronics, computer technology, mechanical engineering, and medical devices.

A recording of this webinar is available through September 23, 2021.

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  • Recorded Webinar from June 4, 2020

Presented by Paul B. Henkelmann and Nicholas T. Peters

Please join Fitch Even for a free webinar, “Tales from the IPR Counsel’s Table,” on June 4, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

As is often the case with new legal proceedings, inter partes review (IPR) has evolved over the nearly eight years since being established. Primarily intended to a be a lower-cost, faster path to determining a validity challenge to a patent, this proceeding and its CBM and PGR cousins have morphed into highly contested, high-stakes affairs. Motion practice, additional evidentiary filings and briefing, and complex cost-benefit analysis for each step in the process have turned IPRs from a relatively straightforward procedure into more of a litigation-like experience.

During this webinar, we will explore the evolution of the IPR and the tactical decisions practitioners and their clients face while navigating the process, covering these topics and more:

  • A comparison of the current IPR process to its original form
  • Strategic concerns at each stage of the proceeding
  • The importance of “evidence” beyond the prior art grounds and the challenge to the patent
  • How IPR counsel must weigh the effect of the IPR on co-pending litigation

Our speakers will be Fitch Even partners Nicholas T. Peters and Paul B. Henkelmann.

Nick focuses his practice on patent licensing, patent post-issuance proceedings, sophisticated patent portfolio management, and the prosecution of complex patents. He uses his litigation experience to advise clients on managing patent risk and leverages his extensive USPTO experience into successful representation in post-issuance proceedings work. Nick was ranked among the top 10 most-active attorneys representing patent owners in IPR proceedings based on data collected from 2013 through 2019.

Paul focuses his practice on patent post-issuance proceedings, patent procurement, patent litigation, and IP portfolio management. Nationally recognized for his active practice before the Patent Trial and Appeal Board, he has represented clients in dozens of IPR proceedings.

A recording of this webinar is available through June 3, 2021. 

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  • Recorded Webinar from April 23, 2020

Presented by Mark A. Borsos

Please join Fitch Even for a free webinar, “Linking an Invention to the Evidence: Strategic Considerations from Prosecution to Litigation,” on April 23, 2020, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Evidence that others value an invention can be used by a patent owner for many purposes, including demonstrating that the invention was not obvious, or that infringement has damaged and will continue to damage the patent owner. Yet that evidence may be of little value without the ability to tie it to the specific inventions set forth in the claims of a patent. When there are numerous reasons that customers might purchase or desire a product sold by a patent owner or infringer, establishing a nexus between the claims of the patent and real-world evidence becomes complicated.

During this webinar, our presenters will discuss the following:

  • Establishing a nexus between evidence of commercial success of real-world products and the patented invention
  • Demonstrating a connection between patented features and lost profits
  • Proving there is a causal nexus between irreparable harm and the patented invention that justifies an injunction
  • Drafting claims with forethought to future evidentiary requirements

Our speakers will be Fitch Even attorneys Mark A. Borsos and Evan Kline-Wedeen.

Mark has comprehensive experience in patent preparation, prosecution, and litigation. He also assists clients with product clearance and licensing issues, as well as strategic patent portfolio creation, acquisition, and management.

Evan’s practice encompasses patent preparation and prosecution, IP litigation, patent post-issuance proceedings, and product clearance and legal opinions. He works with clients in fields including biomedical engineering, mechanical engineering, and material science.

A recording of this webinar is available through April 22, 2021.

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  • Recorded Webinar from October 23, 2019

Presented by Alan E. Schiavelli

Please join Fitch Even for a free webinar, “Patent Prosecution Options at the USPTO: Tried-and-True or New to You,” on October 23, 2019, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

The USPTO is constantly striving to reduce average pendency and achieve compact prosecution office-wide, but that’s of little consequence if your patent application is bogged down in prosecution with the examiner—or if business reasons dictate a patent be obtained more quickly than usual. Fortunately, the USPTO offers several programs and initiatives to applicants designed to advance the examination process.

During this webinar, our presenters will provide background information and helpful advice on these prosecution tactics and publication strategies:

  • Track One prioritized examination
  • Petitions to make special and accelerated examination
  • First Action Interview Pilot Program
  • Patent Prosecution Highway (PPH)
  • Early publication and non-publication
  • After Final Consideration Pilot 2.0 (AFCP 2.0)
  • Pre-Appeal Brief Conference Pilot Program

Our speakers will be Fitch Even attorneys Alan E. Schiavelli and George N. Dandalides.

Al has strategically prepared and prosecuted patent applications for clients in the U.S., Japan, and Europe for over 30 years, also providing validity and infringement opinions, trademark availability studies and prosecution, and IP infringement litigation support.

George focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.
 

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  • Recorded Webinar from September 26, 2019

Please join Fitch Even for a free webinar, “Effective Trade Secret Practices: What You and Your Employees Need to Know,” on September 26, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

With the passage of the America Invents Act and the Defend Trade Secrets Act, as well as recent case law creating uncertainty in some areas of patent law, many intellectual property owners have expressed a renewed interest in trade secret protection for innovations and information. However, very few of these IP owners have a well-developed program for identifying, classifying, and intentionally protecting these trade secrets. And even for those owners with such a program, establishing a record of training leaders and employees in trade secret protection can be important to show that the owner has engaged in “reasonable efforts” to protect its trade secrets.

During this webinar, our presenters will discuss the following:

  • Best practices for identifying and classifying trade secrets
  • Key features of a trade secret program
  • Ongoing internal education on trade secret protection needed to support a showing of “reasonable efforts” 

Our speakers will be Fitch Even attorneys Thomas F. Lebens and Donald “Bob” Bunton.

Tom has served clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences, since 1991. He also counsels clients in IP and business strategy, licensing issues, infringement and validity analysis and opinions, and copyright matters.
 

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  • Recorded Webinar from August 29, 2019

Please join Fitch, Even, Tabin & Flannery for a free webinar, “How Late Is Too Late? Setting the Timeline for Patent Protection,” on August 29, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Patent considerations do not always align with commercial realities. Although pursuing patent protection as early as possible is generally preferred, at times product development, financial issues, and other factors get in the way. In some circumstances, inventors do not even think about patenting an invention until they are sure that their idea is practical and there is sufficient commercial interest to warrant investing the necessary time and resources into reducing the invention to practice. This webinar will explore considerations affecting the timing of patent filings and what to do if an inventor’s prior actions have potentially put their patent rights in jeopardy. 

During this webinar, our presenters will discuss the following:

  • Supreme Court and Federal Circuit decisions regarding statutory bars
  • When an invention is “ready for patenting”
  • Potential scenarios that could endanger patent rights
  • Factors that may weigh for and against patentability once an invention has been disclosed or offered for sale
  • Strategies for coordinating patent filings with development efforts 

Our speakers will be Fitch Even attorneys Mark A. Borsos and Vincent R. Meyer. 

Mark has comprehensive experience in patent preparation, prosecution, and litigation. He also assists clients with product clearance and licensing issues, as well as strategic patent portfolio creation, acquisition, and management. 

Vince assists clients with patent preparation and prosecution, product clearance and legal opinions, and IP litigation in areas that include food science, mechanical engineering, electrical and medical devices, and biotechnology.
 

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  • RECORDED WEBINAR FROM June 13, 2019

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar presented with Chicago Women in IP (ChiWIP), “Understanding Women's Conflict in the Legal Workplace and the Bias That Built It,” on Thursday, June 13, at 10:00 am PDT / 11:00 am MDT / 12 noon CDT / 1:00 pm EDT.

A common misconception is that women inherently have challenging relationships with other women at work. But the research of our guest speakers, Andrea Kramer and Alton Harris, has shown this is patently untrue. They will provide real-world advice and tactics for how both women and men in the legal profession can avoid workplace conflict and overcome deeply rooted biases in a traditionally male-dominated industry.

During this webinar, our presenters will share insights on the following:

  • Gender bias in the workplace, including women’s same-gender conflicts
  • How gendered workplaces disadvantage women
  • How to build supportive work environments to help women succeed and advance

Attorneys Andrea S. Kramer and Alton B. Harris are coauthors of It's Not You, It's the Workplace: Women's Conflict at Work and the Bias That Built It. Andie is a partner at McDermott Will & Emery and an adjunct professor at Northwestern University School of Law. Andie is a member of the Illinois Supreme Court Commission on Professionalism’s Diversity and Inclusion Advisory Board and cofounder and chair of the Women's Leadership and Mentoring Alliance.

Alton Harris was a founding partner of Ungaretti & Harris and is a retired partner from Nixon Peabody. Al is a frequent speaker and author on gender bias in the workplace. He has mentored and advised women in many career fields, focusing on the communication skills they need to advance despite the prevalence of negative gender stereotypes.

Our moderator will be Fitch Even partner Nikki L. Little. Nikki is an IP litigator who represents clients in cases across a broad spectrum of technologies. She has participated in numerous jury and bench trials on behalf of clients ranging from individual inventors to multinational corporations. Nikki also represents clients in post-issuance proceedings in the USPTO in parallel with ongoing district court proceedings. She is cofounder and chair-elect of ChiWIP.
 

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  • RECORDED WEBINAR FROM May 2, 2019

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Ensuring Copyright Protection in a Changing Legal Landscape,” on Thursday, May 2, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

The recent Supreme Court decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, established that a copyright owner may not file an infringement suit until the U.S. Copyright Office has acted on the copyright owner’s application to register its copyright in the work. Moving quickly to register copyrights is now an important step in safeguarding your rights.

During this webinar, our presenters will share insights on the following:

  • The practical effects of the Fourth Estate Public Benefit Corp. v. Wall-Street.com decision and other benefits of early registration
  • Strategies for protecting copyright rights in work product produced by employees
  • Strategies for obtaining and maintaining necessary permissions to use third-party materials in advertisements and promotions
  • Recent updates enacted by Congress to benefit music publishers through the Music Modernization Act

Our speakers will be Fitch Even attorneys Alisa C. Simmons and Kerianne A. Strachan.

Alisa has extensive experience in U.S. and foreign trademark prosecution, trademark litigation, and brand selection. She also provides counsel on copyright registration and enforcement, advertising review, and sweepstakes and promotions.

Kerianne focuses her practice on domestic and foreign trademark prosecution, clearance, enforcement, and brand protection. She counsels clients in industry sectors including consumer products, household appliances, retail, and educational services.  
 

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  • Recorded Webinar From March 20, 2019

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Back on Track?: Obtaining Software Patents Using New Patent Office Guidance,” on Wednesday, March 20, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Obtaining patents for software-related inventions has become more difficult in recent years, in the U.S. and throughout the world. However, recently released USPTO guidance addressing patent eligibility under 35 U.S.C. § 101 and § 112, among other developments, offers some amount of much-needed clarity and direction.

During this webinar, our presenters will share information and insights on the following:

  • USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance
  • USPTO’s 2019 Guidance on Examining Computer-Implemented Functional Claim Limitations
  • How to use the recent guidance fruitfully, including claim-drafting strategies and evaluation of example claims
  • Drafting strategies for filing software patent applications in foreign jurisdictions
  • What the future may hold for software patentability

Our speakers will be Fitch Even attorneys Timothy R. Baumann and George N. Dandalides.

Tim has extensive experience assisting clients in the acquisition, protection, and management of all forms of intellectual property, particularly through complex patent prosecution, infringement and validity opinions, reexamination and IPR proceedings, and patent licensing agreements.

George focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.
 

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  • Recorded Webinar from February 28, 2019

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Navigating Open Source Risk with Tools for Usage Evaluation and License Compliance,” on Thursday, February 28, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

Software is increasingly incorporated into products released into the market, and more companies are releasing mobile applications every day. As the percentage of open source content in use rises, the legal and security risks accompanying such use needs to be actively managed. During this webinar, our presenters will provide background information and actionable advice that will assist you in handling open source.

Among other insights, our presenters will discuss the following:

  • Assessing license compliance and compatibility
  • Leveraging tools to monitor and assess risks associated with software deals and open source software incorporated into a company’s code
  • Creating programs and policies to effectively manage a company’s incorporation of open source into its code
  • External web service call-out or API identification and management of associated obligations, risks, and privacy concerns

Our guest speaker will be Philip Odence, General Manager of Black Duck On-Demand, the industry leader in open-source due diligence services. Fitch Even partners Amanda Lowerre O’Donnell, Joseph F. Marinelli, and Steven G. Parmelee will round out the panel.

Phil Odence is General Manager of Synopsys’ Black Duck On-Demand business unit, which provides due diligence audits for companies and both sides of M&A transactions. He works closely with the company’s law firm partners and the open source community and is a frequent speaker on open source management and M&A.

Amanda Lowerre O’Donnell focuses her practice primarily on patent prosecution, patent licensing, and commercial clearance assessments. She also advises clients in the U.S. and abroad on business method protections as well as open source software issues.

Joe Marinelli is an IP litigator with 20 years of hands-on courtroom experience and a diverse intellectual property law practice covering all aspects of IP creation, management, enforcement, and licensing.

Steve Parmelee has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 40 years.
 

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  • Recorded Webinar from January 23, 2019

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Working Smarter with Patent Counsel: Tips for Inventors and In-House Lawyers,” on Wednesday, January 23, 2019, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

An efficient, productive first meeting with patent counsel can go a long way toward ensuring the patent application process goes smoothly and successfully. Inventors and corporate counsel alike can benefit from learning key considerations to discuss with their patent attorney initially and at each stage of the process. This webinar will offer guidance on what crucial information should be provided at the onset and what further developments should be shared down the line:

  • Pre-Drafting Stage
    • Inventorship
    • Information needed for written description
    • Public disclosure (IDS; bar dates)
  • Drafting Stage
    • Legal requirements of a patent application
    • Sections 112, 101, 102, and 103
    • Specifications, claims, drawings
  • Post-Filing Stage
    • Post-filing improvements or prototypes
    • Commercialization plans and efforts
  • Business Drivers
    • Target market analysis
    • Marketing advantages of invention features
    • Critical timeline markers

Our speaker will be Fitch Even attorney Jennifer V. Suarez. Jennifer focuses her practice on U.S. and international patent preparation and prosecution, assisting clients in the electronics, mechanical, telecommunications, computer technology, and medical arts in the development and protection of their IP rights.
 

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  • Recorded Webinar from November 15, 2018

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “FRAND Licensing: Recent International Developments,” on Thursday, November 15, 2018, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

Understanding the latest developments in FRAND licensing is essential to developing appropriate strategies for licensing standard essential patents (SEPs), both as licensor and licensee.

During this webinar, we will provide an overview of recent developments in FRAND licensing as a process and as a result, including a discussion of the following:

  • Guidelines published in Europe, China, and Japan for licensing of SEPs
  • Key decisions from the U.S., the UK, and China regarding how to determine FRAND terms and conditions, including
    • Unwired Planet v. Huawei (UK)
    • TCL v. Ericsson (US)
    • Huawei v. Samsung (CN)

In addition, we will address these topics:

  • Who holds the FRAND burden of proof
  • What it means to be a willing licensee
  • Jurisdiction for deciding FRAND disputes
  • The appropriateness of confidentiality agreements 

Our speaker will be Fitch Even senior licensing specialist and patent analyst Curtis S. Dodd. With 20 years of industry experience, Curt is a veteran of patent valuation, monetization, enforcement, and portfolio management in the telecommunications and consumer electronics spaces.

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  • Recorded Webinar from August 2, 2018
Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Design Patent Enforcement: Recent U.S. Court and PTAB Decisions,” on Thursday, August 2, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

This webinar will address current issues in U.S. patent law relating to infringement of design patents, including cases that involve damages, such as Samsung v. Apple. Understanding the latest developments in design patent litigation is essential to developing enforcement or defense strategies, as well as to preparing and prosecuting strong design patent applications.

In addition, just as with utility patents, the validity of design patents can be challenged by requesting an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). We’ll discuss the outcomes of recent IPR proceedings that involve design patents and what strategies can be learned from those proceedings.

Our speaker will be Fitch Even partner Jon A. Birmingham. Jon represents a wide range of clients in intellectual property litigation, opinion matters, and complex patent prosecution matters, including the procurement and enforcement of design patents.

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  • Recorded Webinar from June 27, 2018

Please join Fitch, Even, Tabin & Flannery LLP and Wood IP LLC for a free webinar, “From Alice to Berkheimer: Practical Tips for Preparing Software Patent Applications,” on Wednesday, June 27, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Changes in subject matter eligibility prompted by the Supreme Court’s decision in Alice v. CLS Bank have created no small measure of confusion and uncertainty, particularly in the area of software. Seemingly hundreds of related cases in the district courts, Federal Circuit, and USPTO have resulted—many ostensibly at odds with others. One of the latest Federal Circuit decisions, Berkheimer v. HP, may represent an especially important analytical milestone. Recent USPTO memos offer further helpful guideposts. During this webinar, our presenters will provide practice tips derived from some of these decisions and memos, principally from the software perspective.

Among other insights, our presenters will share the following:

  • How to quickly assess whether certain software programs might qualify as patent-eligible subject matter
  • Practical tips for preparing office action responses and drafting patent applications in view of the USPTO memo to examiners following Berkheimer
  • A simple checklist for inventors preparing software-related invention disclosures

Our speakers:

Wood IP managing partner Theodore A. Wood has over 35 years of electrical, electro-mechanical, communications, software, and computer security-related technical, legal, and military experience. He uses this experience to help companies protect and leverage their innovations and ensure marketplace exclusivity. Ted’s practice also includes inter partes reviews, reexaminations, and oral arguments before the Patent Trial and Appeal Board.

Wood IP partner Archie E. Williams, Jr. has over 40 years of patent preparation and prosecution experience, with a special focus on software patentability, subject matter eligibility, and USPTO rules. Archie leverages his insights in these areas to counsel clients on successfully navigating the obstacles to software patentability created by recent Supreme Court and Federal Circuit decisions. Archie is also a retired USPTO Supervisory Patent Examiner (SPE) and a former USPTO Special Laws Expert/Special Program Examiner (SPRE).

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  • March 21, 2018
Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense,” on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an ex parte appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the ex parte review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures.

During this webinar, we will explore how the AIPLA findings may provide guidance on
  • When to file ex parte PTAB appeals
  • How often to file these appeals
  • Which issues to choose to appeal
Additional topics will include
  • USPTO incentives
  • Working with the examiner
  • Patent term adjustment
  • Pre-appeal brief reviews
  • Other relevant statistics
Our speakers:
Thomas F. Lebens, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters.

Trent Ostler is in-house counsel for Illumina, Inc., where he helps protect the company’s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of Anticipat.com, a PTAB appeals database.

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  • February 22, 2018

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Immunity for Sale? Tribal and State Sovereign Immunity at the PTAB,” on Thursday, February 22, 2018, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

Many patent owners are looking for ways to defend against inter partes review (IPR) challenges to their patents. Pharmaceutical company Allergan made headlines last year when it transferred its patents for its drug Restasis to the St. Regis Mohawk Tribe in an attempt to shield the patents from IPR challenges by using the tribe’s sovereign immunity. This move increased interest in potential patent deals with Native American tribes, but also drew negative reactions, including from members of Congress and the Federal Circuit judge handling the related district court litigation.

Against this background, our webinar will explore these topics:

  • An overview of tribal and state sovereign immunity and their limitations
  • The law of sovereign immunity with respect to IPR proceedings
  • Can one purchase (or rent) sovereign immunity? The Allergan/St. Regis strategy
  • The future of sovereign immunity at the PTAB and beyond

Our speakers:

Paul B. Henkelmann is a partner at Fitch Even, where he focuses his practice on patent post-issuance proceedings, patent procurement, patent litigation, portfolio management, and IP counseling. With an active practice before the PTAB, Paul has represented clients in dozens of IPR proceedings. 

John M. Peebles is a founding partner at Fredericks Peebles & Morgan, a firm dedicated to representing American Indian tribes and organizations throughout the U.S. John focuses his practice on tribal government, tribal sovereignty and self-determination, trial and appellate advocacy, taxation, reservation economic development, and gaming law, among other areas.

 

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  • November 29, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Ubiquitous Problem of Inherency in Obviousness: Southwire Co. v. Cerro Wire, LLC,” on Wednesday, November 29, 2017, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12 noon EST.

Obviousness challenges tied to the doctrine of inherency can arise during various stages in the patent life cycle, including patent prosecution, post-issuance proceedings, and litigation. Despite how frequently these challenges occur, the law applicable in this area has been less than clear. While recent case law has helped to provide clarification, the Southwire case illustrates that overcoming inherency-based obviousness arguments does not always result in a win for the applicant or patentee.

Our webinar will explore these topics and more:

  • The nature of obviousness contentions based on inherency
  • Practice pointers in applying the doctrine of Southwire and other recent cases
  • Hypothetical examples showing how to demonstrate patentability

Our speaker will be Fitch Even attorney Giles N. Turner. Giles’s practice focus is on U.S. and international patent preparation and prosecution, assisting clients working in technical areas including semiconductors, chemical engineering, energy, material science, textiles, biotechnology, and mechanical arts, among others.

 

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  • October 25, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Presenting Alice-Friendly Patent Claims: Is McRO Worth a Second Look?,” on Wednesday, October 25, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

While the Federal Circuit has identified small precedential islands of relative safety, the court has yet to chart a veritable Northwest Passage through which one can safely navigate the risks and concerns presented by the Supreme Court’s Alice decision.

Or have they?

McRO, Inc. v. Bandai Namco Games America, Inc., et al. is sometimes considered for its rather tepid and, to date, somewhat inconsequential consideration of preemption issues. McRO’s analysis and holding regarding abstractness, however, is perhaps more valuable to those writing and prosecuting patent applications than has been generally acknowledged to date.

During this webinar, Fitch Even partner Steven G. Parmelee will explore these questions:

  • Whether McRO presents a new two-step abstractness analysis that offers useful and practical opportunities
  • If so, whether such an opportunity is “more than a drafting effort designed to monopolize the [abstract idea] itself”

He will also share these insights, among others:

  • Anecdotal McRO prosecution experience at the USPTO
  • Claim and specification drafting tips

Steve Parmelee has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. He has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 40 years.

 

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  • September 28, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Widening Your Moat: Using Continuation Applications to Protect Commercially Successful Products,” on Thursday, September 28, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Protecting a commercially successful product is critical for any business. Although patents can help to prevent others from utilizing covered technology, recent trends in case law and post-issuance validity challenges introduced by the American Invents Act have made it more difficult for businesses to effectively enforce patents against competitors. Continuation applications can be an important tool for bolstering patent protection for key products, providing the patent owner leverage in negotiations and enforcement.

This webinar will provide tips and strategies on how to use continuation applications to

  • Limit design-arounds that use similar technology
  • Target commercial products
  • Expand the scope of patent protection
  • Mitigate invalidity challenges
  • Avoid antitrust pitfalls
Our speakers will be Fitch Even partners Jonathan H. Urbanek and Mark A. Borsos.

Jon focuses his IP law practice on patent preparation and prosecution and advises clients working in diverse technologies on issues including freedom-to-operate decisions, product design-arounds, and competitive technology analysis.
 
Mark has comprehensive experience in patent preparation, prosecution, and litigation, with a significant focus on patent post-issuance proceedings. He also assists clients with product clearance and licensing issues, as well as strategic patent portfolio creation and management.

 

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  • August 17, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Understanding AIA 102: Prior Art Exceptions and Declaration Practice,” on Thursday, August 17, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

More and more patent applications now being examined and granted by the U.S. Patent and Trademark Office are first-inventor-to-file applications under the America Invents Act (AIA). The AIA redefined which documents and activities constitute prior art that may be used to reject patent applications and invalidate patents.

During this webinar, Fitch Even partner Alan E. Schiavelli will provide attendees with a basic understanding of the statutory framework of 35 U.S.C. § 102, including the categories of prior art defined by the statute, the exceptions to those categories, and the manner in which the exceptions can be invoked. He will also discuss a recent Federal Circuit panel decision some see as undermining Congress’s intent in establishing the AIA’s on-sale bar.

Specific topics will include these and more:

  • Changes to prior public use and sale
  • Prior art under 102(a)(1) and exceptions
  • Prior art under 102(a)(2) and exceptions
  • Declaration practice under AIA 102
  • Ramifications of Helsinn Healthcare v. Teva Pharmaceuticals

Our speaker Alan E. Schiavelli has 30 years of experience in strategically preparing and prosecuting patent applications for clients in the U.S., Japan, and Europe, as well as providing validity and infringement opinions, trademark availability studies and prosecution, and IP infringement litigation support.

 

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  • June 22, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Difficulties of Being Obvious: Practical Advice for Overcoming Obviousness Rejections,” on Thursday, June 22, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

In the predictable arts, an obviousness rejection is typically based on a combination of multiple references. Attempting to overcome such a rejection can be a perplexing and frustrating experience. This is particularly true when the patent examiner is combining references to arrive at the claimed invention in what can be a highly subjective manner. Nevertheless, when it comes time to respond, there will usually be more than one way to get the job done.

Our webinar will address best practices for responding to obviousness rejections, covering these topics and more:

  • How to take the prevailing and latest Federal Circuit case law into account in your responses
  • Making effective claim amendments specifically tailored to overcome the obviousness rejection
  • Developing persuasive arguments in support of patentability over a combination of references

Our speakers will be Fitch Even partner Stephen S. Favakeh and patent agent Thomas A. James. For over 25 years, Steve has assisted clients with the strategic procurement and enforcement of patent and trademark rights in the U.S. and abroad, with a special focus on Japanese clients. He drafts and prosecutes patent applications as well as advises clients on IP portfolios and licensing programs, among other services.

Tom prepares and prosecutes patent applications in addition to assisting with litigation matters. He was previously a patent examiner with the U.S. Patent and Trademark Office, working primarily in the field of electrical engineering.

 

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  • May 31, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Scope of AIA’s Estoppel Provision: Are We Still Flying Blind Six Years Later?,” on Wednesday, May 31, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Congress drafted the “estoppel” provision in the American Invents Act (AIA) to ensure that petitioners did not abuse the post-grant review procedure established by the USPTO. The estoppel provision precludes the petitioner from later challenging the same patent claim, either in the USPTO or in civil litigation, on any ground that the petitioner “raised” or “reasonably could have raised” during the post-grant review. Almost since its enactment, there has been a debate over the appropriate scope of this provision. Given that the estoppel effect was largely untested, the first participants in these proceedings flew blind to some extent. Now, roughly six years later, rulings regarding the application of the estoppel are inconsistent and tend to leave practitioners more confused and no better off than the first post-grant review trailblazers.

This webinar will provide information on what you need to know about this provision, including these topics:

  • Overview of the estoppel provision
  • The provision’s legislative history
  • The impact of recent decisions applying the provision
  • Why the provision is not scaring off petitioners of post-grant reviews           

Our speaker will be Fitch Even partner Eric L. Broxterman. Eric’s unique blend of experience covers the entire spectrum of intellectual property law, including patent procurement, risk avoidance (invalidity and freedom-to-operate opinions), monetization (portfolio management, including licensing and transactions), and enforcement (litigation, post-grant reviews, and settlement agreements). 
 

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  • April 27, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Full Disclosure: Bridging the Information Gap Between Inventors and the Patent System,” on Thursday, April 27, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Patents can be extremely valuable business assets, but only as valuable as the information they convey. Before a patent can be monetized, it will be scrutinized by myriad individuals—inventors, attorneys, examiners, judges, juries, and business leaders—each of whom will interpret the patent in the light most favorable to their objective. As a patent filer, it’s vital to ensure your inventors provide clear, detailed, and accurate descriptions of their inventions so they’ll withstand scrutiny and generate the optimal return on investment.

Inventors can provide your business with a true competitive advantage, but because of the technical and legal complexities involved, attempting to capitalize on their innovations can be both expensive and risky. By educating your inventors to recognize patentable innovations, the expense can be reduced and the risk mitigated.

This webinar will provide tips and strategies on how to

  • Educate inventors on how to identify viable inventions and distinguish them from unpatentable ideas and concepts
  • Ask the right questions to get inventors to divulge the unique details of an invention
  • Tell a story that clearly illustrates why a patent is warranted

Our speaker will be Fitch Even partner Michael J. Krautner. Michael has a broad-based intellectual property law practice with over a decade of experience preparing and prosecuting patent applications, managing all stages of IP litigation, and counseling clients on complex IP issues.
 

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  • March 15, 2017

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Fueling Your Business Strategy with Patents,” on Wednesday, March 15, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Do you know why your competitors are obtaining all those patents? What value does a patent bring, and how do you leverage it? Patents can provide a wide range of potential benefits, from market protection to licensing to defensive value—as well as other key benefits you may not be aware of. Geared toward IP practitioners as well as business owners, our webinar will cover the following topics and more:

  • What a patent is, and why, when, and how to get one
  • The many potential benefits of patent protection
  • Why and how to enforce a patent, and what to expect
  • Timetable and costs

Our speakers will be Fitch Even attorneys Allen E. Hoover and George N. Dandalides. Allen focuses his practice on patent litigation, frequently serving as lead counsel on complex infringement cases involving a broad spectrum of technologies. He also assists clients with patent portfolio management, licensing and other issues. George currently focuses his IP law practice on domestic and international patent preparation and prosecution, leveraging his background in physics and computer technology to assist clients in a variety of high-tech industries including telecommunications, electronics, and computer hardware, software, and architecture.
 

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  • November 17, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Determining the Value of One Patented Feature: A Behavioral Alternative to a Consumer Survey,” presented by Jacob Jacoby and Alison Aubry Richards and moderated by Edward W. Gray Jr. The webinar will take place on Thursday, November 17, 2016, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

Recent Federal Circuit decisions have made it more difficult to prove damages in litigation. This is especially true when the infringed patent relates to just one feature in a product with multiple features. Before a patent owner can obtain damages based on the entire market value of a product (patented and unpatented components sold together), the patent owner may be required to prove that the patented feature is the basis for consumer demand for the entire product. Other decisions require the patent holder to apportion the value of the whole product down to the patented feature.

Whether a damages expert’s opinion can meet these requirements is a critical question for all patent litigants. Ultimately, the persuasiveness and reliability of the factual data on consumer demand for a patented feature underlying the damages case can determine the financial outcome of the case. 

This webinar will cover these topics and more:

  • Relevant case law
  • Why proving consumer demand is key to receiving monetary damages
  • The shortcomings of typical survey approaches to measuring consumer demand
  • An alternative behavioral methodology for reliably measuring consumer demand

Our speakers will be Jacob “Jack” Jacoby, Ph.D., and Fitch Even partner Alison Aubry Richards.

Jack is President of Jacoby IP Research and an award-winning author widely recognized for his expertise in IP survey research. He has been Merchant’s Council Professor of Consumer Behavior and Retail Management at NYU’s Stern School of Business since 1981.  

Alison is a trial lawyer who has worked on a wide range of complex, high-stakes patent litigations involving a variety of technologies and industries. She has brought and defended a number of Daubert motions related to damages expert opinions and has presented and cross-examined damages experts at trial. Alison also counsels clients on technology licensing.

Our moderator will be Fitch Even partner Edward W. Gray Jr. Ed currently focuses his practice on IP evaluation and strategy, trade secret programs, licensing, trademark prosecution, and IP litigation.

A recording of this webinar is available through November 16, 2017. 

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  • October 12, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Recent Updates in Design Patent Law,” on Wednesday, October 12, 2016, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Understanding the latest developments in case law and USPTO examination standards is important to drafting effective design patent applications. This webinar will address numerous current issues in U.S. design patent law. It may be of interest to those who seek to broadly protect products with design patents, as well as those who draft design patent applications, litigate design patents, or prepare freedom-to-operate or patentability analyses for design patent applications.

Our speakers will cover these topics and more:

  • Recent court decisions involving design patents
  • The role of obviousness in patentability and invalidity determinations
  • Current trends in examination by the USPTO

Our speakers will be Fitch Even partners Calista J. Mitchell and Joseph H. Herron. Calista focuses her practice primarily on domestic and global patent prosecution and on freedom-to-operate, patent validity, and patentability opinions. Joe represents clients in complex patent prosecution, patent litigation, post-issuance matters, and opinion work, as well as other IP matters, in the U.S. and abroad.
 

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  • August 30, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a free webinar, “European Patent Filing Strategies: Choosing the Appropriate Option,” presented by Rudy I. Kratz and Tony Wray. The webinar will take place on Tuesday, August 30, 2016, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

A number of patent filing strategies are available in Europe. Patent applications may be filed at the European Patent Office (EPO) and at national patent offices such as the UK Intellectual Property Office (UKIPO) and the German Patent and Trade Mark Office (DPMA). Utility model applications are another form of intellectual property protection that can be pursued in certain countries. Each option has its advantages and disadvantages, and some approaches may be more appropriate in certain circumstances based on cost and other concerns. Recent developments may also have an impact on which filing strategy makes the most sense.

Our webinar will address the following topics:

  • Summary of filing considerations at the EPO, UKIPO, and DPMA
  • Advantages and disadvantages of specific filing strategies
  • Effect of the UK vote to leave the European Union and the status of the Unitary Patent

Our speakers will be Fitch Even partner Rudy I. Kratz and Optimus Patents Ltd. director and founder Tony Wray. Rudy counsels clients seeking patent and design protection inside and outside the U.S., assisting them in developing and implementing international IP protection strategies. He also manages Fitch Even's relationships with an extensive network of leading firms around the globe, working with international agents in all regions of the world. Tony is the founder of Optimus Patents, a law firm providing services on all aspects of patent law from innovation to portfolio management, with offices throughout the South of England. He previously spent 12 years at Motorola as Research Project Manager and as European Patent Portfolio Manager. A Motorola “distinguished inventor,” Tony is a named inventor on 20+ granted patents.
 

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  • May 25, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Defend Trade Secrets Act: A Federal Remedy at Last,” on Wednesday, May 25, 2016, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

On May 11, President Obama signed the Defend Trade Secrets Act—a federal civil remedy for trade secret misappropriation—into law. This will mean a shake-up for U.S. trade secrets law, which for years has been protected by a patchwork of state laws under various enactments of the Uniform Trade Secrets Act. Federal courts have had to enforce these laws through their diversity jurisdiction, when available. A single federal statute will move us toward applying the law uniformly nationwide, and trade secret claims could be filed in federal court. The new law, however, will not completely replace state trade secrets law, but will coexist with it. Protections for trade secrets will be more on balance with those available to patents, copyrights, and trademarks.

Our webinar will address these major provisions of the Defend Trade Secrets Act:

  • Ex parte seizure of property to prevent dissemination of trade secrets
  • Preemption of state law prohibiting restraints on employment
  • Whistleblower protections for reporting trade secret misappropriation
  • Enhanced damages
Our speaker will be Fitch Even partner Thomas F. Lebens. Since 1991 Tom has served clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in intellectual property and business strategy; licensing issues; infringement and validity analysis; patentability, infringement, and validity opinions; and copyright matters.

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  • April 28, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Prosecuting the Unexpected Ratio: Advanced Lessons in Patent Prosecution and Claim Drafting,” presented by Jeffrey A. Chelstrom. The webinar will take place on Thursday, April 28, 2016, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Patent practitioners who focus on compositions, materials, and other non-mechanical inventions are frequently presented with unique challenges when distinguishing prior art. Often a composition of multiple components may have similar or even overlapping ranges of those components with the prior art. How does the patent prosecutor protect such inventions?

Our webinar will address the following topics:

  • Alternative ways to draft claims covering compositions, materials, and other non-mechanical inventions
  • How to draft patent applications for these inventions to distinguish close prior art
  • How to use unexpected results and evidence of criticality to overcome rejections

This presentation will be the second in an occasional series of “master classes” for experienced IP practitioners, patent owners, and others entrenched in the world of IP who already possess at least a basic understanding of patents and patent claims. It will be of interest to those who analyze and litigate patents as well as those who draft patent applications.

Our speaker will be Fitch Even partner Jeffrey A. Chelstrom. Jeff has extensive experience in chemical patent preparation and prosecution in the U.S. and abroad dealing with food chemistry, adhesives, polymers, lubricants, fuels, and petroleum inventions. He also regularly assists clients with patent portfolio management and freedom-to-operate issues.
 

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  • February 25, 2016

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “So You Think You Know Patent Claims? Advanced Lessons in Patent Drafting and Analysis,” presented by Steven G. Parmelee and Allen E. Hoover. The webinar will take place on Thursday, February 25, 2016, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

Even if you have practiced IP law for many years, or are otherwise well-versed in what’s involved in patent drafting, you may be surprised by what you don’t know about patent claims. And what you don’t know might hurt you.

Our presenters will cover the following topics:
  • The right and wrong way to use dependent claims to strengthen a patent
  • How to avoid claim language that can impair the patent holder’s rights
  • What you may not know about alternative claim language in patent claims
This webinar will be the first in an occasional series of “master classes” for experienced IP practitioners, patent owners, and others entrenched in the world of IP who already possess at least a basic understanding of patents and patent claims. It will be of interest to both those who analyze and litigate patents and those who draft patent applications.

Our speakers will be Fitch Even partners Steven G. Parmelee and Allen E. Hoover. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad, and has assisted clients with patent portfolio management, freedom-to-operate issues, and transactions for over 35 years. Allen focuses his practice on patent litigation and has served as lead counsel on a substantial number of complex infringement cases involving a broad spectrum of technologies. He also assists clients with patent portfolio management and licensing and other IP issues.

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  • December 2, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Navigating Patent Potholes Along the FDA’s Proposed ANDA / 505(b)(2) Pathway,” presented by Kendrew H. Colton and James A. Zak. The webinar will take place on Wednesday, December 2, 2015, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The FDA has released new rules regarding the procedures for approval of ANDA and 505(b)(2) applications implementing the Medicare Prescription Drug, Improvement, and Modernization Act (MMA). The U.S. Patent and Trademark Office, in turn, has created new procedures and other ways by which they cancel, modify, and administer patent rights. The USPTO’s actions have created potholes along the FDA-proposed pathways for pharmaceuticals companies and generics manufacturers attempting to maintain monopolies. These USPTO activities may also provide an express lane for new startups in the pharmaceutical space.

During our webinar, we will discuss these topics and more:

  • Newly listed patents in the Orange Book and the ability to catch up to first applicants
  • Breaking through settlement roadblocks with AIA post-grant procedures
  • Newly listed and issued patents downshifting ANDAs into tentative approvals
  • Express lane for 505(b)(2) applicants

Our speakers will be Fitch Even attorneys Kendrew H. Colton and James A. Zak. Ken has extensive IP counseling and litigation experience, with a focus on designing strategies to achieve market exclusivity and freedom to operate for clients working with chemical and biochemical technologies. James chiefly focuses his practice on the intersection of intellectual property and FDA law, often working with startups in FDA-regulated industries to develop and align their IP and FDA market approval strategies while simultaneously developing robust patent portfolios. 
 

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  • September 30, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Updates on Design Patent Law: The Hague Agreement and U.S. Design Patent Enforcement,” presented by Jon A. Birmingham and Conor S. Hunt. The webinar will take place on Wednesday, September 30, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

In May 2015, U.S. patent laws were amended to implement provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. U.S.-based applicants can now seek design protection in over 60 countries by filing a single international design application. 

The first half of our webinar will cover the following:

  • An overview of the system under the Hague Agreement
  • Filing requirements under this system
  • Cost comparison with traditional foreign filing processes

The webinar will continue with a discussion of enforcement of design patents in the U.S., including these topics:

  • Recent court decisions involving design patents
  • The impact of recent design patent cases on patent prosecution

Our speakers will be Fitch Even attorneys Jon A. Birmingham and Conor S. Hunt. For 15 years, Jon has represented a wide range of clients in intellectual property litigation, opinion matters, and complex patent prosecution matters, including the protection of design patents. Conor focuses his practice on domestic and international patent prosecution involving mechanical and e-commerce technologies, as well as on patent evaluation, portfolio management, product clearance, and legal opinions.
 

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  • August 26, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Kimble v. Marvel: Practical Tips for Extending Licensing Agreements Beyond Patent Expiration,” presented by Christine A. Pompa. The webinar will take place on Wednesday, August 26, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

On June 22, 2015, the U.S. Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, upholding the long-standing rule that prohibits a patent holder from charging royalties for the use of an invention after the underlying patent has expired. As a result, patent holders may want to consider ways to negotiate competitive, mutually beneficial, and enforceable license agreements that exist beyond the term of the underlying patent.

During the webinar, we will discuss the following and more:

  • The case law leading up to the opinion in Kimble v. Marvel
  • A summary of the opinion
  • Tips and strategies for drafting licensing agreements that extend royalty fee payments beyond the life of a patent

Our speaker will be Fitch Even partner Christine A. Pompa. Christine has extensive litigation and trial experience in patent, trademark, trade secret, and copyright cases. She also provides clients with legal opinions on non-infringement and invalidity, as well as IP- and technology-related agreements, including licensing agreements, product terms and conditions, service agreements, and privacy policies.
 

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  • June 24, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Two Faces of Establishing Patentability of a New Chemical,” presented by James A. Zak. The webinar will take place on Wednesday, June 24, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

To be a patentable invention, a chemical compound must be new and non-obvious. To establish that the compound is non-obvious, a lead compound is selected in the prior art, and the new compound is compared to the lead compound to determine if the new compound is merely an obvious modification. A lead compound is selected by one of two methods, which differ with respect to the rationale used to identify the lead compound and how allegations of obviousness can be refuted. Given the critical role of the lead compound to the non-obviousness determination, when attempting to patent a new compound, one must be mindful of how the lead compound will be selected.

During this webinar, we will discuss the following:

  • Methods of selecting a lead compound 
    • Structural similarity  
    • Rational selection
  • Assumptions made based on structural similarity and how to overcome them
  • Why what is believed about a rationally selected lead compound is more important than its real properties
  • How to make others select the lead compound of your choosing

Our speaker will be Fitch Even attorney James A. Zak. James chiefly focuses his practice on the intersection of intellectual property and FDA law, often working with startups in FDA-regulated industries to develop and align their IP and FDA market approval strategies while simultaneously developing robust patent portfolios.
 

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  • May 27, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Strategies for the Use of Expert Evidence in Post-Issuance Proceedings,” presented by Mark A. Borsos. The webinar will take place on Wednesday, May 27, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

The U.S. Patent and Trademark Office’s inter partes review (IPR) and other post-issuance proceedings have become an increasingly popular means for accused infringers to challenge the validity of issued patents. While IPRs, post-grant reviews (PGR), and reexaminations may be faster and less-expensive alternatives to district court litigation, limitations on discovery and presentation of evidence in patent office proceedings raise concerns that are not present in the average litigation case.

Although expert evidence is not required in every case, decisions of the Patent Trial and Appeal Board thus far have indicated that expert testimony is often crucial to success and that grant or denial of a petition for post-grant proceedings can hinge upon the nature and structure of expert testimony. As a result, eliciting and attacking expert testimony can be an extremely important part of such proceedings. 

During this webinar, we will discuss strategies for the following:

  • Determining when expert evidence can assist your case
  • Eliciting and using expert evidence
  • Defending expert depositions
  • Challenging your opponent’s expert

Our speaker is Fitch Even partner Mark A. Borsos. Mark has comprehensive litigation experience in discovery, summary judgment briefing, pretrial preparation, settlement negotiations, and trial. Mark’s practice also includes patent preparation and prosecution, with a unique focus on USPTO reissue and reexamination patent proceedings.
 

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  • April 22, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Practical and Ethical Issues in Compensating Fact Witnesses: Are the Benefits Worth the Headache?” presented by Eric L. Broxterman. The webinar will take place on Wednesday, April 22, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Not only expert witnesses request payment for their time preparing for trial and their testimony, as once was the trend. Now fact witnesses with special knowledge about the case sometimes expect to be compensated as well. Although rules regarding compensation of fact witnesses have loosened over the years, such payments are not unconstrained. ABA Model Rule 3.4 (b) and the Federal Anti-Gratuity Statute provide some guidance on this topic, but have been criticized for being too vague.

In this webinar, you will learn practical advice on how to structure payments to fact witnesses, how to disclose such payments to opposing counsel, and other procedures that will not only help deflect the unavoidable appearance of impropriety associated from such payments, but will also help prevent sanctions from the court.  

During the webinar, we will discuss the following:

  • An overview and interpretation of rules and statutes relating to compensation of fact witnesses
  • Exemplary legal opinions dealing with such compensation
  • Structuring and disclosing payments
  • Sanctions and other ramifications if compensation is done incorrectly

Our speaker will be Fitch Even partner Eric L. Broxterman. Eric is a litigator with extensive trial experience in patent cases. A registered patent attorney, he also counsels clients on patent prosecution, infringement/invalidity opinions, and IP transactional issues. 
 

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  • March 26, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “PTAB Trial Practice: Insights from a Former USPTO Judge,” presented by Fitch Even counsel and former Administrative Patent Judge Kenneth W. Hairston. The webinar will take place on Thursday, March 26, 2015, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

With the rise of post-issuance proceedings, an increasing number of lawyers are presenting to the Patent Trial and Appeal Board (PTAB) with little prior experience. Moreover, the makeup of the PTAB has changed significantly in the past four years, tripling in size from about 75 judges to over 225 judges, many of whom lack substantial judicial experience. That, along with the large backlog of ex parte and inter partes cases pending before the PTAB, can greatly affect post-issuance proceedings. So what should petitioners and patent holders know as they approach a post-issuance review? And what’s behind the relatively high fees in these proceedings?

During this program, Ken Hairston will share his insights on trial practice before the PTAB, addressing these topics and more:

  • How to gain a judge’s attention in a post-issuance proceeding
  • How the backlog of PTAB cases may impact your post-issuance proceeding
  • Understanding the costs involved
  • How to work with PTAB trial practice rules to save time and money
  • Sound, effective approaches to conducting the litigation

Our speaker Ken Hairston has provided IP law counsel for nearly 40 years, including 23 years serving as an Administrative Patent Judge at the Board of Patent Appeals and Interferences (now known as the PTAB) at the U.S. Patent and Trademark Office. Drawing upon the insight gained from his judicial work, Ken currently counsels clients on complex patent prosecution matters and patent office appeals, as well as administrative post-grant patent challenges.
 

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  • January 29, 2015

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Utility Model Patents: Use and Enforcement in Global Patent Practice,” presented by Jonathan C. Hughley. The webinar will take place on Thursday, January 29, 2015, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

In a number of countries outside the U.S., alternative types of patent protection are available to inventors. While many attorneys and inventors are aware of the standard patent, the utility model patent (also known by alternative names in various countries) is less recognized and less frequently used. However, the use of these patents is rapidly expanding in some countries and can be an effective tool in an intellectual property portfolio. Understanding how these patents are obtained and enforced can be essential to companies and inventors with a global presence. 

During this webinar, we will cover these topics and more:

  • General concepts common to utility model patent applications
  • Current trends in filings of utility model patent applications worldwide and country by country
  • Basic guidelines and distinguishing features of utility model patent applications in China and other countries 
  • Prosecution and enforcement of these applications in select countries 
  • Useful practice tips

Our speaker will be Fitch Even attorney Jonathan C. Hughley. Jonathan currently focuses his IP law practice on patent preparation and prosecution, assisting clients that are global leaders in a variety of industries. In addition, he has participated on litigation teams working to protect, enforce, and defend clients’ intellectual property rights. Jonathan also counsels clients on IP-related aspects of advertising, marketing, and promotions.
 

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  • December 17, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Lure of Functional Claiming: Benefits, Pitfalls, and Recent Court Decisions,” presented by Stephen S. Favakeh and Jonathan H. Urbanek. The webinar will take place on Wednesday, December 17, 2014, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

Patent attorneys have historically used functional claim language in an effort to cover what an invention does rather than what it is. The use of functional language in a claim presents potential advantages over strictly reciting structure, but also presents potential risks during prosecution and litigation. Understanding how the USPTO and courts are currently evaluating functional claim language is essential to writing and prosecuting patent applications that issue with valuable and enforceable claims. 

During the webinar, we will cover these topics and more:

  • Functional claim language: history, examples, and advantages
  • Functional claim-drafting techniques for maximum impact at the USPTO 
  • Cases including Nautilus, Inc. v. Biosig Instruments, Inc. and their impact on the interpretation of functional claim terms during litigation
  • Writing and prosecuting applications to survive the storm of litigation and post-grant proceedings

Our speakers will be Fitch Even attorneys Stephen S. Favakeh and Jonathan H. Urbanek. For over 20 years, Steve has assisted clients in the strategic procurement and enforcement of patent and trademark rights in the U.S. and abroad, with a special focus on Japanese clients. Jon focuses his IP law practice on patent preparation and prosecution and advises clients working in diverse technologies on issues including freedom-to-operate decisions, product design-arounds, and competitive technology analysis.
 

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  • October 29, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Product Packaging and Labeling: An Overview of Current Legal Principles,” presented by John M. Naber and John E. Lyhus. The webinar will take place on Wednesday, October 29, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Marketplace promotion of products can involve not only attractive packaging designs, but also a mix of labeling concerns including product performance claims, regulatory compliance, required disclosures, and identification of intellectual property rights. Product promotion not only drives sales, but seeks to develop brand loyalty and provide consumers with useful information about the product. As such, product packaging and labeling is tied to legal issues involving compliance with one or more government agencies, marking of IP rights, industry standards, and more.

During this webinar, we will provide an overview of current legal issues to consider when developing product packaging and will cover these topics:

  • A summary of issue spotting of product packaging 
    • Claim substantiation
    • Disclosures
    • Comparative claims 
    • Endorsements
    • Marking product IP 
  • Trademark use as a source identifier of a product
  • State and federal government compliance issues for food and medical products
  • Digital and print labeling

Our speakers will be Fitch Even partners John M. Naber and John E. Lyhus. John Naber is a licensed patent attorney with extensive experience in patent prosecution, clearance, and opinion work. He also counsels clients on issues that arise in corporate advertising, marketing, and product labeling and marking. John Lyhus focuses his IP practice primarily on trademark clearance and prosecution, enforcement, and global brand protection. He also represents clients in domain name dispute resolution, unfair competition, and copyright matters.
 

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  • August 28, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Provisionally Patented: The Strategic Use of Effective Provisional Applications,” presented by Michael J. Krautner and Conor S. Hunt. The webinar will take place on Thursday, August 28, 2014, at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12:00 noon EDT.

U.S. provisional patent applications have very few formal requirements. Accordingly, they can be an effective tool used by inventors, businesses, and their patent attorneys to quickly obtain an early filing date at little cost, which can be particularly useful with the current first-to-file system under the America Invents Act. But although provisionals are subject to few requirements of form, to have any value they still must satisfy the same legal disclosure requirements of nonprovisional applications. An effectual provisional application filing strategy should therefore find the right balance of speed and efficiency without sacrificing quality of disclosure. 

Our webinar will cover these topics as they relate to provisional applications:

  • Their purpose
  • The requirements
  • Pros and cons of filing provisional applications
  • Practical considerations for filing 
  • Strategies for using provisional applications to build a patent portfolio

Our speakers will be Fitch Even attorneys Michael J. Krautner and Conor S. Hunt. Michael has a broad-based practice with significant experience preparing and prosecuting patent applications, managing all stages of IP litigation, and counseling clients on complex IP issues. Conor focuses his practice on domestic and international patent prosecution involving mechanical and e-commerce technologies, as well as on patent evaluation, portfolio management, product clearance, and legal opinions.
 

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  • July 24, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Are Abstract Technological Advances Patentable? Go Ask Alice,” presented by Steven G. Parmelee and Nicholas T. Peters. The webinar will take place on Thursday, July 24, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

As amply suggested by the many opinions offered by the Court of Appeals for the Federal Circuit’s en banc decision in Alice v CLS Bank, in recent times, assessing patent claims for patent eligibility under 35 U.S.C. 101 has seemed to entail uncertainty. The recent decision of the U.S. Supreme Court in Alice confirmed that uncertainty, but in holding a financial software-related patent not patent-eligible, did the Supreme Court lead us out of the darkness and into the light?

During this webinar, we will discuss the following:

  • A brief recounting of recent precedent and administrative guidelines addressing patent eligibility
  • A review of the immediate precedential gestation of the Alice decision
  • How Alice makes some things clear
  • Whether we are any closer to understanding what is unduly “abstract”
  • What content those drafting patent applications can add to their claims to increase the patent eligibility of a claim that may include abstract subject matter

Our speakers are Fitch Even partners Steven G. Parmelee and Nicholas T. Peters. Steve has extensive experience in complex patent preparation and prosecution in the U.S. and abroad, and has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions for over 35 years. In his wide-ranging IP practice, Nick uses his litigation and USPTO experience combined with his technical background in physics, electrical engineering, and mechanical engineering to assist his clients in securing and protecting their IP assets.
 

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  • June 26, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Joint Infringement and Indefiniteness After Limelight and Nautilus,” presented by Eric L. Broxterman and Paul B. Henkelmann. The webinar will take place on Thursday, June 26, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

On June 2, 2014, the U.S. Supreme Court issued two opinions that continue the Court’s trend of decisions unfavorable to patentees. In Limelight Networks v. Akamai Technologies, the Supreme Court reversed a divided Federal Circuit that had held a party may be liable for inducement of infringement despite the lack of a single direct infringer. As a result, where the performance of a patented method can be divided between two or more actors, infringement may be avoided. 

In Nautilus Inc. v. Biosig Instruments Inc., the Court held that the Federal Circuit’s application of its “insolubly ambiguous” standard for claim indefiniteness “breeds lower court confusion” and held that a patent is invalid for indefiniteness if its claims fail to inform with reasonable certainty those skilled in the art about the scope of the invention. 

These cases have important implications for businesses, patentees, and practitioners.

During the webinar, we will discuss the following and more:

  • Brief overview of joint infringement and indefiniteness precedent
  • The Limelight and Nautilus opinions and holdings
  • Implications of the Limelight and Nautilus decisions
  • Practical considerations going forward
Our speakers are Fitch Even attorneys Eric L. Broxterman and Paul B. Henkelmann. Eric has a broad-based intellectual property law practice, with a particular emphasis on litigation. He counsels clients in a variety of industries on patent prosecution, infringement/invalidity opinions, IP transactional issues, and IP procurement. Paul focuses his practice on patent litigation, patent procurement, and IP counseling. He has substantial experience in both asserting and defending against patent infringement claims in the federal courts. 

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  • May 29, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Octane Fitness and Highmark: The Supreme Court’s New Standard for Finding a Patent Infringement Case ‘Exceptional,’” presented by Jared E. Hedman. The webinar will take place on Thursday, May 29, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

On April 29, in two cases, Octane Fitness LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc., the U.S. Supreme Court issued opinions that significantly alter the Federal Circuit’s rigid standards for establishing and appealing an exceptional case and a related award for attorneys’ fees. The Court’s decisions arguably both ease the requirements necessary for the grant of attorneys’ fees and make it more difficult to challenge a district court’s decision on appeal. As such, the two decisions immediately impact litigation strategies for both pending and contemplated patent infringement cases.       

During the webinar, we will discuss the following and more:

  • A review of exceptional case and attorney fee-shifting precedent
  • The Octane Fitness and Highmark opinions and holdings
  • The effects of the decisions—who is potentially impacted and how

Our speaker will be Fitch Even partner Jared E. Hedman. Jared is a trial lawyer who, in addition to a wide range of patent infringement litigation, has represented clients in intellectual property disputes involving breach of contract, trade secrets, and copyright ownership.
 

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  • April 30, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, "Intellectual Property as Business Asset: Where Is the Value and How Do You Find It?", presented by Karl R. Fink. The webinar will take place on Wednesday, April 30, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT. 

The constantly changing landscape of intellectual property law is dizzying, but the answer to the fundamental question of where is the value of intellectual property—and how do you find it—is always at the back of our minds. This presentation will review, considering the current state of the law, where the value of intellectual property is found, or not found, and will provide suggestions on determining whether a business, or its products and services, could benefit from intellectual property protection. 

During the webinar, we will discuss these topics and more: 

  • What do patents, trademarks, trade secrets, and copyrights protect? 
  • What kinds of intellectual property are valuable, and why? 
  • What kinds of enterprises realize substantial economic value from intellectual property, and why? 
  • How do you determine whether a product or service should be protected with intellectual property? 

Our speaker will be Fitch Even partner Karl R. Fink. Karl has been a trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the country. His practice includes all aspects of intellectual property litigation, creation, management, enforcement and licensing, with particular emphasis on patent litigation. 

 

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  • March 20, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Trade Secret Implications of the America Invents Act: Can the Coca-Cola® Formula Now Be Patented?”, presented by Thomas F. Lebens. The webinar will take place on Thursday, March 20, 2014, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

As we pass the one-year anniversary of full implementation of the America Invents Act (AIA), we mark a year of significant changes to the practice of patent law. However, seldom discussed are the profound effects of the AIA on patent law’s sibling—trade secret law. This presentation will explore the AIA from the perspective of the trade secret owner when contemplating whether to patent an invention or to hold its development as a trade secret.

During the webinar, we will

  • recount the pre-AIA relationship between trade secret law and patent law,
  • summarize and contrast AIA provisions defining prior art, and
  • explore how the decision to patent (or not) made today by the trade secret owner may differ from the pre-AIA decision.

Our speaker will be Fitch Even partner Thomas F. Lebens. Since 1991, Tom has focused his practice on the preparation and prosecution of patent, trademark, and copyright applications, including appeals, post-grant review, and interferences. He also regularly assists clients with sophisticated IP and business strategy, infringement and validity analysis and opinions, licensing issues, and IP portfolio development and management.
 

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  • February 27, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Configured to”—Patent Claim Friend or Foe?, presented by Steven G. Parmelee. The webinar will take place on Thursday, February 27, 2014, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The number of issued U.S. patents having at least one independent claim that includes the phrase “configured to” has increased six-fold since the year 2000. But what does that expression really mean? To date, most of the time the Patent Trial and Appeal Board (PTAB) gives full weight to the features characterized by that expression. In a minority of decisions, however, the Board holds otherwise. What makes the difference? And in a recent decision by the U.S. Court of Appeals for the Federal Circuit, Chief Judge Rader argued that no patentable weight need be given to claim expressions that describe how a device is configured to perform a particular task. Has the PTAB been wrong most of the time?

During this webinar we will address these topics and more:

  • A brief history of “configured to”
  • A brief related history of functional claim language
  • Possible substitutes for “configured to”
  • Possible drafting solutions to avoid bad results with “configured to”

Our speaker will be Fitch Even partner Steven G. Parmelee. For over 35 years, Steve has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions. Having prepared well over 1,000 U.S. patent applications, he has extensive experience in complex patent preparation and prosecution in the U.S. and abroad.

 

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  • January 23, 2014

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, "Advertising and Promotions: Basic Legal Principles in Today's Fast-Paced Digital World," presented by Sherri N. Blount and Nicole L. Little. The webinar will take place on Thursday, January 23, 2014, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

Although today's marketplace is bursting with opportunities to advertise and promote through more social media outlets and mobile apps than most people can keep track of, the same basic legal principles apply to advertising and promotions today as they did 50 years ago, albeit with a few new rules and exceptions. This webinar will provide an overview of the legal principles you should keep in mind whether advertising or promoting in print or digitally. We will discuss the following topics and more:

  • A brief synopsis of claim substantiation, disclosures, comparative claims, and endorsements
  • A summary of lottery law, consideration, sweepstakes rules, and contests
  • Important considerations that apply specifically to digital advertisements and promotions, such as 
    • complying with the law when running your promotion on popular social media platforms
    • making sure your dot-com disclosures are accessible and understandable 

Our speakers will be Fitch Even partner Sherri N. Blount and attorney Nicole L. Little. Sherri has extensive experience as a transactional and regulatory attorney whose practice focuses on the intersection of intellectual property, media, and advertising and promotions law. Nikki divides her practice between IP litigation and transactional work. In addition to patent prosecution and clearance and opinion work, she counsels clients on the IP issues that arise in corporate advertising, marketing, and promotions.

 

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  • November 21, 2013

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Patent Law Primer Post-AIA: Do We Still Need to Keep Lab Notebooks?" presented by Paul B. Henkelmann. The webinar will take place on Thursday, November 21, 2013, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The America Invents Act (“AIA”), the most significant reform to U.S. patent law in decades, is now in full effect. While many fundamentals of patent law remain intact, the AIA instituted numerous changes to the law of patentability and patent enforceability that have important practical implications for businesses, inventors, patent applicants, patent owners, and patent practitioners.

One significant change to patent priority law is the determination of who has the right to receive a patent; under the AIA, the U.S. patent system changed from a “first-to-invent” system to a “first-to-file” system. As a result, a patent applicant can no longer “swear behind” a prior art reference by showing that the applicant invented the subject matter of an invention first. Does this mean that keeping lab notebooks or other proof of inventive activities is no longer necessary? 

During this webinar, we will cover these topics and more:

  • Protection provided by patents
  • Reasons for acquiring patent protection
  • Requirements for receiving a patent
  • An overview of the AIA
  • Practical implications of the AIA
  • Best practices for patent applicants going forward

Our speaker will be Fitch Even attorney Paul B. Henkelmann. Paul focuses his practice on patent litigation, patent procurement, and intellectual property counseling. He has substantial experience in both asserting and defending against patent infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios. Paul has worked with a broad range of mechanical and electrical technologies, ranging from complex automotive technology to sporting goods.
 

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  • October 24, 2013

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Inter Partes Reviews (IPRs): Lessons from the First Year,” presented by Timothy R. Baumann. The webinar will take place on Thursday, October 24, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

One of the new procedures instituted by the Leahy-Smith America Invents Act (AIA) is the inter partes review (IPR). The IPR is a recently instituted post-issuance procedure before the Patent Trial and Appeal Board that purposefully introduces litigation-type aspects into a patent office setting. Under the terms of the AIA, a determination of the validity of claims of a patent will be reached within one year after an inter partes review is initiated.

During this webinar, we will discuss these IPR topics and more:

  • Background information concerning IPRs
  • Estoppel consequences of IPRs
  • Limited discovery aspects of IPRs
  • Motion practice
  • Claim amendments
  • Parallel litigation considerations such as stays

Our speaker will be Fitch Even partner Timothy R. Baumann. Tim has extensive experience assisting clients in the acquisition, protection, and management of all forms of intellectual property, particularly through complex patent prosecution and through the preparation of infringement and validity opinions, reexamination proceedings, and patent licensing agreements. Tim’s substantial litigation experience includes motion practice, taking and defending depositions, discovery practice, and trial work. At present, Tim is engaged in an active IPR (one of the very first filed). 
 

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  • July 31, 2013

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Patent-Eligible Subject Matter Considerations After CLS Bank and Ultramercial,” presented by David M. Kogan. The webinar will take place on Wednesday, July 31, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT. 

The Court of Appeals for the Federal Circuit recently issued a much-anticipated en banc decision for CLS Bank v. Alice Corp, addressing the requirements for patent eligibility under 35 U.S.C. § 101. The en banc opinion held that the method and computer-readable medium claims were not directed to eligible subject matter under §101. The opinion appeared to indicate agreement that what is needed is “a consistent, cohesive, and accessible approach to the §101 analysis,” but the 10-member en banc panel clearly disagreed on the correct approach, issuing seven different opinions and “reflections.” Even more recently, in Ultramercial v. Hulu, a three-member panel of the Federal Circuit concluded that the claims were patent-eligible subject matter under §101, but appeared to disagree on the rationale for this conclusion. 

During this webinar, we will review and discuss the following topics and more: 

  • Statutory basis for patentable subject matter and notable Supreme Court decisions
  • An overview of In re Bilski and its impact on the definition of patentable subject matter 
  • CLS Bank: Summary and implications on the test of patent-eligible subject matter  
  • Ultramercial: Does the first post-CLS Bank Federal Circuit case offer help?

Our speaker is Fitch Even attorney David M. Kogan. A registered patent attorney, David has substantial experience in both patent prosecution and litigation, handling matters relating to mechanical, chemical, pharmaceutical, and software technologies. David also counsels clients on worldwide IP portfolio management, strategic development, and licensing. 
 

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  • June 27, 2013

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Understanding the Limits of Your Patent: An Overview of Claim Construction for Prosecution and Litigation,” presented by Mark A. Borsos. The webinar will take place on Thursday, June 27, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Claim construction often takes center stage in patent litigation. The interpretation of specific claim terms affects many of the key issues determined afterward, including infringement and validity, and in some cases is dispositive. The interpretation of claim terms can also help determine the outcome of issues such as inequitable conduct and inventorship. Consequently, it is important to consider different ways in which claim terms can be construed early on in litigation, and even during drafting and prosecution of the patent application. 

We will review and discuss the following topics and more:

  • Types of evidence considered during the claim construction process
  • Claim construction concerns during patent drafting
  • Thinking ahead to litigation during patent prosecution
  • U.S. Patent and Trademark Office consideration of interpretation-based arguments
  • Common claim construction pitfalls
  • Recent questions regarding deference to the district court’s claim interpretation

Our speaker is Fitch Even partner Mark A. Borsos. Mark has comprehensive litigation experience in discovery, summary judgment briefing, pretrial preparation, settlement negotiations, and trial. Mark’s practice also includes patent preparation and prosecution, with a unique focus on U.S. Patent and Trademark Office reissue and reexamination patent proceedings. He is skilled at taking patents through reissue and reexamination to advance licensing and litigation objectives.
 

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  • April 25, 2013

Please join Fitch, Even, Tabin & Flannery LLP and IPVision for a complimentary webinar, “Disruptive Technologies and Patents: A Case Study of Graphene,” presented by Steven G. Parmelee and Alex Butler. The webinar will take place on Thursday, April 25, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

A one-atom-thick sheet of carbon atoms arranged in a regular hexagonal pattern, graphene has earned headlines (e.g., “Graphene: Wonder Material of the 21st Century”) as frequent and breathless as normally staid scientific reporters ever permit. The 2010 Nobel Prize in Physics, enormous government and private sector investments, and countless articles, research papers, and grants have sparked an avalanche of patent filings. Published U.S. filings, for example, increased tenfold over a short five-year window.

This webinar will address the following topics:

  • Patenting behaviors that anticipated room-temperature superconductors
  • A deep dive into the statistics of graphene patenting to date
  • Patenting options available to those currently working in the graphene field
  • What those not (yet) working in the graphene field need to know

Our speakers are Fitch Even partner Steven G. Parmelee and Alex Butler, Executive Vice President of IPVision. Steve is a patent attorney with over 30 years of experience and is a published author on white-space inventing. Alex has spent over 15 years advising organizations in creating unique patent strategies across numerous technology areas. 
 

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  • March 21, 2013

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, "How to Get the Most Out of Design Patents," presented by Edward E. Clair. The webinar will take place on Thursday, March 21, 2013, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

With the impending dramatic U.S. Patent and Trademark Office fee increases, many consumer product suppliers may opt for pursuing relatively less-expensive design patent protection over utility patents. In view of this, it is more important than ever for suppliers to know how to get the most out of their design patents. To that end, this webinar will cover the following topics and more:

  • Creative and innovative strategies for maximizing the strength of a design patent portfolio 
  • Recent rulings related to design patent law in the U.S. and the strategic import of same
  • The impact of the upcoming International Design Application on design patent programs
  • Cost and other considerations regarding national vs. community applications
  • The relationship of design patents to nontraditional trademarks (e.g., product configuration marks) and the costs, benefits, and risks of each

Our speaker will be Fitch Even partner Edward E. Clair. Ed advises clients on all aspects of domestic and foreign patents, trademarks, copyrights, advertising, trade secrets, and unfair competition, including contracts and other transactional work, prosecution, litigation, and opinion work.
 

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  • February 27, 2013

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, "America Invents Act First-to-File Changes: What Happens Now?" presented by Jeffrey A. Chelstrom. The webinar will take place on Wednesday, February 27, 2013, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST. 

New first-to-file rules under the America Invents Act (AIA) take effect on March 16. As this date approaches, it will behoove applicants to review pending invention disclosures and to determine the risks and benefits of filing under the old law versus the new law. During this program, we will explore the changes soon to come and their impact on prosecution strategy going forward. Patent prosecutors and litigators need to be aware of potential pitfalls when drafting, prosecuting, and analyzing applications in the future. 

We will review and discuss the following topics and more:
  • A summary of prior art rules and the limited grace period under the new first-to-file rules 
  • The unintended effects that new claims or amendments may have on existing applications
  • Continuation and continuation-in-part applications under the new law
  • Strategic filing considerations as March 16 approaches
  • Questions raised by the AIA that we may need to wait for the courts to answer

Our speaker will be Fitch Even partner Jeffrey A. Chelstrom. Jeff has extensive experience in writing and prosecuting patent applications for various technologies including chemical, materials, and mechanical arts. He leverages several years of experience as a chemical engineer along with his legal expertise to help keep his clients and their IP assets protected and secure. 
 

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  • January 31, 2013

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, "A Recap of Top 2012 TTAB Decisions," presented by Alisa C. Simmons. The webinar will take place on Thursday, January 31, 2013, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

In 2012, the Trademark Trial and Appeal Board (TTAB) issued several precedential decisions concerning topics such as TTAB discovery and trial procedure, standing to bring a claim before the TTAB, using web pages as specimens of use for goods, as well as dilution and likelihood of confusion. The Federal Circuit also affirmed a TTAB decision on dilution in the case Coach Services, Inc. v. Triumph Learning, LLC, which emphasizes the higher standard of proof required to show that a mark is famous for dilution purposes.

This webinar will provide a recap of these 2012 decisions, arming you with helpful insight into the TTAB’s recent rulings on issues relevant to protecting and registering your marks with the U.S. Patent and Trademark Office and asserting your marks in TTAB proceedings. We will consider the following issues and more:

  • The stringent showing necessary to prove fame for dilution purposes before the TTAB
  • Consequences of not updating initial disclosures before trial
  • Proving lack of bona fide intent to use a mark
  • Standing to bring actions before the TTAB
  • Using web pages as displays associated with goods to support use of a mark on goods

Our speaker will be Fitch Even attorney Alisa C. Simmons. Alisa focuses her practice on U.S. and foreign trademark prosecution, trademark litigation, and brand selection. She also provides counsel on copyright registration and enforcement, advertising review, and sweepstakes and promotions. In addition, Alisa handles matters involving unfair competition and domain name counseling and dispute resolution.
 

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  • November 28, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, "In re MSTG, Inc.: The Discoverability of Patent Infringement Settlement Negotiations," presented by Jared E. Hedman. The webinar will take place on Wednesday, November 28, 2012, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

On April 9, 2012, the Federal Circuit considered a patent holder's attempt to fashion a new privilege to protect patent litigation settlement negotiations from discovery. The Federal Circuit refused to create the "settlement negotiation privilege," and also refused to disturb the district court's order to compel production relating to past litigation settlement negotiations. However, although patent litigation settlement negotiations are not protected from discovery per se, the In re MSTG case and other related cases demonstrate that the discoverability of settlement negotiations is not a cut-and-dried issue.

This webinar will discuss the In re MSTG decision and related topics, including these:

  • The relevance of patent settlement negotiations to later assertions of infringement
  • How previous settlement negotiations should be treated in later assertions of infringement
  • Approaching patent infringement settlement negotiations with an eye toward discoverability

Our speaker will be Fitch Even partner Jared E. Hedman. Jared is a trial lawyer who, in addition to a wide range of patent infringement litigation, has represented clients in intellectual property disputes involving breach of contract, trade secrets, and copyright ownership.
 

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  • October 23, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Continuation-in-Part Patent Application Practice—When Good Parents Go Bad,” presented by Steven G. Parmelee. The webinar will take place on Tuesday, October 23, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Patent practitioners and their clients often view and apply continuation practice in the U.S., including the filing of continuations-in-part, in generous ways. Continuation-in-part (CIP) applications, however, can give rise to significant procedural concerns that many practitioners regularly neglect to acknowledge. The results can range from unnecessarily shortened patent lifetimes to wasted time, effort, and treasure in the form of dead-on-arrival CIP applications.

This webinar will address the following topics:

  • An overview of continuation practice and the corresponding basic requirements
  • The priority dates that apply to a CIP
  • When a parent application can become prior art against its own CIP offspring
  • The many possible faces of a “parent” (including PCT publications, foreign publications, USPTO publications, etc.)
  • The “continuous disclosure” requirement
  • CIP impact on patent term
  • Strategic considerations and practices (including selective use of provisional applications and requests to not publish pending applications in the U.S.)

Our speaker will be Fitch Even partner Steven G. Parmelee. For over 35 years, Steve has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions. Having prepared well over 1,000 U.S. patent applications, he has extensive experience in complex patent preparation and prosecution in the U.S. and abroad. Steve is also a published author and a frequent speaker on intellectual property topics.
 

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  • September 13, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “AIA Provisions Effective September 16, 2012: Inventor’s Oath or Declaration, Supplemental Examination, and More,” presented by Nada J. Ardeleanu. The webinar will take place on Thursday, September 13, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Further provisions of the Leahy-Smith America Invents Act (AIA) go into effect on September 16, 2012. Over the past several weeks, the U.S. Patent and Trademark Office has issued rules governing some of the new AIA procedures. In this webinar, we will pick up where our August 23 webinar left off and discuss more of the final rules and implementation of AIA provisions including these, among others:

  • New requirements and filing considerations for the inventor’s oath or declaration
  • How assignments can be used as an oath or declaration
  • How and when a patent owner may request a supplemental examination
  • How the immunity to inequitable conduct is applied upon such a request

Our speaker will be Fitch Even attorney Nada J. Ardeleanu, who focuses her law practice primarily on foreign and domestic patent preparation and prosecution, IP litigation, opinion and clearance work, due diligence, and international IP protection. Nada counsels clients ranging from large corporations to small businesses and start-ups working in industries that include food processing and packaging, pharmaceuticals, medical devices, chemical processing, and mechanical engineering.
 

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  • August 23, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Third-Party Pre-Grant Prior Art Submissions Under the America Invents Act,” presented by Amanda L. Lowerre. The webinar will take place on Thursday, August 23, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Further provisions of the Leahy-Smith America Invents Act (AIA) go into effect on September 16, 2012. In the past several weeks, the U.S. Patent and Trademark Office (USPTO) has issued rules governing some of the new AIA procedures. In this webinar, we will discuss some of the final rules and implementation of these provisions of AIA, including

  • the expanded opportunity for a third party to file prior art submissions into a pending application, and whether such submissions might be a desirable option for you or your client;
  • the expanded rules permitting citation of prior art in a patent file under section 301; and
  • how you or your competitors might use the new AIA provisions in pending applications and issued patents.

Last week, the USPTO issued additional rules governing post-grant review, the inventor’s oath or declaration, supplemental examination, inter partes review, and covered business method review provisions. These new rules will also go into effect on September 16. During our webinar, we will examine some of these additional AIA provisions as well.

Our speaker will be Fitch Even attorney Amanda L. Lowerre, who focuses her IP law practice primarily on patent prosecution, licensing, and business methods, with an emphasis on mechanical technologies. Amanda helps clients leverage their IP assets by developing global prosecution strategies that fit with each company’s needs and goals.
 

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  • May 23, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Inequitable Conduct After Therasense: Materiality and the Intent to Deceive in Aventis Pharma S.A. v. Hospira, Inc.,” presented by Alison Aubry Richards. The webinar will take place on Wednesday, May 23, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

On April 9, 2012, for the first time after the Therasense decision, the Federal Circuit affirmed a finding of inequitable conduct in Aventis, signifying that inequitable conduct based on failure to cite prior art to the U.S. Patent and Trademark Office is still a viable patent infringement defense.

Inequitable conduct has long required both intent to deceive and materiality. Prior to the May 2011 decision in Therasense, the Federal Circuit had generally applied a low standard for intent and a broad view of materiality. The Federal Circuit’s decision in Therasense changed these standards for inequitable conduct, making it far more difficult to prove. First, the Federal Circuit required specific knowing and deliberate intent to deceive. Second, Therasense raised the materiality standard, requiring “but-for” materiality. In Aventis, the Federal Circuit affirmed a finding of inequitable conduct for the first time since Therasense.

This webinar will address these topics and more:

  • How to defend against an inequitable conduct defense;
  • How to maximize the chances of a successful inequitable conduct defense; and
  • How to avoid inequitable conduct as a prosecuting attorney, before and during litigation.

Our speaker will be Fitch Even partner Alison Aubry Richards. Alison is a trial attorney in the firm’s litigation group and focuses her practice on patent and copyright litigation. She graduated from Harvard Law School in 2003.
 

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  • April 25, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Trademark Protection Strategies in Social Media,” presented by Joseph T. Nabor. The webinar will take place on Wednesday, April 25, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT. 

Eight years ago, Facebook did not yet exist. Today, there are an estimated 400 million users who share more than 5 billion pieces of content including photos, notes, and links every week. There are upwards of 1.5 million businesses with active pages on Facebook, and more than 20 million people become fans of various pages each day. And that’s just Facebook; there are also LinkedIn, Twitter, Google+, Pinterest, and other forms of social media to consider.

All this activity can be a brand manager’s dream come true—or a trademark holder’s nightmare. To help sort out some of the most important issues, this webinar will explore the following topics:

  • Exposure of trademarks on social media sites
  • Monitoring and enforcement against trademark infringement on social media sites
  • Creating a social media policy
  • Using social media in litigation support
  • Ethics issues in social media

Our speaker will be Fitch Even partner Joseph T. Nabor. Joe oversees Fitch Even's Trademark and Copyright practice group and has extensive experience in both domestic and international trademark prosecution, as well as litigation. He also regularly counsels clients on brand development strategies, including securing trademark rights throughout the world, and assists with the enforcement and protection of rights developed under the copyright laws of all international jurisdictions.
 

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  • March 21, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Provisional Patent Applications: Making Substance in a Land Without Form,” presented by Steven G. Parmelee. The webinar will take place on Wednesday, March 21, 2012, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT. 

The first-to-invent impact of the America Invents Act requires a serious reevaluation of the use and content of provisional patent applications. Because many clients may wish to use this filing approach more often, this webinar sets out to instruct and empower various parties, from inventor to patent attorney, to prepare and file provisional patent applications that are long on quality and short on costly overtures to form.

U.S. provisional patent applications have few requirements of form. One could, for example, file a copy of the proverbial dinner napkin upon which the inventor scribbled the details of an idea. It is therefore possible to submit provisional patent applications for very little cost. Is it possible, however, to achieve substantive parity with traditional patent application drafting techniques while avoiding costly matters of form when preparing a provisional application? Our webinar will cover such factors, addressing these topics and more:

  • The job of a provisional patent application
  • The bare minimum
  • Value-added content
  • What not to include
  • How many inventions to include
  • Filing strategies

Our speaker will be Fitch Even partner Steven G. Parmelee. For over 35 years, Steve has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions. Having prepared well over 1,000 U.S. patent applications, he has extensive experience in complex patent preparation and prosecution in the U.S. and abroad.
 

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  • February 22, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “Patent Reexaminations in Parallel with Litigation,” presented by Joseph E. Shipley. The webinar will take place on Wednesday, February 22, 2012, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

Reexamination proceedings in the U.S. Patent and Trademark Office (USPTO) are increasingly used as an alternative or adjunct to litigating validity in the federal courts. As reexamination procedures grow in popularity, it is becoming more and more important for patent attorneys to understand the factors that should be considered in deciding whether to seek reexamination. Our February webinar will cover these factors in depth, addressing the following topics and more:

  • Objectives: What can be achieved in reexamination and what cannot
  • Current statistics on outcomes
  • Associated risks
  • Associated costs
  • Time frames
  • Reexamination options
  • Alternatives to reexamination

We will also briefly discuss two new USPTO procedures that will become available on September 16, 2012--Post-Grant Review and Inter Partes Review--and will compare and contrast these with the current procedures. The webinar will conclude with an interactive question and answer session.

Our speaker will be Fitch Even partner Joseph E. Shipley. For over 25 years, Joe has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions. He has extensive experience in both U.S. and international work involving patent prosecution and post-issuance challenges in reexaminations and other proceedings. Joe’s practice focuses on first understanding clients’ business issues, then developing and executing creative IP strategies to address the clients’ needs in a highly efficient manner.

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  • January 19, 2012

Fitch, Even, Tabin & Flannery LLP welcomes you to a complimentary webinar, “The USPTO’s Recent Changes to Appeal Practice: What, When, How, and Why,” presented by Kenneth W. Hairston. The webinar will take place on Thursday, January 19, 2012, at 9:00 am PDT/ 10:00 am MDT/ 11:00 am CDT/ 12:00 noon EDT.

During this program, attendees will learn about the immediate effects the new USPTO rules will have on practice before the Board of Patent Appeals and Interferences (the “Board”). For one example, these new rules will apply to all appeals in which a notice of appeal is filed on or after January 23, 2012.

Topics to be reviewed and discussed during this presentation will include these:

  • Reasoning behind some of the mandatory briefing requirements of the old Board rules
  • Reasoning behind the changes made to the new Board rules
  • Significant amendments to the new Board rules
  • Significant deletions made to the old Board rules
  • How the new Board rules will impact future appeals before the Board
  • Observations about the new rules, and recommendations concerning use of the new rules


The webinar will conclude with an interactive question and answer session.

Our speaker is Fitch Even counsel Kenneth W. Hairston. Mr. Hairston has provided intellectual property law counsel for over 37 years, including 23 years serving as an Administrative Patent Judge at the Board of Patent Appeals and Interferences at the USPTO. Drawing upon the insight and extensive experience gained from his judicial work, Mr. Hairston currently counsels clients in complex patent prosecution matters and patent office appeals, as well as administrative post-patent grant challenges, including ex parte reexaminations.
 

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  • December 14, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Collection, Review, and Production of Your Client’s Electronic Information," presented by Shane Delsman. The webinar will take place on Wednesday, December 14, 2011, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.  

The e-discovery stage of collecting, reviewing, and producing your client’s electronically stored information (ESI) can be shaped by many factors, including the Federal Rules of Civil Procedure and the Federal Rules of Evidence. Although e-discovery can and often does involve massive amounts of information, the proper use of e-discovery tools can minimize the time and expense associated with collecting, reviewing, and producing such information.

This webinar will review and discuss the following topics and more:

  • Collecting ESI for further use in the e-discovery process
  • Processing collected ESI, including reducing the volume and converting formats to facilitate review
  • Reviewing ESI for relevance and privilege
  • Producing ESI for others in appropriate forms and storage media
  • How the Federal Rules affect the above procedures
  • Some example methodologies for collecting, processing, and producing ESI

The program will conclude with an interactive Q&A session.

Our speaker is Fitch Even attorney Shane Delsman. Shane has a wide-ranging intellectual property law practice that includes IP litigation, opinion counseling, and patent prosecution, with significant experience in e-discovery matters. He has previously presented and moderated presentations on e-discovery for Fitch Even and the IP Committee of the Chicago Bar Association. E-discovery generally takes place after a litigation hold has been put in place to preserve electronic evidence.
 

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  • November 17, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "The Leahy-Smith America Invents Act: A Further Look into First-to-File," presented by Jeffrey A. Chelstrom. The webinar will take place on Thursday, November 17, 2011, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.  

During this program, we will explore the future conversion of the U.S. patent system from a first-to-invent to a first-to-file system. In this major revision of the U.S. patent laws, Congress has replaced rather than revised Section 102, leaving only a few similarities to the old Section 102. Although this particular change does not take effect until March 16, 2013, it will have a dramatic effect on developing a patent strategy that inventors, companies, IP practitioners, and their clients all need to understand in order to effectively manage and develop a patent portfolio under the new laws.

This webinar will review and discuss the following topics and more:

  • The “effective filing date” of a patent application
  • Changes to Section 102 on Novelty and to Section 103 on Obviousness
  • New definitions of prior art
  • The narrowed grace period
  • Other exceptions to the first-to-file rules
  • Exemplary scenarios applying the new Section 102

The program will conclude with an interactive Q&A session.

Our speaker is Fitch Even partner Jeffrey A. Chelstrom. Jeff has extensive experience in writing and prosecuting patent applications for various technologies including chemical, materials, and mechanical arts. He leverages several years of experience as a chemical engineer along with his legal expertise to help keep his clients and their IP assets protected and secure.
 

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  • October 4, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "The Leahy-Smith America Invents Act: A First Look," presented by Nicholas T. Peters. The webinar will take place on Tuesday, October 4, 2011, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.  

During this program, attendees will learn about the immediate effects that the newly signed America Invents Act has on current U.S. patent laws—important changes that IP practitioners and their clients need to know about now. The webinar will focus primarily on the portions of the Act that are already in effect or will be in effect in the near term. 

The issues discussed will include these and more:

  • Restrictions in the joinder of multiple defendants in patent litigation
  • Enactment of the prior commercial use defense to a patent infringement claim
  • Restrictions in the ability to make false marking claims
  • Providing the ability to virtually mark
  • Establishment of a “micro entity” for fee payment purposes at the U.S. Patent and Trademark  Office (USPTO)
  • Change in the standard to initiate an inter partes reexamination
  • Establishment of the prioritized examination procedure at the USPTO

We will also briefly preview changes that will take effect in 2012 and 2013, including new patent-challenging procedures at the USPTO after patent issuance and making the transition from a "first to invent" system to a "first inventor to file" system.

Our speaker is Fitch Even partner Nicholas T. Peters. Mr. Peters has a wide-ranging intellectual property litigation practice, with a specialty in USPTO matters. He uses his litigation and USPTO experience combined with his technical background in physics and engineering to assist his clients in securing and protecting their IP assets.  
 

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  • September 21, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Matching Patent Prosecution to Your Business Goals," presented by Nicholas T. Peters. The webinar will take place on Wednesday, September 21, 2011, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.  

During this webinar, attendees will learn valuable lessons on how to navigate the United States Patent and Trademark Office (USPTO) and how the process of obtaining a patent can be strategically tailored to an applicant's specific business objectives.

The presentation will cover these topics and more:

  • How patent application drafting need not be "one size fits all" with respect to breadth, cost, and strategy
  • How USPTO procedures and rules affect patent prosecution speed and results
  • How different approaches to patent filing and prosecution strategies can be matched to a given business goal
  • A look ahead at proposed USPTO programs that may further an applicant’s ability to advance a particular business goal

In addition, attendees will hear about approaches to foreign patent filing, in connection with the above topics. The webinar will conclude with an interactive Q&A session.

Our speaker is Fitch Even partner Nicholas T. Peters. Mr. Peters has a wide-ranging intellectual property litigation practice, with a specialty in USPTO matters. He uses his litigation and USPTO experience combined with his technical background in physics, electrical engineering, and mechanical engineering to assist his clients in securing and protecting their intellectual property assets.
  

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  • August 31, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Litigation Holds: The First Step in Preventing Spoliation of Electronically Stored Information (ESI)," presented by Christine A. Pompa and Shane Delsman. The webinar will take place on Wednesday, August 31, 2011, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

The webinar will focus on spoliation—one of the biggest pitfalls faced by litigants and their attorneys—and how the use of carefully drafted litigation hold letters can help to reduce its likelihood.

Specific topics covered during this presentation will include

  • What is meant by the term "spoliation," and what its consequences are
  • What is meant by the term "ESI," and where it can be found
  • What a litigation hold is, when a hold is necessary, to whom it should be distributed, and what it should say
  • Methods to preserve ESI, and other ways to prevent spoliation

In addition, the presenters will share a number of practice tips, and will conclude with a Q&A session with attendees.

Our speakers are Fitch Even attorneys Christine A. Pompa and Shane Delsman. Ms. Pompa is an experienced intellectual property litigator who has been recognized in Illinois Super Lawyers - Rising Stars for 2010 and 2011. Mr. Delsman has a wide-ranging intellectual property law practice that includes IP litigation, opinion counseling, and patent prosecution, with significant experience in e-discovery matters.
 

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  • July 19, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Intellectual Property Concerns and Best Practices for Clients Having Products Manufactured in Asia," presented by Edward E. Clair. The webinar will take place on Tuesday, July 19, 2011, at 9:00 am PDT/10:00 am MDT/11:00 am CDT/12:00 pm EDT.  

The webinar will explore intellectual property concerns that domestic clients often face when having products designed, developed, and/or manufactured in Asia and will provide you with practice tips for protecting intellectual property and for addressing concerns that can arise when manufacturing products in Asia. 

The following topics (and more) will be discussed:

  • U.S. laws and regulations regarding the exportation of ideas, products, and processes to foreign countries (even when these items are intended for importation back into the U.S.)
  • How best to protect intellectual property before exporting anything to Asia   
  • How best to address concerns that often arise after exporting items to Asia, but before the client has pursued IP protection for same

A number of possible scenarios involving patents, trademarks, copyrights, and U.S. Customs will be presented as examples. The seminar will conclude with a Q&A session with attendees.

Our speaker is Fitch Even partner Edward E. Clair, who has extensive experience in protecting clients' intellectual property both domestically and abroad, in particular for entities who manufacture products in Asia and require assistance with both procurement and enforcement of such intellectual property globally.
 

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  • June 29, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Protection by Design: A Comparison of U.S. and European Design Protection," presented by Jon A. Birmingham. The webinar will take place on Wednesday, June 29, 2011, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 pm EDT.

This webinar will delve deeply into concepts relating to protecting designs in the U.S. and Europe from a U.S. perspective and will provide you with the information you need to understand many important differences between obtaining and enforcing U.S. design patents and European Registered Community Designs.

The following topics (and more) will be discussed: 

  • Determining the scope of a U.S. design patent application
  • Filing U.S. design patent applications claiming priority to European   Registered Community Designs
  • Enforcement of U.S. design patents post-Egyptian Goddess
  • Comparison of U.S. design patent application processes with European Registered
  • Community Designs processes
  • Comparison of U.S. design patent enforcement with European  Registered Community Designs enforcement, including differences in available relief

In addition, some simple examples and practice tips will be incorporated into the seminar. The webinar will conclude with a Q&A session with attendees.

Our speaker is Fitch Even partner Jon A. Birmingham. Jon has extensive experience in writing and prosecuting patent applications and enforcing patents for various technologies, including design patents.
 

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  • June 9, 2011

Fitch, Even, Tabin & Flannery welcomes you to a complimentary webinar, "Are You Liable for Your Customer's Patent Infringement?" presented by Allen E. Hoover. The webinar will take place on Thursday, June 9, 2011, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 pm EDT.

Are you liable for your customer’s infringement? If your customers are accused of patent infringement, you may find yourself in court, facing an assertion of liability as an indirect infringer. If you are an attorney advising a client on infringement issues, be aware that a number of recent developments have affected the law in this area.

This webinar will provide an introduction to the law of indirect infringement in the United States, and will provide practical guidance to managing the risks of indirect infringement. Topics discussed will include

  • Traps for the unwary
  • Steps to take when confronted with an issue of indirect infringement
  • The impact of recent court decisions    

The seminar will conclude with a Q&A session with the presenter.

Our speaker is Fitch Even partner Allen Hoover. Since 1993, Mr. Hoover's practice has focused on patent litigation and other complex patent matters. He has first- and second-chair trial experience in a substantial number of patent lawsuits. In addition, Mr. Hoover regularly manages patent portfolios for clients in a broad spectrum of technologies, and frequently counsels clients on patent infringement risks and other IP-related issues.
 

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  • March 30, 2011

On March 30, 2011, Fitch, Even, Tabin & Flannery hosted a webinar on "Social Media and Litigation." Topics covered included these:

  • How social media can be useful in discovering information about an opposing party
  • Tips on minimizing potential risk from your own social media use
  • The current state of the law with respect to evidentiary and ethical issues relating to social media

Although this webinar is no longer available for viewing, if you have questions regarding social media as it relates to litigation, please contact Fitch Even partner Christine A. Pompa.
 

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  • March 1, 2011

On March 1, 2011, Fitch Even hosted "Inventorship: How to See Through This 'Muddiest Concept . . . of the Patent Law,'" presented by Steven G. Parmelee. The webinar explored the concept of “inventorship” and provided information needed to understand how to make satisfactory determinations of this very fundamental inquiry. The following topics (and more) were discussed:

  • Statutory considerations
  • Inventorship tests
  • Proving inventorship
  • Assessing inventorship at the time of filing
  • Assessing inventorship post-filing
  • Correcting inventorship 
This webinar is no longer available for viewing, but if you have questions regarding the topic of inventorship, we invite you to contact Fitch Even partner Steven G. Parmelee.
 

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