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Preparing and Prosecuting a Patent That Holds Up to Challenge

Preparing and Prosecuting a Patent That Holds Up to Challenge

Mistakes made during preparation and prosecution of the patent are among the main reasons an otherwise commercially successful technology can produce a portfolio of low value, or even worthless patents.

Obtaining a patent that will hold up to challenge when the patent owner seeks to use that patent, whether through litigation enforcement or a licensing program, requires thoughtful consideration from the earliest stages. Of course, today many clients are demanding more for less compensation, which only makes the job of the patent practitioner all the more difficult, and mistakes all the more likely.

Join Anaqua on Thursday, February 8, 2018, at 12pm ET, as Gene Quinn, patent attorney and publisher of IPWatchdog.com, moderates a panel discussion on patent prosecution strategy, with featured panelists,  Bernie Tomsa, patent attorney and shareholder with Brooks Kushman and Russ Slifer, former Deputy Director of the USPTO and now Principal at Schwegman Lundberg & Woessner, P.A.

In this webinar, we will discuss:

1.  Pros and cons of having a Background (101 vs. 103).

2.  Prosecution history disclaimer vs. Prosecution history estoppel.

3.  Carefully considering claim terms and infringers.

4.  Fixing problems before and after allowance.

5.  Portfolio building techniques: Identifying valuable claims to add.



This webinar previously aired on February 8, 2018

About the Speakers

IPWatchdog.com Founder and Webinar Moderator

Gene is a patent attorney and a leading commentator on patent law and innovation policy. He is the Founder and Editor of IPWatchdog.com, which he started in 1999. IPWatchdog.com has been recognized multiple times by the American Bar Association as a top 100 legal blog.  Gene is regarded as an expert on software patentability and U.S. patent procedure.

Gene Quinn 

Russ Slifer

Principal, Schwegman, Lundberg & Woessner

Russ is a Principal at Minneapolis-based Schwegman, Lundberg & Woessner were he specializes in complex IP matters, including patent trials, appeals and expert witness testimony. He served as the Deputy Director of the USPTO, with over 12,500 employees, four regional offices and an annual budget of over $3 billion. As the Deputy Director, Russ was able to use his management and Intellectual Property experience to provide strategic operational and policy guidance to the USPTO.

Russ Slifer

Principal, Schwegman, Lundberg 

& Woessner Former 

USPTO Deputy Director

Anaqua is a privately-held company headquartered in Boston-US and has European offices in Cologne-Germany, London-UK and Pau-France as well as offices in other cities in the US, Asia and Europe. Our software and services help law firms distinguish their IP practices and corporations gain true competitive advantage from their intellectual property. 

From the very beginning their technology leadership has been driven by customer- led innovation; a powerful business model that gives clients a direct role in product definition. Their functionality is shaped by expert practitioners.  Workflows, taxonomies and templates have IP expertise built right in.

This Webinar Is Sponsored By:

In this webinar, we will discuss:

There are reasons why patents can be of questionable value. For practitioners there are myriad of issues to consider that impact patent quality and valuation.

Bernie Tomsa

Patent Attorney and Shareholder, Brooks Kushman

Bernie is a registered patent attorney with over ten years of experience drafting patents, freedom-to-operate opinions, responses and appeals in variety of technologies. Bernie has drafted hundreds of patents, and he has extensive experience with software patent applications related to video game software, interactive automotive software systems, digital circuits, database systems, advertisement delivery software and systems, web based applications, smart-phone applications, storage device hardware, and digital content delivery systems.  Bernie works with several multi-national corporations on the management of large patent portfolios. Understanding the competitive advantage that can be obtained through application of modern computing technology to portfolio management, Bernie has developed expertise with software providing analytical portfolio analysis.  

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