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Webinar Archive

Living in a Post-Bilski World; Has the Patent Office Succeeded in Taking the Abstract Out of 'Abstract?'

Fitch, Even, Tabin & Flannery welcomes you to a Free Webinar presented by Steven G. Parmelee and Amanda L. Lowerre.

The Supreme Court of the United States recently issued its long anticipated decision for In re Bilski. In this decision the Court addressed the requirements for patent eligibility under Section 101 of Title 35 of the United States Code for claimed processes and concluded that the relatively new so-called machine-or-transformation test is a useful tool, but is not "the" test. In particular, the Court at least strongly hints both that a given claimed invention might be patent eligible notwithstanding a lack of either a machine or a transformation and also that a given claimed invention might not be patent eligible notwithstanding that the claimed invention includes either or both a machine or a transformation.

The real test, it seems to the Supreme Court, is whether or not the claimed invention is too “abstract.”

This is not a new word in the lexicon of assessing patent eligibility over the years. The very real problems associated with trying to apply such a word, however, are at least in part what brought the Court of Appeals for the Federal Circuit to ordain the machine-or-transformation test. While not necessarily rewinding the entire inquiry back to square one, the Supreme Court’s In re Bilski decision does seem to inevitably require a more substantive consideration of where the line between that which is “abstract” and that which is not is to be found.

On July 27, 2010 the U.S. Patent Office arose to this challenge by publishing its “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.” This “Guidance” presents a genuine attempt to capture, in words and by example, what it means to be “abstract” in the context of assessing patent eligibility.

This program is FREE.

When: Recorded Wednesday August 25, 2010
Registration Link: https://www1.gotomeeting.com/register/223407496

False Patent Marking and More

Fitch, Even, Tabin & Flannery welcomes you to a Free Webinar presented by Selena M. Spritz and Steven G. Parmelee.

You may be aware that recent case decisions have spurred the filing of well over one hundred false patent marking qui tam lawsuits in the past couple of months. The risks are very real.

This webinar will explain the qui tam false marking process, the holdings and dicta of relevant false marking decisions, and the basics of what to do to avoid false marking while retaining the constructive notice benefits of patent marking (without a doubt, the devil is in the details). This will include a discussion of the measure of damages, the risks of using grammatically correct but potentially culpable notice language, and various defenses that have been previously raised or that are presently being considered.

False marking represents a relatively fast-moving area of concern. To reflect a most-current view, this webinar will reflect upon and consider recent oral arguments in the appeal of the Solo Cup decision to the CAFC and also takes note of suggested legislative reactions as reported from Congress.

This presentation will also delve into some highly related side issues, such as the possibility of using a false marking qui tam action to force an explanation, within a judicial context, of a patentee's interpretation of their claims.

This webinar includes a white paper handout that explores in considerable depth these same points of interest. (False marking white paper.pdf)

This program is FREE.

When: Recorded April 22, 2010
Registration Link: https://www1.gotomeeting.com/register/243998096

Significant Upcoming Changes in EPO Practice and the Effect on U.S. Applicants and Practitioners

Fitch, Even, Tabin & Flannery welcomes you to a Free Webinar presented by Rudy Kratz and Gill Smaggasgale.

New and amended rules will go into effect in the European Patent Office on April 1, 2010. These rules will impose significant new requirements and will require changes in the way in which applicants and practitioners prosecute EPO patent applications. The new rules will address a number of different areas, including the timing of filing divisional applications, searching of multiple independent claims, mandatory responses to European search reports, mandatory responses to PCT written opinions, and the manner and timing of voluntary amendments.

This webinar will summarize the changes in the rules. It will also address the effect of the new rules on U.S. applicants and practitioners and will provide some approaches for dealing with the changes.

Rudy is a registered patent attorney and assists clients with U.S. patent preparation and prosecution in the mechanical and electrical fields. He also supervises much of the international patent filing at Fitch, Even, Tabin & Flannery and works with associates worldwide in seeking patent protection before the EPO and other patent offices. In addition to U.S. and international patent prosecution, Rudy assists clients with IP procurement and counseling matters, licensing, litigation, and opinions.

Gill Smaggasgale is a European Patent Attorney with the firm of W. P. Thompson & Co. Gill has substantial experience of representing a range of clients from SMEs to major corporations before the EPO in the filing and prosecution of applications and is able to tailor strategy for the differing needs of these clients. She routinely represents clients in oppositions whether as patentee or opponent and has substantial experience before the Boards of Appeal.

This program is FREE.

When: Recorded December 16, 2009
Registration Link: https://www1.gotomeeting.com/register/202283112

"Free" Software - History, Drama, Cautions, and Ways Forward

Fitch Even Tabin & Flannery welcomes you to a Free Webinar presented by Steven G. Parmelee.

Have you heard? “Free” software is out there: hundreds of thousands of programs of every genre, stripe, and functionality, often vetted and formally or informally supported. If your business writes code, or if you have others write code for you, the chances are good that your code writers have been tempted to incorporate an existing, well-behaved, and cost-free program into your product offering.

As always, there is no free lunch. Using such software often imposes a number of responsibilities on the user. These responsibilities range from the merely ministerial (such as including authorship attribution in your distributed code) to the substantive (such as agreeing to similarly provide free access to your resultant code to others) to the catastrophic (such as discovering that your proprietary secret code is no longer either proprietary nor secret).

This webinar delves into the history of “free” software and pays particular attention to the 800 pound gorilla in the room – GPL v2 and v3. “Open source” and “copyleft” principles and their corresponding usage ramifications are explained and the increasing amount of litigation in this arena both noted by example and placed into context. Numerous real-world examples are provided and the real-world impact of these experiences exemplified in new due-diligence issues and concerns.

This program is FREE.

When: Recorded December 10, 2009
Registration Link: https://www1.gotomeeting.com/register/727738457

KSR to the Rescue

Fitch Even Tabin & Flannery welcomes you to a Free Webinar presented by Steven G. Parmelee.

Much has been written about the use of the Supreme Court’s KSR decision as a sword to apply against the allowability of a patent application or the validity of an issued patent. For the prosecuting patent attorney, however, not all the news is bleak. The KSR decision is built upon a circumstance that in fact renders it subject to avoidance in many prosecution settings. Beyond this, KSR’s admonitions can actually be helpful to the prosecuting patent attorney in some settings to establish (rather than refute) nonobviousness.

This webinar, entitled KSR to the Rescue, presents a prosecuting attorney’s guide to living (and sometimes prospering) with KSR. The presentation includes a deep dive into KSR’s loophole as well as practical and field-tested approaches to using this holding to your advantage.

This program is FREE.

When: Recorded November 3, 2009
Registration Link: https://www1.gotomeeting.com/register/727738457

Prosecution Strategies in Chemical and Biotechnology Patent Applications

Fitch Even Tabin & Flannery welcomes you to a Free Webinar presented by James P. Krueger and Richard A. Kaba. This webinar will discuss patent prosecution strategies in chemical and biotechnology patent applications

Dr. Krueger practices intellectual property law with expertise in business strategy, patentability, preparing and prosecuting patent applications in the U.S. and abroad, infringement and validity analysis, licensing, and confidentiality and collaborative research agreements. Dr. Krueger focuses on intellectual property as it pertains to emerging technologies with a technical emphasis in the areas of chemistry and biotechnology. Dr. Krueger joined the firm in May of 1990. He is a registered U.S. Patent and Trademark attorney.

Dr. Kaba is a partner in the firm and focuses primarily in the areas of patent prosecution and strategy. He has been working with a number of clients in chemical, medical, pharmaceutical, and biotechnology areas on matters such as cell lines, enzymes, proteins, interferon, immunology, neuroscience and cancer, medical devices, environmental applications, injection molding, laser ablation and chemical vapor deposition techniques, plastic and polymer chemistry. Dr. Kaba has authored or co-authored over fifteen scientific and legal publications. He has also given numerous seminars across the country concerning patent practice, especially with regard to biotechnology.

This program is FREE.

When: Recorded October 29, 2009
Registration Link: https://www1.gotomeeting.com/register/800153456

Interim Rules for Patentable Subject Matter

Whether you have been heavily involved in pursuing (or defending against) so-called business method patents or not, you likely know that the CAFC’s decision in In re Bilski upset a lot of apple carts in these regards. Given the corresponding uncertainty, it is good that the Supreme Court has agreed to consider the decision and hopefully bring some certainty again to this area of practice.

Meanwhile, however, inventors continue to invent and patent attorneys (must) continue to prepare and file and prosecute corresponding patent applications. What, exactly, are we all to do when the apples have been spilled to the ground and the Supreme Court has not yet picked them up to show us where they all belong?

At a minimum, we need to be aware of the Patent Office’s “New Interim Patent Subject Matter Eligibility Examination Instructions” which were released on August 24, 2009. The “Interim” in that heading refers to the fact that patent examiners are to use these guidelines “pending a final decision from the Supreme Court in Bilski v. Kappos. We are pleased to announce that the next webinar in our webinar series, entitled Until the Supreme Court’s Bilski Decision . . ., will provide a thorough review of these interim guidelines and will also provide contextual information to facilitate a better understanding of what these guidelines may really be looking for. Our speaker, FETF partner Steve Parmelee, is a highly experienced patent practitioner who will also offer some practical tips on preparing and arguing your patent applications with these various 101 issues in their present state of flux.

This program is FREE.

When: Recorded October 21, 2009
Registration Link: https://www1.gotomeeting.com/register/721221041

Intellectual Property Overview: Everything you wanted to know about Intellectual Property and now you have a chance to ask

Fitch, Even, Tabin and Flannery welcomes you to a presentation by Ted Izen, Ph.D.

The discussion will focus on the use of intellectual property from a business perspective. It will provide some practical guidelines for developing, maintaining and extracting the maximum value from your intellectual assets. What is a trade secret and when do you want to turn it into a patent? What are the various types of patents, and who must be involved in the application? What is the process that you go through, how long does it take, and how much does it cost? What does “patent pending” really mean? When do you want to file for international patents, and what are the financial trade-offs? Once the patent is awarded, what can you do with it; what are the pros and cons of licensing (exclusive, non-exclusive, fields-of-use, etc.) or even selling it to another company? What about infringement of your patent or when your products infringe other patents? What resources are available to you to assist you in making these decisions?

Dr. Ted Izen holds a Ph.D. in Physics, and has extensive executive and general management experience in high technology industries. He formerly served as President of the intellectual property licensing organization within Rockwell International, with primary emphasis on extracting value from over 2000 US patents. Prior to this he was the Vice President of Business Development for a $1B Division of the Lockheed Martin Corporation. Dr. Izen is currently a consultant for a number of Fortune 500 companies related to intellectual property strategy, licensing, business development, and management. He works with clients to establish joint ventures or strategic alliances, and assists them in licensing or selling their patents, or in finding new patents to acquire. He has extensive experience in international business development, strategic partnering, licensing, and intellectual property management.

This program is FREE.

When: Recorded September 9, 2009
Registration Link: https://www1.gotomeeting.com/register/899248232

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