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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, March 16, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on patent inventive contribution. The panel will discuss how the courts have addressed the issue and the role of inventive contribution in patent litigation and licenses, as well as in patent prosecution. The panel will offer best practices for identifying and using inventive contribution.

Faculty

Jerry A. Riedinger
Partner
Perkins Coie

Mr. Riedinger focuses his practice on patent infringement, trade secret and complex intellectual property litigation. He has over 36 years' experience conducting patent litigation, he has represented clients in more than 110 patent litigation matters, and has been lead counsel in more than 66 patent litigations. Mr. Riedinger has practiced in over 120 technologies.

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Nagendra Setty
Shareholder
Setty Chachkes, PLLC

Mr. Setty has been an intellectual property trial lawyer for nearly 30 years. As a partner in national firms, Nick was lead counsel in +200 IP cases, representing clients, large and small, in a wide range of complex, technical cases involving semiconductor design, computer networking, wireless (e.g., WIFI, 4G LTE), smartphones, LCD TVs, pharmaceuticals and biotechnologies. For this body of work, Mr. Setty was featured in Chambers USA, Benchmark Litigation, IAM Patent 1000, Managing IP, and Diversity magazine.

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Description

An inventive contribution is the essence of the invention. For some inventions and patents, it will be easy to identify. However, in others identifying and using that inventive contribution will require some investigation and evaluation.

Patent litigators, transactional attorneys, and prosecutors must evaluate and understand the inventive contribution. litigators can strengthen their position by understanding a patent's inventive contribution and structuring their arguments around it. Likewise, those drafting and prosecuting patents should ascertain the inventive contribution early in the process and align the patent application with the inventive contribution.

However, patent counsel need to proceed carefully. The use of inventive contribution is not always effective and can present risks if counsel relies solely on the essence of the patent.

Listen as our authoritative panel of patent attorneys examines patent inventive contribution. The panel will discuss how the courts have addressed the issue and the role of inventive contribution for litigators and prosecutors, as well as for patent licenses. The panel will offer best practices for finding and using inventive contribution.

Outline

  1. Inventive contribution
    1. Identification
    2. Use
  2. Risks/dangers of relying on inventive contribution
  3. Court treatment
  4. Best practices
    1. For patent prosecutors
    2. For transactional attorneys handling patent licenses
    3. For patent prosecutors

Benefits

The panel will review these and other key issues:

  • Inventive contribution in patent litigation
  • Implications of inventive contribution for patent licenses
  • Court treatment of inventive contribution