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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, June 14, 2022

  • 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 prosecuting cryptocurrency-related patents. The panel will discuss steps to reduce the likelihood of rejection and strategies for effectively drafting patent applications. The panel will also look at litigation trends and how they inform patent prosecution enforcement.

Faculty

Cameron B. Pick
Partner
Marshall Gerstein & Borun

Mr. Pick prosecutes domestic and foreign patents for emerging technologies across a range of industries, with a particular focus on electrical and software engineering. He also prepares patentability, infringement, and freedom-to-operate opinions; responds to USPTO office actions; provides day-to-day IP counseling; and develops sophisticated, forward-thinking patent strategies for a diverse clientele, ranging from startups to Fortune 100 companies. Mr. Pick’s appeal briefs have delivered a number of client victories before the PTAB. Additionally, he has provided technical guidance to his Marshall Gerstein colleagues in support of various litigation matters.

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Michael V. Young Sr.
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Young practices patent law with an emphasis on patent portfolio management, client counseling, U.S. district court litigation, and post-grant proceedings. He also represents clients in the U.S. Court of Appeals for the Federal Circuit in cases stemming from court actions and post-grant proceedings. He has worked on inter partes review (IPR) and covered business method (CBM) post-grant review (PGR) proceedings. He develops offensive and defensive strategies for multiple, related proceedings; prepares and manages the preparation of written submissions; takes and defends technical expert depositions; and argues discovery and substantive issues.

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Nelson M. Rosario
Founder
Rosario Tech Law, LLC

Mr. Rosario’s practice is focused on working with clients in the #blockchain #crypto #web3 #NFT space, #AI driven companies, and the private #space sector. He works with clients in dealing with emerging technologies that are changing the way we think about privacy, property, and power. Mr. Rosario co-taught a law school class "Blockchain, Cryptocurrency, and the Law,” at Chicago-Kent College of Law, and has been a visiting professor at IE Law School based in Madrid, Spain. His commentary and analysis have been featured in the New York Times, TechCrunch, Coindesk, Law360 and other publications. 

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Description

Over the past few years, there has been a significant increase in new patent application filings directed to blockchain and cryptocurrency inventions. Those in the increasingly crowded crypto space need to realize that crypto-related inventions face challenges.

Among those challenges is overcoming the subject matter eligibility hurdle. As with many software-related patents, patent eligibility is not always apparent. Patent practitioners and applicants have struggled since the Supreme Court's decision in Alice Corp. v. CLS Bank Int'l (2014) to understand what qualifies as an abstract idea. Effective patent drafters will avoid language that raises questions of whether the human mind could perform the claim, another factor in determining patent eligibility.

Once crypto-related patents have overcome the eligibility hurdle, they must meet the novelty, non-obviousness, and written description/enablement requirements of Sections 102, 103, and 112, like other U.S. patents. Drafters need to demonstrate that the invention goes beyond a mere abstract idea.

Listen as our authoritative panel of patent attorneys examines prosecuting cryptocurrency-related patents. The panel will discuss steps to reduce the likelihood of rejection and strategies for effectively drafting patent applications. The panel will also look at litigation trends and how they inform patent prosecution enforcement.

Outline

  1. Cryptocurrency-related patents
  2. Prosecution strategies
  3. Minimizing the risk of rejections
  4. Litigation trends and the implications for patent prosecution
  5. Best practices for patent drafting crypto-related patents

Benefits

The panel will review these and other high profile issues:

  • What are the hurdles to patenting cryptocurrency inventions?
  • What steps can patent counsel take to minimize the risk of rejection?
  • What are the best practices for patent drafting to position a cryptocurrency-related patent application for allowance by the patent office?