Patent Strategies for Protecting Aftermarket Parts: Strengthening the Portfolio, Implementing Enforcement Program

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Wednesday, February 8, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on patent strategies for protecting aftermarket parts. The panel will discuss leveraging IP to protect aftermarket parts and create obstacles for will-fitters. The panel will also discuss claiming tactics to block will-fitters and offer guidance on detecting and stopping will-fitters once a portfolio is in place.
Faculty

Mr. Urbanek has a broadly based IP law practice focused on the preparation and prosecution of patent applications in the United States and abroad. Clients trust him to work closely with engineering teams to identify the inventive aspects of new products and prepare patent applications that persuasively differentiate the invention from the prior art. Mr. Urbanek frequently meets with engineers and management in person to determine where each product and its intellectual property fit into the business strategy of the client.Â

Ms. Thompson currently focuses her law practice on patent preparation and prosecution and product clearance and legal opinions. In addition, she supports litigation teams through research and document preparation.
Description
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 and provide a recurring source of revenue. The profitable nature of aftermarket parts invites aftermarket competitors, sometimes referred to as will-fitters, to make competing parts. Competing parts offered by will-fitters may not only erode the manufacturer’s revenue stream but may cause safety and warranty concerns due to potential quality issues.
Jonathan H. Urbanek, Partner at Fitch, Even, Tabin & Flannery LLP, and Jacqueline L. Thompson, Associate at Fitch, Even, Tabin & Flannery LLP, will outline strategies for leveraging various forms of IP to protect aftermarket parts and create obstacles for will-fitters. The speakers will provide claiming tactics for aftermarket parts to craft a patent portfolio that blocks will-fitters. The speakers will also offer guidance for patent counsel on how to detect and stop will-fitters once a portfolio is in place.
Outline
- Strategies for leveraging various forms of IP
- Claiming tactics for aftermarket parts
- Guidance on how to detect and stop will-fitters
Benefits
The panel will review these and other key issues:
- Preparing, filing, and prosecuting patent applications to develop a strong portfolio focused on aftermarket parts
- Integrating business input into the patent life cycle
- Identifying and stopping will-fitters
- Creating non-patent challenges for will-fitters
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