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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

    Thursday, March 5, 2020

  • 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 the impact interactions with others can have on patent ownership. The panel will discuss the interplay between conception and joint inventorship that can become critical to patent ownership in departing-employee and customer-interaction scenarios. The panel will also examine the implications of interactions with others and will provide best practices for protecting a company's interests.

Faculty

Rebecca M. McNeill
Partner
MCNEILL, PLLC

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S. and foreign), and preparation and negotiation of IP transactions, and provides the full scope of counseling services. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies in concert with clients’ business goals. She has managed and directed the U.S. and international patent portfolios for U.S. clients and has overseen the U.S. patent portfolio for international clients in Europe and Asia.

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Adam M. Breier
Partner
McNeill Baur LLP

Dr. Breier’s practice focuses on patent prosecution, client counseling, and PTAB proceedings in the biotechnology and pharmaceutical areas. He coordinates global prosecution strategies, prepares domestic and foreign patent applications, performs freedom-to-operate, patentability, invalidity, and noninfringement analyses, and participates in post-grant administrative trials such as inter partes reviews. Dr. Breir has a special interest in subject matter including biochemical and biophysical analytical compositions, methods, and apparatuses; polymer chemistry; engineered or recombinant DNA, RNA, and proteins; and genetically modified cells. He also has prosecution experience with new chemical entities and with compositions and formulations in which hydrophobic or amphipathic materials such as lipids, polymers, or surfactants provide new and useful features. Dr. Breir has worked with domestic and foreign clients, including research institutions, startups, and established biotechnology, pharmaceutical, and chemical companies.

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Description

Patents and other IP are often one of the most valuable parts of a company and an essential piece of its business plan. However, companies often fail to consider the risks that arise when they interact with other parties.

For example, companies often hold pre-agreement technical discussions that do not end in a formal collaboration agreement. While there may be an NDA, they often do not address patent ownership or control. Further, scientists may be involved in initial discussion about an idea but then leave to join another company. Or perhaps customer feedback has resulted in improvements to a product. These circumstances may impact whether the company completely owns any resulting patent.

Patent counsel typically include provisions addressing intellectual property ownership and control when drafting collaboration agreements. However, agreements are often not in place that cover all potential interactions with others parties. Reliance on the contracts could prove problematic for patent ownership.

Listen as our authoritative panel of patent attorneys discusses how interactions with others can endanger a company’s exclusive patent ownership. The panel will examine the risks to patent ownership that may arise during interactions with others. The panel will discuss the implications of interactions with others and will provide guidance for protecting a company’s interests.

Outline

  1. Risks to patent ownership from interactions with others
  2. Implications of interactions with other parties
  3. Guidance for protecting the company's patents
    1. Managing agreements with other parties
    2. Patent prosecution strategies in light of inventorship/ownership challenges
    3. Identifying and evaluating inventorship/ownership issues
    4. Risks to patent ownership from interactions with others

Benefits

The panel will review these and other key issues:

  • How can interactions with others jeopardize patent ownership at risk?
  • How should patent counsel manage agreements to minimize the risk to patent ownership?
  • What steps should counsel take to identify potential patent ownership issues?