Patent Enforceability - Increasing the Odds

Ensuring the enforceability of IP owners' rights to inventions requires a thorough understanding of the patent process. Patents built on the foundation of a strong application and prosecution end up being licensed, rather than litigated.

Preparing and prosecuting effective patent applications requires anticipating challenges through advance planning of scrutiny and potential litigation arguments.

Listen as our authoritative panelists provide insight into how attorneys and company executives can strategically pursue patent applications and prosecutions to obtain the most significant and enforceable claims against potential infringement.

Hung H. Bui, Partner, Stein McEwen & Bui, Washington D.C., counsels clients regarding IP matters, with a special focus on prosecution and strategic planning of IP portfolios. He previously served as a Patent Examiner in the computer group of the U.S. Patent & Trademark Office.

Allen E. Hoover, Partner, Banner & Witcoff, Chicago, has broad experience in IP law. He has handled patent infringement lawsuits in a wide range of technologies. He conducts licensing negotiations on behalf of clients and provides counseling on complex IP matters.

James G. McEwen, Partner, Stein McEwen & Bui, Washington D.C., specializes in patent, trademark, and IP law. He has prepared and prosecuted patent applications and been involved in patent validity and infringement opinions, reissue and reexamination proceedings, intellectual property licensing and settlement negotiations.

Michael A. Oblon, Partner, Perkins Coie, Washington D.C., has extensive experience litigating patents and counseling clients in intellectual property matters. Mr. Oblon's counseling practice includes developing patent portfolios, prosecuting domestic and international patent applications, performing IP due diligence investigations, and preparing opinions of counsel.

James M. Denaro, Perkins Coie, Washington, DC, is engaged in counseling and patent prosecution with a technical focus on computer hardware, software, electronics and the Internet.

Anthony J. Fitzpatrick, Partner, Duane Morris, Boston, serves as co-chair of the firm's Intellectual Property Litigation Practice, where he concentrates on patent and trade secret matters. In addition, he represents clients in intellectual property disputes concerning trademarks, copyrights, false advertising, rights of publicity and the Internet.

The panelists review these and other key questions:

• What should patent applicants know about including specifications in drafting claims since the Phillips v. AWH decision?
• What are the elements of effective claim drafting and how can applicants avoid "design around"?
• What is the best defense against inequitable conduct issues arising in the prosecution of a patent?
• How can an inventor applicant strategically pursue patent prosecution to avoid future challenges and invalidation?

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