Conducting and Analyzing Patent Searches

Strategies for Validity, Patentability, Infringement, FTO and State-of-the-Art Searches

A live 90-minute premium CLE webinar with interactive Q&A


Wednesday, February 27, 2019

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, February 1, 2019

or call 1-800-926-7926

This CLE webinar will guide patent counsel on structuring and conducting patent searches. The panel will also discuss reporting of search results and offer best practices for analyzing patent searches to maximize patent protection.

Description

Patent searching is a critical step in the U.S. patenting process and in evaluating whether issued U.S. patents will stand up under the rigors of the AIA's post-grant proceedings, U.S. district court litigation or an International Trade Commission investigation. Also, patent searching plays a crucial role in assessing how freely a particular technology can be utilized in the U.S. and in performing due diligence related to patent licensing or patent acquisition opportunities.

The search, for example, may well be necessary for the U.S. patent applicant to be able to avoid potential risks of third-party U.S. patents and maximize patent protection concerning a specific product or invention. Knowing other relevant patented inventions allows for modifications to be made to enhance the chances of achieving meaningful, patentable and valid patent claims.

Counsel must formulate a strategic approach for the different type of searches recited above. Whether designing or commissioning a search, patent counsel needs to evaluate the scope and timing of the patent search given the ultimate objective. There should be a plan in place to tackle the issues of what, when and where for effecting validity or freedom to operate searches, among others.

Further, counsel must be able to analyze and assess the search results to take the proper steps for a successful patent application, patent challenges and due diligence.

Listen as our authoritative panel of patent attorneys examines when, how, where and why to conduct various patent searches, including validity, patentability, infringement, ownership, and FTO. The panel will discuss the differences and nuances in the different searches. The panel will also discuss the analysis and reporting of search results and offer best practices for conducting and analyzing patent searches to increase the efficiency and effectiveness of your patent objectives.

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Outline

  1. Patent searches
    1. Patentability
    2. Validity
    3. FTO (infringement)/clearance/due diligence
    4. State-of-the-art
    5. Assignment
  2. Structuring and conducting the search
    1. Purpose
    2. Timing
    3. Scope
    4. Searching non-English language patents/applications
  3. Analyzing search results

Benefits

The panel will review these and other key issues:

  • What are the critical considerations when determining what, when and where to search?
  • What are the critical components of an effective search strategy, analytical process and follow-up steps to ensure a successful patent application?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Johns, Christopher
Christopher C. Johns, Esq.

Atty
Finnegan Henderson Farabow Garrett & Dunner

Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to...  |  Read More

Jordahl, Kim
Kim Jordahl

Founder
KSJLaw

Ms. Jordahl has extensive experience in portfolio management and IP strategy, as well as in the preparation and...  |  Read More

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