Patenting Standardized Technologies: Scope of Claims, Disclosure and Essentiality Considerations
Best Practices for Patent Drafting and Prosecution
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide patent counsel with guidance on the key considerations and implications of patenting standardized technologies. The panel will discuss proper claim scope, disclosure, enforcement, and royalty rates in the context of standardized essential patents. The panel will offer best practices for application drafting and prosecution of standardized technologies.
Outline
- Scope of claims--considerations
- Broad reach
- Who are potential infringers
- Impact on royalty rates
- Divided infringement
- Design-arounds
- Disclosure requirements for standards-setting organizations
- Declaring a patent or application essential to a standard--considerations
- Negotiating position during enforcement
- Royalties
- Likelihood of adoption as a standard
- Enforcement of licensing rights
- FRAND obligations and impact
- Drafting to survive challenges
- Invalidity
- Essentiality
- Recent case law
- Best practices
Benefits
The panel will review these and other vital questions:
- What factors should patent owners and counsel consider when determining whether to declare a patent or application essential to a standard?
- What is the potential impact of patenting standardized technologies on the enforcement of those patents?
- How can practitioners draft and prosecute patent applications and claims to minimize the threat of a challenge to essentiality?
Faculty
Ryan C. Richardson
Director
Sterne Kessler Goldstein & Fox
Mr. Richardson’s practice focuses on post-grant proceedings before the U.S. Patent and Trademark Office’s... | Read More
Mr. Richardson’s practice focuses on post-grant proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), as well as U.S. district court litigation and International Trade Commission (ITC) litigation. He has handled dozens of contested cases before the PTAB. He is experienced in representing both patent owners and petitioners. He is an experienced litigator who has examined witnesses at trial, presented at Markman hearings, and tried cases before the PTAB. Further, he has significant capabilities in the preparation and prosecution of U.S. and foreign patent applications for a wide range of entities from emerging growth companies to large multi-national corporations.
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Michael D. Specht
Director
Sterne Kessler Goldstein & Fox
Mr. Specht’s practice spans high value patent prosecution and inter partes matters, including Patent Trial and... | Read More
Mr. Specht’s practice spans high value patent prosecution and inter partes matters, including Patent Trial and Appeal Board (PTAB), district court, and International Trade Commission (ITC) litigation. His extensive patent prosecution and technical experiences provide a formidable advantage in inter partes proceedings. Additionally, he counsels clients on the development and implementation of intellectual asset management plans to maximize the economic potential of their intellectual property through portfolio development, licensing, and litigation strategies.
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