Structuring Freedom to Operate Opinions: Reducing Risk of Patent Infringement
Combating Troubling FTO Results, Overcoming Potential Roadblocks, Addressing Impact of Post-Grant Process on FTO Opinions
Recording of a 90-minute premium CLE webinar with Q&A
This CLE webinar will guide patent counsel preparing freedom to operate (FTO) opinions for companies developing new products. The panel will outline best practices for drafting FTO opinions to reduce infringement risks.
- Drafting FTO opinions
- Problem results
- Privilege and confidentiality
- Alternative resolutions
- Impact of the post-grant process on FTO opinions
- Strategies for employing FTO opinions
The panel will review these and other crucial issues:
- What are best practices for patent counsel when analyzing FTO issues and structuring FTO opinions?
- What is the impact of the post-grant process on FTO opinions?
- When should counsel seek FTO opinions to protect new research and products from infringement claims?
Michael S. Cuviello
Banner & Witcoff
Mr. Cuviello concentrates in patent counseling and the preparation and prosecution of patent applications. He assists a... | Read More
Mr. Cuviello concentrates in patent counseling and the preparation and prosecution of patent applications. He assists a wide range of clients in managing and growing their patent portfolios, and he understands the varying challenges and needs of different businesses ranging from small startups to global corporations. Mr. Cuviello is also experienced in international prosecution, taking into account the nuances of obtaining patent rights in different jurisdictions. Having years of experience in a broad spectrum of industries, Mr. Cuviello is able to provide effective strategies to secure the broadest protection possible for his client’s ideas. His technical areas of expertise include semiconductor devices, including digital, analog, power, and RF microcircuits; electromechanical devices; renewable energy technologies; computer software applications with concentrations in user interfaces, and embedded firmware; internet technologies; and wireless communications.Close
John M. Fleming
Banner & Witcoff
Mr. Fleming concentrates on preparing and prosecuting utility and design patent applications in a variety of technical... | Read More
Mr. Fleming concentrates on preparing and prosecuting utility and design patent applications in a variety of technical fields while participating in litigation matters, client counseling, and a wide variety of opinion work. Mr. Fleming’s technical areas include telecommunications, internet-related and private network technology, semiconductors, e-commerce, digital/electronic handwriting, color management, graphical user interface systems, financial security and authentication, application programming interfaces, and computer-relation technologies involving hardware, software, and firmware. In addition, Mr. Fleming has an extensive amount of design prosecution experience and development, including various hardware in addition to computer interfaces and icons. Mr. Fleming has filed and prosecuted hundreds of design applications from initial prototypes to commercially available products.Close
Intellectual Property Attorney
Westman Champlin & Koehler
Mr. Zuege focuses his practice on intellectual property law in both transactional and litigation settings, including... | Read More
Mr. Zuege focuses his practice on intellectual property law in both transactional and litigation settings, including patent, trademark, copyright, trade secret and domain name dispute matters. This includes international IP application filings and prosecution such as Paris Convention patent applications, PCT applications and related national stage patent applications, and the coordination and supervision of global IP portfolios. Mr. Zuege has extensive experience organizing and conducting complex freedom-to-operate studies, advising on IP strategies, conducting validity/non-infringement opinion of counsel analyses, negotiating agreements, enforcing rights and defending clients in contentious IP disputes, and creating strategic plans for companies. He also writes and speaks about IP issues, and can translate complex legal issues into actionable tips and strategies for clients and their inside counsel. He is the editor and co-author of Patent Freedom to Operate Searches, Opinions, Techniques, and Studies (ABA 2017).Close