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 video webinar with Q&A
This CLE course 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.
Outline
- The value of FTO opinions
- Legal and business benefits
- Use of advice of counsel in litigation defense
- Privilege and confidentiality
- Strategies for drafting and developing FTO opinions
- When should FTO opinions be prepared?
- Who are the audiences for an FTO opinion?
- How should an FTO opinion be structured?
- Avoiding common mistakes
- Alternative resolutions
- Relation of post-grant proceedings to FTO opinions
Benefits
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?
Faculty
John M. Fleming
Attorney
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.
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Austen Zuege
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).
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