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 and exposure to potential damages awards.
Outline
- Legal framework for willful and induced patent infringement and advice of counsel defenses
- Statutes and major cases
- Privilege and waiver
- Comparison of different FTO strategies and actions
- Considerations for drafting and developing FTO opinions
- Post-grant proceedings and FTO
Benefits
The panel will review these and other crucial issues:
- What legal framework is used to assess a party's intent for willfulness/enhanced damages and inducement of infringement, and what aspects are still unsettled?
- What are best practices for patent counsel when analyzing FTO issues and structuring FTO opinions?
- When should counsel seek FTO opinions to protect new research and products from infringement claims?
- What is the impact of the post-grant process on FTO opinions?
Faculty
Stuart A. Nelson
Principal
Fish & Richardson
Mr. Nelson’s practice focuses on patents with a heavy emphasis on post-grant proceedings, including experience on... | Read More
Mr. Nelson’s practice focuses on patents with a heavy emphasis on post-grant proceedings, including experience on 100+ inter partes review proceedings. He also has experience in both patent prosecution and patent litigation, including drafting and prosecution in the U.S. and abroad, investigation and analysis of patent validity and infringement, litigation counseling, intellectual property counseling, and patent portfolio management. Mr. Nelson’s technical experience spans a variety of mechanical, electrical, and electromechanical industries, including but not limited to medical devices in a variety of fields, mobile and connected devices, streaming and graphics manufacturing, printing, automated banking machines, gas turbine engines, mechanical and electrical aerospace applications, lubrication systems, filtration, electronics and controls, elevator control systems, sensors and industrial control systems, renewable energy, packaged data cards, hard disk drives, giant magnetoresistance devices, sports training equipment, and electromechanical machinery.
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Austen Zuege
Intellectual Property Attorney
Strafford
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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