Understanding the Importance of Developing a Global Strategy for Your Patent Portfolio

9:00-10:00 AM ET | July 15, 2013 | New York

MBHB Partner Kevin Noonan, Ph.D. is a featured presenter at this one-hour ACI-sponsored program.

Program Overview:

Before companies can begin the process of filing for patent protection around the world, they must establish a sound strategy for protecting their IP most successfully. Nevertheless, crafting a truly effective strategy is not always straightforward and may often not even be practically possible, and this session will unite senior counsel and in-house experts to discuss best practices for creating a patenting world-wide strategy that will help attendees devise world wide patenting strategies to optimize protection for their product portfolios. Our faculty will share their thoughts on:

  • Understanding the commercial embodiment of your product

    • Drafting claims broadly enough to cover embodiments in numerous jurisdictions
    • Recognizing when narrow claims are the best strategy and in what jurisdictions
    • Ensuring that you can remain flexible when prosecuting patents so that you can account for changes in your product’s commercial embodiment , as well as account for design arounds by competitors

  • Determining which countries provide effective patent protection for your product

    • Analyzing markets to make a decision on where to file
    • Considering the patent protection available in varying jurisdictions when determining whether to file there

  • Does the national patent office examine patents or register them?
  • Average time and cost of prosecution
  • Are there effective national enforcement mechanisms to make patents worthwhile in that market?

    • Exploring options and necessity for obtaining a Foreign Filing License

  • What products require that patenting entities obtain a Foreign Filing License?

    • Devising a mechanism to control world-wide prosecution costs
    • Employing a robust methodology for firm selection when prosecuting patents

  • Engage a global law firm to file everywhere? or have a managing firm directing local lawyers?
  • When should you retain local firms in different jurisdictions?


Sponsored by: American Conference Institute

View complete details including registration at http://www.americanconference.com/2013/857/global-patenting-strategy-and-practice/agenda