Patenting Standardized Technologies: Scope of Claims, Disclosure and Essentiality Considerations
Best Practices for Patent Drafting and Prosecution
Recording of a 90-minute premium CLE video 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
John C. Donch, Jr.
President and Shareholder
Volpe Koenig
Mr. Donch’s focus is on providing clients with practical strategies for securing and realizing the value of their... | Read More
Mr. Donch’s focus is on providing clients with practical strategies for securing and realizing the value of their intellectual property. Clients turn to him for representation in the areas of IP acquisition, risk assessment, patent prosecution, licensing, portfolio mining, claim charts, clearance studies, claim construction and validity reviews, and litigation strategy/counseling. Mr. Donch frequently presents on various issues for organizations such as the Joint Patent Practice Continuing Legal Education, the Penn Intellectual Property Law Group at the University of Pennsylvania Law School, Temple University’s Fox School of Business and Management, and to the Association of Corporate Counsel, Delaware Valley Chapter.
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Won S. Yoon
Principal
Fish & Richardson
Mr. Yoon is dedicated to helping clients with a variety of patent legal services ranging from patent prosecution,... | Read More
Mr. Yoon is dedicated to helping clients with a variety of patent legal services ranging from patent prosecution, Patent Trial and Appeal Board post-grant proceedings, due diligence, infringement and invalidity opinions, and freedom to operate analysis. His legal practice is based on an extensive technical background in numerous areas of electrical engineering and computer science, including communication systems and networks, standard essential patents, dynamic feedback control, photonics, semiconductors, and artificial intelligence and machine learning.
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