AGENDA: Thursday, October 29th, 2020
Managing patent prosecution and a portfolio in today’s complex and turbulent landscape requires tackling inconsistency by global patent offices and courts, budget pressures, and a need for higher quality patents. Some of the challenges are rooted in the dynamically changing global patent law, others in the different patent prosecution standards and still others are impacted by the current economic and market uncertainty.
How will this environment affect your current filings and portfolio?
This panel will explore:
- How will USPTO’s initiatives impact patent filing strategies?
- Budget constraints and a push for quality patents – Can this continue?
- Are continuations and provisional filings a sound strategy to buy-time?
- Managing the portfolio budget and renewals – Mixed messages from management
- International filings: What are the best strategies?
- Can AI tools assist practitioners with the preparation and prosecution of patents?
The environment for Patent Litigation is changing but exactly how much is still unclear. From a defensive perspective, companies must be adept at managing the risk of costly patent litigation. Plaintiffs are more savvy, battle tested and willing to use international forums. The landscape is in flux and seems to be getting more complex. As institution rates decline, the use of PTAB proceedings is less automatic and requires greater due diligence. While NPE litigation decreases in the U.S., it is increasing in other regions of the world. Operating company litigation remains constant.
Avoiding litigation is preferable but how can you maintain strong defenses when needed? In light of these developments, companies need to rethink how best to maintain their freedom to develop and launch innovative new products.
This panel will explore:
- Litigation avoidance through portfolio management and product development; is defensive patenting an effective strategy?
- To what extent should companies conduct freedom to operate searches and obtain clearance opinions?
- Be ready for the international litigation or ITC
- Proactive defensive strategy:
- Operating company and rivals
- NPE defense updates
- Shift at the PTAB – the data is confusing
A complex and unclear patent landscape, headlines covering high profile cases and stories of intrigue and espionage have brought Trade Secrets to the attention of the C-Suite. COVID-19 has now intensified the challenge of protecting trade secrets. The pandemic has caused virtual workforces, mass layoffs, a restarting economy, and foreign attacks on our IT infrastructure.
A well-structured and thorough Trade Secrets strategy and implementation need serious consideration in order to secure the most valuable assets of many companies. How can trade secret breaches be avoided? How can you prove a trade secrets breach if it occurs?
This panel will explore:
- Benchmarking the current landscape:
- Areas of risk: Impact of the global pandemic, exiting employees, cyber-attacks, employees working from home, global expansion, reduced patenting activity
- DTSA
- Current case law
- Going beyond ticking boxes – What are effective trainings and policies?
- When there is a breach – how do you control the damage?
- What strategies should be implemented to prepare for the next wave of economic uncertainty?
Like it or not, the PTAB has had a tremendous impact on the patent landscape and continue to do so throughout 2020. Last year, the PTAB received more than 1,300 petitions, issued a similar number of institution decisions, and rendered nearly 500 final written decisions. Most of these petitions and decisions involved patents in co-pending district court litigation with billions of dollars on the line.
Patent litigation counsel have been forced to consistently rethink the PTAB process. Efficiency and consistency within the PTAB appear to be increasing. The establishment of the PTAB forever changed patent application drafting and prosecution, licensing dynamics, and enforcement strategies.
This panel will explore:
- State of the current IPR landscape:
- PTAB today – What do we know? What should you plan for? How has the pandemic impacted PTAB proceedings?
- Is the PTAB still cancelling claims at the same high rate?
- What is driving the uptick in stays by district courts?
- From a strategy perspective, what is the impact of the BRI to Phillips switch?
- Are motions to amend claims an effective tool?
- Do precedential opinions provide meaningful guidance to practitioners?
- Are design patents treated differently than utility patents?
- Has the business case changed for IPRs?
- Cost, Resource Allocation – Impact on the business
How can patent practitioners effectively manage a portfolio during times of economic and market uncertainty? Effective patent portfolio management enables a return on investment in the long-run, and it is also key in excluding competitors from key markets.
However, the challenges are mounting:
Economic challenges continue to place cost pressure on IP budgets
Many patent portfolios are currently being restructured
The scope of patent protection is shifting
Global expansion of businesses requires new thinking
Should Monetization of IP be part of the strategy?
In today’s environment, what does running an effective portfolio look like? How can you prepare for the future?
This panel will explore:
The changing landscape – how does it impact your portfolio management?
What is the impact on COVID-19 on your IP portfolios and portfolio management?
What are the signs that your portfolio is in good shape?
What are the areas of strategy or analysis that are overlooked?
How can patent owners effectively manage a portfolio through a recession?
What policies and resources are needed to prepare for future economic downturns and market uncertainty?
The patent litigation landscape continues to shift. COVID-19 may have taken a big bite out of the economy, but it hasn’t slowed down patent infringement litigation. More patents are surviving PTAB proceedings. Emboldened patent owners are considering more litigation against competitors. NPEs are shifting their strategies and targets. Litigation funders are stimulating more IP litigation. The litigation landscape is now global. How should patent owners change their litigation strategy?
This panel will explore:
- Drop in institution rates for the PTAB; and more patents survive PTAB proceedings:
- How does this play into the way you approach enforcement?
- How do patent owners evaluate global enforcement and litigation?
- Is the ITC an effective forum to enforce patents?
- What role should your international positioning play in shaping US strategy?
- Managing outside counsel:
- Are alternate fee arrangements an effective option?
- How can patent firms coordinate global enforcement?
