Preserving IP Rights with Provisional Patent Applications

About the Course:

This seminar is an unparalleled opportunity to gain insight into the strategic use of provisional patent applications. Strategies related to using provisionals to arbitrage the U.S. and non-U.S. patent filing systems are discussed. The impact of well-written and poorly-written provisionals on the quality and value of issued patents is reviewed. Case studies relating to the use of provisional patent applications by foreign inventors, universities, start-ups and large companies are presented.

The following are among the issues discussed during this course:

• What are the pros and cons of including claims in provisional patent applications?
• Can products relating to provisional patent applications be marked “patent pending?”
• When and where can provisional patent applications be reviewed?
• How can priority from provisional patent applications be persevered when the sole inventor passes away before the one year term has elapsed?
• Is it generally a signal of strength or weakness when a non-provisional patent application claims priority to more than one provisional patent application?
• What are the merits or detracting factors for disclaiming priority from a provisional patent application?
• Are non-U.S. patent applications eligible to receive priority dates from a U.S. provisional patent application?
• How is the timeline for filing non-provisional patent applications that claim priority to provisionals affected by weekends and holidays?
• Under what circumstances is an issued patent threatened with invalidity because of deficiencies related to its provisional patent application?
• To what extent does having a provisional patent application increase the likelihood of an inventor securing a licensing agreement?

Course Leaders: Dale S. Lazar, Partner, DLA Piper

Dale concentrates his practice in patenting electronic technology, patenting and copyrighting computer hardware and software, litigating patents and copyrights, negotiating and drafting licenses for patents and software, and preparing software-related agreements. He has also been involved in analyzing electronic and computer-related patents and copyright for infringement and validity.

Timothy Lohse, Partner, DLA Piper

Timothy provides patent preparation and prosecution in software and related technologies, including microprocessor branch prediction, computer cache memory replacement strategies, database storage systems and database architectures, wireless applications, wireless content development systems, content searching algorithms and systems, automatic coupon generation and brand preference determination systems, written and auditory content development systems, and other web-based business systems.

Timothy also provides patent preparation and prosecution in mechanical, electromechanical and electrical technologies, including aerospace flight electronics, launch vehicles, computer architectures, VLSI chip architectures, medical devices, including optical and electrical components, aerial cargo delivery systems, disk drive motors, disk drive shock prevention systems, computer memory architectures, computer cache memory systems, electrical transformers, computer cooling and mechanical systems, thermal ink jet printheads, laser printer control systems, database systems, wireless applications and other complex electrical systems.

Timothy also is experienced in patent re-examinations.

Course Length: Approx. 2.0 hours

$345.00 PER USER