B2 IP Webinars

Bejin Bieneman hosts a monthly B2 IP Webinar series that covers an array of topics relating to U.S. patent practice. The typical structure of the webinar consists of one attorney who presents on a topic that is prevalent to the intellectual property law world. Throughout the webinar, attendees are free to ask questions using the chat feature of the WebEx program. The presenter opens up the floor at the end to any additional questions or comments. Once the webinar is complete, the recording of the series is then made available on our YouTube channel.


Design Patents: Procurement, Enforcement, and Recent Case Law

Sept. 24, 2020

In this webinar, Bejin Bieneman’s Mark St. Amour provides an overview of the benefits and overall fit of design patents in an intellectual property portfolio, the design patent application and prosecution process, and the enforcement of rights provided by a design patent. Throughout the presentation, recent rulings related to the various facets of these topics are discussed.


Update on § 101 – When Are Mechanical Inventions Ineligible and What If the USPTO’s Eligibility Guidance Deviates From the Case Law?

Aug. 27, 2020

Bryan Hart and Charlie Bieneman provide an update on some very current developments in § 101 practice. Our discussion includes the following: – The Federal Circuit’s recent modification of its decision, and denial of en banc review of that decision, holding claims ineligible in American Axle & Manufacturing v. Neapco Holdings, raises concerns that many mechanical inventions could be held ineligible. We explore how to address these concerns in patent prosecution and litigation. – How the USPTO has implemented its January 2019 patent-eligibility guidance which refines application of the well known two-part Alice/Mayo patent-eligibility test. In Cleveland Clinic Foundation v. True Health Diagnostics LLC (April 2019), the Federal Circuit declined to defer to USPTO guidance. We explore selected recent PTAB decisions to illustrate that the USPTO’s new (as of January 2019) approach to patent-eligibility may not be consistent with the Federal Circuit’s approach, and consider practice tips to use the USPTO’s guidance while at the same time promoting consistency with the Federal Circuit’s application of the patent-eligibility test.


Corporate Best Practices To Avoid Willful Infringement

July 23, 2020 12pm

The webinar focuses on best practices to reduce risk for enhanced damages under Halo Electronics v. Pulse Electronics. The webinar discusses and analyzes post-Halo district court decisions related to willful infringement and enhanced damages. The webinar addresses what role willful blindness has in a finding of willful infringement. Further, the webinar discusses corporate best practices for both pre- and post-litigation conduct to reduce risk for willful infringement and enhanced damages. Finally, this webinar discusses best practices for both pre-litigation and post-litigation conduct to reduce risk for attorney’s fees. Presented by Tom Bejin and Nathan Smith


Software Patents – Going Beyond Alice and Williamson

Jun 18, 2020

The webinar offers a set of practice tips for drafting software and electronics patent claims not just to avoid legal pitfalls under § 101 and § 112, but to make patent prosecution more efficient, and patent claims stronger. We look not just at Federal Circuit decisions, but also at cases from the PTAB to extract a set of practical guidelines for drafting functional claim language – when functional claiming is unavoidable. Presented by Charles Bieneman

Caselaw Update for Patent Preparation and Prosecution

May 21, 2020  12pm

Several recent decisions by the Federal Circuit and the PTAB lend themselves to practical application during the preparation and prosecution of patent applications.  This 60-minute webinar presented by Chris Francis will explore these recent decisions and discuss their potential application during both the preparation of a patent application and prosecution at the USPTO.  The recent decisions that will be discussed cover the following topics:

  • The effective use of declarations to present objective indicia of non-obviousness as discussed in two ex parte PTAB decisions designated as informative and a recent Federal Circuit opinion
  • Design choice as discussed in two ex parte PTAB decisions designated as informative
  • Obviousness based on “general knowledge” at the Federal Circuit
  • Claim interpretation issues including disavowal

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Data Privacy and Private Action

April 23, 2020  12pm

David Hannon and Mike McCandlish discuss emerging types of data privacy claims, with a focus on the types of claims based on the use of data.


Update on Trade Secret Law

March 19, 2020

The Defend Trade Secrets Act became law in 2016, for the first time providing a federal cause of action for trade secret misappropriation. Bryan Hart will provide an update on how the DTSA has worked in practice since its enactment. Has the DTSA promoted harmonization of trade secret law? How have courts interpreted its provisions? This webinar will also cover how to decide whether trade secret or patent protection is better for an idea.

Presentation Slides


Patent Law 2020: Understanding the Critical Issues and Best Practices in an Ever-Changing Patent Law Environment

February 20, 2020
 
The past several years have brought myriad changes to patent law – including new legislation, new USPTO guidance and procedures, and increased Supreme Court activity.
In this 60-minute webinar, Tyson Benson discusses the critical issues and the best practices in light of these changes to patent law.
Topics include:
  • Discuss best practices for preparing and prosecuting patent applications in light of the USPTO’s updated guidance and procedures.
  • What is the future of the Patent Trial and Appeals Board (PTAB) following the Federal Circuit decision deeming PTAB judges were unconstitutionally appointed?
  • Discuss recent Supreme Court and Federal Circuit decisions.

Presentation Slides


PTAB Practice: Recent Developments in Estoppel

November 21, 2019
 
There are a wide range of estoppel issues that may be triggered under the America Invents Act (AIA) as a result of proceedings before the Patent Trial and Appeal Board (PTAB). These estoppel issues complicate decision making in pursuing parallel proceedings at the PTAB and in district court. This 60-minute webinar will review estoppel provisions in the AIA, discuss recent developments in the law related to estoppel, and discuss some of the practical implications of the caselaw. Tom Bejin of Bejin Bieneman PLC and Eileen M. Herlihy of Leber IP Law will present.
 
 

Preparing and Prosecuting Functional Claims

October 23, 2019

There continues to be a dramatic impact on the interpretation of functional claim terms after the Federal Circuit decision in Williamson v. Citrix Online L.L.C. Since means-plus-function claiming can be utilized in almost every field of innovation, patent practitioners need to weigh the pros and cons of such claims as well as how to draft those claims in a way that provides optimal protection.

This 60-minute webinar will discuss the benefits and risks involved with using functional claims and/or means-plus-function claims as they relate to potential litigation and inter-partes reviews before the PTAB. You’ll also hear best practice advice for leveraging §112(f) and functional claims for maximum patent protection.  Presented by Tyson Benson.

 
 
 

Patent preparation and prosecution: Best practice before the USPTO (Part 2 of 2)

May 23, 2019
Patent preparation and pr… Christopher Francis and Charles Bieneman conduct Part Two of a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation dives underneath the basic legal requirements to provide adequate written description and enablement of claimed subject matter. Mr. Francis and Mr. Bieneman discuss not just how to satisfy those legal requirements, but how to create a patent application that prevents a patent examiner from dragging out or confusing patent prosecution. The presentation then reviews strategies for responding to patent examiners that make prosecution more efficient – and create a better record for future enforcement or invalidity proceedings.

Secret Sauce for Patent Prosecution

April 18, 2019
Christoper Francis and Charles Bieneman conduct a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation dives underneath the basic legal requirements to provide adequate written description and enablement of claimed subject matter. Mr. Francis and Mr. Bieneman discuss not just how to satisfy those legal requirements, but how to create a patent application that prevents a patent examiner from dragging out or confusing patent prosecution. The presentation then reviews strategies for responding to patent examiners that make prosecution more efficient – and create a better record for future enforcement or invalidity proceedings.
 

Definiteness and Damages: Developments in Design Patent Law

February 21, 2019
The February webinar is presented by Bryan Hart, Associate at Bejin Bieneman, who discusses recent developments related to design patents. In particular, Mr. Hart discusses the Federal Circuit’s decision in In re Maatita in August and the Supreme Court’s decision in Samsung v. Apple in 2016. In re Maatita dealt with how the standard for definiteness applied to design patents. Samsung v. Apple dealt with damages in design patent cases; Mr. Hart will surveys district court cases since Samsung.