[bioundgrd] FW: Patent Webinar Series @ MIT: Fall 2021

[Joshua Stone]

Begin forwarded message:

From: Stephen M Hou <stephenhou at alum.mit.edu<mailto:stephenhou at alum.mit.edu>>
Subject: Patent Webinar Series @ MIT: Fall 2021
Date: September 3, 2021 at 11:14:02 AM EDT

I'm an MIT alumnus and patent prosecutor, leading a group of other MIT alumni to teach a weekly webinar series on patent strategy this fall 2021 semester. The event is principally sponsored by the MIT Graduate Student Council.

The series would be especially useful for students and post-docs who are considering patent protection for their work, commercializing their research, or starting a tech company. Please feel free to pass along the e-mail ad below to your group.

Thanks!

Stephen Hou

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Patent Strategy for Entrepreneurs: Fall 2021 Webinar Series @ MIT
Sponsored by: MIT Graduate Student Council<https://gsc.mit.edu/>, Venture Cafe Cambridge<https://venturecafecambridge.org/>, Garage+<https://www.garageplus.asia/>, Newlab<https://newlab.com/>
Dates & time: Sep 14 to Dec 14, 2021: Tuesdays @ 7:30pm-8:30pm ET (see schedule below)
Virtual location: Zoom link will be sent to registrants for real-time viewing; video recording of sessions will be available to registrants (see table below)
Registration: https://forms.gle/NY9HQuXaKCy6Mksb8
Contact: https://www.apapatents.com/webinars / patent-workshop at mit.edu<mailto:patent-workshop at mit.edu>

Series Summary
Patent protection for inventions is a valuable component of business strategy for startups and established companies alike. This webinar series prepares scientists, engineers, and entrepreneurs for dealing with the patent issues they will face as innovators. The series spans a wide variety of topics in patent law, including claims, inventorship, patentability requirements, the patent application process, prosecution, post-grant proceedings, litigation, and licensing. Although the focus will be on US law, some topics are enhanced with the laws of other jurisdictions as well. We discuss what recent developments in patent law mean for inventors, and draw examples ranging from the computer software to the pharmaceutical industries.

Schedule

Session

Date

Topic

Instructor(s)

1

Tue 09.14

General Introduction to Patents

Stephen Hou

2

Tue 09.21

Claims, Inventorship, Ownership &
Patent Rights

Stephen Hou

3

Tue 09.28

Infringement & Licensing

Stephen Hou

4

Tue 10.05

Patentability Requirements I:
101 (Subject Matter Eligibility)

Ryan Jin

5

Tue 10.12

Patentability Requirements II:
112 (Sufficiency of Disclosure)

Stephen Hou

6

Tue 10.19

Patentability Requirements III:
102 (Novelty) Part 1

Stephen Hou

7

Tue 10.26

Patentability Requirements IV:
102 (Novelty) Part 2

Stephen Hou

8

Tue 11.02

Patentability Requirements V:
103 (Non-Obviousness)

Stephen Hou

9

Tue 11.09

Application Process & Prosecution I

Stephen Hou

10

Tue 11.16

Application Process & Prosecution II

Kerim Fouli & Dan Hussain

11

Tue 11.23

Post-Grant Proceedings

Stephen Hou

12

Tue 11.30

Litigation I

Ryan Jin & Julian Pymento

13

Tue 12.07

Litigation II

Ryan Jin & Julian Pymento

14

Tue 12.14

Patent Valuation & Business Considerations

Dan Hussain


Session #1: General Introduction to Patents
Startups often ask why they should patent their innovations and how they should begin to learn patent laws and procedures. This session discusses the rationale for the existence of patents, compares patents to trade secrets, and outlines the legal framework that governs patents. Finally, motivation for the topics covered in the series will be provided. Goals:
– Know what patents are and how they compare to trade secrets.
– Understand the legal framework that governs patents.
– Explore a roadmap of the topics covered in the series.

Session #2: Claims, Inventorship, Ownership & Patent Rights
Startups often find it difficult to understand patent claim language and to sort out complex inventorship and ownership issues on their patents. This session discusses how patent claims work, the law regarding inventorship and ownership, and the scope of patent rights. Goals:
– Read a patent claim and understand its scope.
– Identify the factors that determine whether someone qualifies as a co-inventor or co-owner on a patent.
– Prevent or mitigate potential disputes regarding inventorship or ownership of patents.

Session #3: Infringement & Licensing
Startups often ask whether their work infringes another's patent or vice versa, and which aspects of a patent licensing agreement may be negotiated. This session discusses what infringement is, potential defenses to infringement, and the laws that govern patent licensing deals. Goals:
– Understand what acts constitute (and do not constitute) patent infringement.
– Identify the relevant factors in negotiating a favorable patent licensing deal.

Session #4: Patentability Requirements I: 101 (Subject Matter Eligibility)
Startups often ask whether their technology qualifies for patent protection. This session discusses the patentability requirements from 35 USC 101 (patentable subject matter). Goals:
– Identify categories of inventions that are disqualified from patent protection.
– Develop strategies for crafting claim scope to deal with abstract ideas, laws of nature, or natural phenomena issues.

Session #5: Patentability Requirements II: 112 (Sufficiency of Disclosure)
Startups often ask how much they must disclose in the patent application. This session discusses the patentability requirements from 35 USC 112 (sufficiency of disclosure). Goals:
– Understand the written description, enablement, and best mode requirements.
– Evaluate how much to disclose in a patent application.

Session #6: Patentability Requirements III: 102 (Novelty) Part 1
Startups often ask how innovative their invention must be in order to qualify for patent protection and when the appropriate time in their R&D cycle to apply for patents would be. This session discusses the patentability requirements from 35 USC 102 (novelty). Goals:
– Identify potential prior art events that would disqualify an invention from patent protection.
– Understand the appropriate steps inventors must take to maintain the novelty of their invention.
– Determine a suitable timeframe to apply for patents.

Session #7: Patentability Requirements IV: 102 (Novelty) Part 2
This session continues the previous session's discussion.

Session #8: Patentability Requirements V: 103 (Non-Obviousness)
Startups often ask how non-obvious their invention must be in order to qualify for patent protection. This session discusses the patentability requirements from 35 USC 103 (non-obviousness). Goals:
– Understand and apply the standards the patent office and the federal courts use to gauge the non-obviousness of inventions.
– Develop strategies for overcoming claim rejections due to obviousness.

Session #9: Application Process & Prosecution I
Startups often ask how the patent application process works and how to deal with their applications being rejected. This session discusses the US patent application process and prosecuting applications. Goals:
– Understand the patent application process.
– Abide by the ethics associated with being an inventor or applicant.

Session #10: Application Process & Prosecution II
Startups often ask about other inventors' experiences dealing with the patent office. This session discusses case studies of various US patent applications undergoing examination and prosecution. Goals:
– Learn from the experience of other inventors.
– Appreciate the strategy involved in patent prosecution.

Session #11: Post-Grant Proceedings
Startups often ask how the validity of their patents may be challenged by others. This session discusses how these procedures work in the US Patent & Trademark Office (post-grant proceedings). Goals:
– Understand the various avenues by which the validity of a patent may be challenged.
– Evaluate the pros and cons of these various avenues.

Session #12: Litigation I
Startups often ask how the validity of their patents may be challenged by others and how they may enforce their patents against alleged infringers. This session discusses how these procedures work in the US federal courts (litigation) and remedies for patent infringement. Goals:
– Understand the various aspects of patent litigation.
– Evaluate the potential difficulties encountered by each party at each stage of litigation.

Session #13: Litigation II
Startups often ask about the experiences of alleged infringers and patent enforcers as they navigate litigation. This session discusses case studies of various stages of patent litigation. Goals:
– Appreciate the strategy involved in patent litigation.
– Develop tips for crafting a strong patent application with an eye towards potential litigation later.

Session #14: Patent Valuation & Business Considerations
Startups often ask how they may generate revenue from their patents. This session discusses how potential investors and dealmakers view patents, and the relationship between patent portfolios and company valuation. Goals:
– Identify the relevant factors that determine a patent's value.
– Appreciate the value that patents provide to make a business more attractive to investors.
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