NEW SEMINAR
ADVANCED APPROACHES
FOR MANAGING OUTSIDE
PATENT COUNSEL
How to save 10% of your IP budget without tears
5.5 CPD
HOURS
JOIN US ON
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Deciding what you want/need from your outside patent
counsel
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How to choose outside patent counsel, considering
their potential roles: Hired gun, partner and extension
of the in-house team
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Keys to evaluating outside patent counsel rigorously
but fairly for prosecution, litigation, licensing and
design-around options
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How to organise yourself for effective management of
outside patent counsel
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Establishing the correct fee arrangement for your firm
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How to save money and time in patent prosecution,
licensing and litigation
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Working with counsel to identify what inventions to file
applications on, and where and when to file (and
abandon) internationally
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Assessing litigation plans
Seminar Leaders
John Nevard Director, Intellectual Property
Cambridge Display Technology Ltd., UK
Bradley Hulbert Founding Partner
McDonnell Boehnen Hulbert & Berghoff, Chicago
You can register online at
www.management-forum.co.uk
or by phone on +44 (0)1483 730071, fax 730008
24 November 2014
The Rembrandt Hotel, London
HOW YOU WILL BENEFIT FROM
ATTENDING THIS SEMINAR
The seminar is directed to the techniques
that experienced in-house and outside patent
counsel agree both increase the likelihood of
favorable outcomes and reduce costs.
• The course includes discussions on how
corporate managers can better choose
outside patent counsel and then work with
them to achieve the corporate objectives.
• You will learn from experts what ‘works’ in
evaluating outside patent counsel and managing their performance.
• The seminar will include a discussion of
typical law firm business models and how to
avoid them leading to bad results for you as
a client.
• The seminar will include ongoing opportunities for you to ask questions and discuss individual concerns.
WHO SHOULD ATTEND
• In-house patent attorneys who work with
outside patent counsel and wish to do so
more effectively.
• Managers responsible for overseeing any
aspect of their firm’s patent portfolio, including the preparation and prosecution of patent applications, the assertion of patents to obtain value through licensing or litigation, and the defence against patent
assertions by others.
• Directors overseeing the operation of a corporate Patent Department.
• IP managers in SMEs and universities
Reserve your place at the seminar by
registering online now at
www.management-forum.co.uk or by
fax +44 (0)1483 730008
Any questions? e-mail
[email protected]
SEMINAR LEADERS
John Nevard is the Director, Intellectual
Property, for Cambridge Display Technology
Ltd. Mr. Nevard has over 20 years experience
in all major aspects of IP: Freedom to
operate risk assessment, strategies for
protection, IP transfer from licensing to M&A,
multi-jurisdictional enforcement and defence,
knowledge management and culture change.
His particular specialties include the IP aspects
of M&A, licensing, multi-jurisdictional litigation,
and portfolio management
Bradley Hulbert is a founding partner in
McDonnell Boehnen Hulbert & Berghoff, an
80-lawyer patent firm based in Chicago. Mr.
Hulbert has worked closely with a diverse range
of in-house counsel in overseeing the patent
portfolios of multi-billion-dollar, multinational
corporations. He is also an adjunct professor of
law at the Chicago-Kent Law School.
ATTENDANCE LIMITED, EARLY
REGISTRATION RECOMMENDED
This limitation, a unique feature of all
MANAGEMENT FORUM seminars will give
participants the opportunity for a thorough
discussion of the complex issues to be covered
by the programme.
DOCUMENTATION
Participants will receive a folder containing
comprehensive documentation provided by
the seminar leaders, which will be a valuable
source of reference for the future.
ACCREDITATION
This course merits 5.5 CPD hours, and may
be relevant training under the IPReg CPD
self-accreditation scheme.
A Certificate of Attendance for
Professional Development will be
given to each participant who
completes the course.
PROGRAMME
u Introduction
•
•
Identifying goals for the Corporate
Patent Department and the patent
portfolio
Getting the best from your outside
counsel, to deliver improvements in
efficiency and quality, and to reduce costs
u Understanding your wants and
needs
Before you can effectively manage
external patent counsel, you and your organisation need to understand and
agree why you are using external patent
counsel - today and in the future.
• What resources do you have ?
• What is your budget ?
• What is your patent portfolio ?
• Where is your organisation going ?
u Fee arrangements, and the
associated adaptation of law firm business models
•
•
•
•
•
•
Fixed fee
Fee cap
Flat fee (eg, per month)
Secundum model
Contingency/performance based
Hybrid
u How to choose and manage External Patent Counsel
•
•
Domestic/Overseas
Prosecution/Litigation/Licensing
Working with Patent Counsel on
u Prosecution
External patent counsel are businesses.
They have overheads and salaries to pay,
and profits to make. You need to select the
right patent counsel for your technology,
your business and you by:
• Identifying what inventions should be
protected by patents
• Selecting when and where to file (and
abandon) applications
• Coordinating domestic and foreign
prosecution
- US rules on admissions in corresponding applications
• Assessing prosecution performance
u Prosecution ....continued
•
•
•
Understanding that the terms and
conditions of external patent counsel
are negotiable. You should not pay for
what you do not need, or just accept
their ways of working.
Managing your external patent counsel by setting and agreeing your
working practices and standards of
performance.
Monitor their performance and act
accordingly
u Licensing
•
•
How long to make the leash: Establishing goals for External Patent Counsel and choosing from the spectrum of roles.
Hallmarks of a well-drafted patent
license
u Litigation
•
Risk management: Working with external patent counsel before any litigation to minimise future risk and
cost
-Freedom to operate studies
- Document (including e-mail)
retention policies
- IP audits
• Determining when and where to file
offensive actions
• Roles and responsibilities: Blitzkrieg or guerrilla warfare?
• Developing defences to third-party
complaints
• US litigation traps
- Hold notices and discovery
- Juries and damages assessments
• Overseeing the evolving litigation plan
and litigation budget
• Coordination of multi-jurisdictional
litigation
• Assessing counsel’s efforts throughout:
-Pleadings
-Discovery
- Motion practice
- Use of experts
- Pretrial and trial
• Obtaining adequate opinions of counsel and ‘design around’ options
u Round-up
u Close
ADVANCED APPROACHES
FOR MANAGING OUTSIDE
PATENT COUNSEL:
How to save 10% of your IP budget without tears
tion to
Applicaister
Reg
24 November 2014
Conf. No. H11-3114
Dates
24 November 2014 Times
24 November 2014 Start 09.30 - Finish 17.00
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24 November 2014 09.00
Venue & Accommodation
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London SW7 2RS
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+44 (0) 1483 730008
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Management Forum Ltd, 98-100
Maybury Road,Woking, Surrey GU21 5JL, UK
www.management-forum.co.uk
E-mail: [email protected]
If you have NOT received confirmation seven days after
registering, please contact Registration Department.
Discounted Rates
Available on application for personnel from non-profit
making organisations and registered charities.
Group discount available on request
Cancellation Policy:
Over 14 days prior to the Seminar: Cancellation fee of
£75. 7/14 days prior to the Seminar: 50% of the fee.
Fewer than 7 days or if no notification received:
Registrant liable to pay FULL seminar fee.
NB: Cancellations must be received in writing by
[email protected]
Management Forum reserves the right to cancel/
alter the programme, the speakers, the date or
venue. If an event is cancelled Management Forum
is not responsible for airfare, hotel or other costs
incurred by registered delegates.
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MANAGEMENT FORUM LTD, 98-100 Maybury Road, Woking, Surrey GU21 5JL, UK
Tel: +44 (0)1483 730071 Fax: +44 (0)1483 730008 Website: www.management-forum.co.uk