Patent Litigation Risk Management Toolkit
I.D. # WB1525 Duration 4 Hours
In recent years, total annual United States patent grants have increased to over 300,000, while patent infringement lawsuit filings have exceeded 6,000 per year. Only a small fraction of granted patents ever end up in litigation. Of the many causes for the disparity is the growing awareness and sensitivity of companies to patent infringement risk management practices. This course addresses a number of those practices (and tools for implementing the practices), placing them into context, and providing a practical overview for how to implement them to help reduce the prospect of patent infringement litigation.

Participants will receive a basic working knowledge of various common, but most misunderstood, practices for reducing the risk of patent infringement litigation. The course will teach the role and significance of patent claims, address pragmatic record keeping practices, reveal ways to monitor competitive patent filings, explain common practical pitfalls in analyzing a patent landscape, and illustrate alternative ways that risk can be managed (e.g., by use of contracts).

Learning Objectives
By participating in this web seminar, you will be able to:

  • Identify causes why many companies end up in litigation
  • Discover ways to help avoid poor patent litigation outcomes
  • Expand existing practices to help avoid the risk of litigation in the first place

Who Should Attend
Small to mid-size company CFO's, as well as technology officers, engineering managers, patent liaisons, and in-house counsel for companies of all sizes will benefit from this course. These people will typically have at least five years of industry experience, and some may have two or three decades of experience.

This course complements the Patent Litigation in the U.S.: What You Need to Know web seminar, which focuses on what engineers and business managers need to know to effectively manage patent procurement, patent infringement litigation, and patent licensing.

Seminar Content
Session 1

  • Infringement: The Theme that Brings Us Together?

    • Patent statistics
    • Glossary of terms
    • Infringement and its consequences

  • Hypothetical Case: Fact Review

    • The market generally
    • The patent landscape for the market
    • The product sought for market entry
    • Perspective

  • The Tools in the Kit: For the Market Entrant and Existing Participants

    • Internal policies and practices
    • Prior art
    • Contracts
    • Patent applications/patents
    • Design arounds

  • Internal Policies and Practices

    • Intellectual property policy of company
    • Confidentiality obligations
    • IP Ownership obligations
    • Invention disclosures
    • Patent searches and competitive patent watches
    • Product clearance
    • Archiving internal activities
    • Sending and receiving accusations of infringement

  • The Role of Prior Art in Defining Boundaries in the World of Patents

    • Patents and non-patent literature
    • First inventor to file
    • Public accessibility requirement
    • Public use
    • Possible relevance of prior invention activities

Session 2

  • Contracts

    • Employment agreements
    • Nondisclosure agreements
    • Joint development agreements
    • License agreements

  • Patent Applications/Patents

    • Overview of patents
    • Utilitarian features
    • Ornamental features
    • International filings
    • Continuation/Divisional/Broadening Reissue Applications

  • Design Arounds

    • Lawful
    • Precautions

  • Toolkit Laboratories

    • The marketplace
    • Patent Offices
    • The Courts
    • Comparison of proceedings in Patent Offices and Courts

  • Summary

Instructor(s): Eric Dobrusin
Eric Dobrusin

Eric M. Dobrusin is a shareholder in the Dobrusin Law Firm, PC in metropolitan area of Detroit, Michigan, where he concentrates his practice in intellectual property law. He is a member of the Michigan Bar and is registered to practice before the United States Patent and Trademark Office. Mr. Dobrusin previously served as the Executive Director of the National Patent Board, and he has served as an ADR Neutral and a Special Master in IP litigation disputes. Mr. Dobrusin has presented talks and authored articles on a variety of intellectual property topics. He also has co-authored books entitled, ¿Intellectual Property Culture: Strategies to Foster Successful Patent and Trade Secret Practices in Everyday Business¿ (LexisNexis) and Intellectual Property Litigation: Pretrial Practice, Third Edition (Wolters Kluwer Law & Business). Mr. Dobrusin has earned recognition as a SuperLawyer®, Best Lawyers® in America (2014 Patent Law Lawyer of the Year for Detroit), dBusiness Magazine Top Lawyers in Metro Detroit, Leading Lawyers¿, and Managing Intellectual Property Magazine IP Stars. In 2013, he was recognized by the Michigan Lawyers Weekly publication as among its ¿Leaders in the Law¿. Mr. Dobrusin received a B.S. degree in materials and metallurgical engineering from the University of Michigan and a J.D. degree from Wayne State University Law School.

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"This seminar helped me understand the tools needed to reduce the risk of patent infringement
against my organization."

Jerry Depies

Engineering Compliance Manager

Douglas Dynamics LLC
Fees: $425 SAE Members*: $340 - $383
* The appropriate SAE Member discount will be applied through the Registration process.  Discounts vary  according to level of membership: Elite Member 20%; Premium Member 15%; Classic Member 10%
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