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Mehdi Sheikerz
Partner | Staas & Halsey LLP
Robert Plotkin
Software Patent Lawyer & Founding Partner | Blueshift IP

Developing Strategic Patent Portfolios for Start-ups: Tips and Strategies Explored | On-Demand Webinar

Broadcast Date: Wednesday, February 01, 2023 from 12:00 pm to 1:00 pm (ET)

Technology startups stand to benefit from patents in the form of protection against competitors, increased valuations, and increased ability to obtain funding.  Yet startups face many challenges when seeking patent protection, including resource constraints, lack of internal expertise and business processes, and lack of consistency and clarity in the law of patent eligibility since the Supreme Court’s notable rulings in Alice and Mayo. Moreover, the judicial abstract idea exception of patent eligibility under 35 U.S.C. § 101 continues to impair patent incentives and poses concerns about protecting investments in technology-related inventions.

To thrive amidst uncertainties and the constant pressures facing startups, such companies should be well-versed in any developments surrounding patent laws and best practices to successfully navigate through legal complexities, build sound patent portfolios, and recognize common pitfalls which could result in long-term repercussions.

Join experienced patent attorneys Robert Plotkin (Blueshift IP) and Mehdi Sheikerz (Staas & Halsey LLP) as they provide a comprehensive discussion of the latest trends and developments surrounding patent laws. Speakers, among other things, will also offer practical tips and strategies for managing patent portfolios for startups.

Key Topics:

  • Patent Laws: Recent Trends and Developments to Maximize Benefits of Patents
  • Examining the Current Patent Eligibility Jurisprudence and Its Impact on Innovations
  • Maximizing Benefits of Patents with Limited Resources
  • Recognizing Common Challenges and Pitfalls
  • Best Practices and Strategies in Managing Patent Portfolios for Startups

Agenda:

Mehdi Sheikerz, Partner, Experienced Patent Attorney and Patent Portfolio Strategist, Staas & Halsey LLP

  • How to maximize benefits of patents
    • Types of Technology and Patent Laws
      • Types of Technology
      • Applicable US Patent Laws
        • Types of patent applications
        • Bar dates
      • Subject Matter Eligibility
      • Detectability
  • Setting a foundation for long-term success
    • Develop In-house Innovation Committee
      • Inventors
      • Identify Products or Services
      • Target Products or Services
      • Mine for inventions disclosures
  • Common startup patent pitfalls: myths and realities
    • Myth: Our idea -> we own the idea
      • Reality:  Ownership rights need to be documented

Robert Plotkin, Software Patent Lawyer & Founding Partner, 25+ Years of Specializing in Software Patents, Blueshift IP

  • How to maximize benefits of patents with limited resources
    • Prioritizing patent filings based on business value
    • Strategic use of provisional patent applications
    • Prioritizing patent searching
    • PCT applications and foreign filing strategies
  • Setting a foundation for long-term success
    • Focusing on the long-term in the face of constant short-term pressures
    • Tailoring your patent strategy to your exit plan
    • Crafting your patent strategy based on your competitive landscape
  • Common startup patent pitfalls: myths and realities
    • Myth: Patents are a “game of kings” and are not suitable for startups
      • Reality: Strategic, focused patenting can provide significant benefits even to resource-strapped startups
    • Myth: We can wait until our company has grown before filing patent applications
      • Reality: Strict legal deadlines can cause you to forfeit your patent rights if you do not file patent applications early.
    • Myth: “Quick and dirty” provisional patent applications provide protection
      • Reality: You get what you pay for.  Inadequate provisional applications carry significant risks.
    • Myth: Provisional patent applications reduce costs
      • Reality: Provisional patent applications defer costs, but also increase total costs and defer protection.
    • Myth: Patents do not provide meaningful protection for software
      • Reality: Patents can provide strong, broad, and defensible protection for certain kinds of software, when those patents are written properly.

Who Should Attend:

  • Patent Lawyers/ Consultants
  • Intellectual Property Lawyers/Consultants
  • Corporate Lawyers
  • General Counsel
  • Intellectual Property Managers
  • Patent Managers
  • Trademark Managers
  • Brand Managers
  • Patent Agents
  • Legal and Compliance Executives
Take This Course

CLE Credit:

Course Level: Intermediate

Advance Preparation: Print and review course materials | Method of Presentation: On-demand Webcast (CLE)

Prerequisite: General knowledge of patent prosecution | Course Code: 1410439

NY Category of CLE Credit: Areas of Professional Practice | Total Credit: 1.0 CLE