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PATENT LAW FOR MANAGERS, Training Crash Course 

In today’s world of massive technological advancement, it’s more important than ever for managers to have a clear understanding of patent law.

Patent law is the branch of intellectual property law that deals with new inventions. Traditional patents protect tangible scientific inventions, such as circuit boards, car engines, heating coils, or zippers. Once granted, a patent gives inventors the exclusive right to sell their invention for 20 years.

In today’s competitive environment, innovation is the mainstay for every business that leads to development of intellectual property. Identifying, developing, and leveraging innovation provides competitive edge and aids in long term success of the company.

It should be noted that intellectual property is not limited to technology companies, but is valuable for every business which invests huge sums in research and development for creating indigenous products and services.

Experts in this area believe that organizations should be proactive in implementing IP solutions to identify novel innovations and increase revenues. A well-defined IP goal can result in achieving business objectives and help position the business as a leader in the marketplace.

With growth in business revenues, the IP strategy can include protecting the unique aspects of the assets and foster innovations to explore new geographies. This can be achieved through licensing or joint ventures to create novel solutions that satisfy the unmet needs in a market..

Organizations should not ignore their patent portfolio. Managers should acknowledge the importance of the patent portfolio for an organization’s future success.

Traditional patents protect tangible scientific inventions, such as circuit boards, car engines, heating coils or zippers. However, over time patents have been used to protect a broader variety of inventions such as coding algorithms, business practices, or genetically modified organisms.

In general, a patent can be granted if an invention is:

● not a natural object or process
● new
● useful
● not obvious

Exactly what is eligible for patent protection is a topic of fierce debate and courts often struggle to determine what is a new, nonobvious invention.

PATENT LAW FOR MANAGERS, Training Crash Course by Tonex

Patent law for managers training covers what you need to know about patents from a basic legal and the managerial point-of-view. Today, patents and patent law is no longer merely the arena for patent attorneys, but rather, impacts the day-to-day jobs of managers, in addition to non-patent attorneys, engineers, and other related stakeholders.

Managers, in particular, need to have a fundamental and broad understanding of patents, which are constitutionally-derived rights that serve to legally protecting inventions (e.g., devices, processes, products, materials, software methods, etc.) from unjust infringement by competitors.

Patent law for managers training will cover all aspects of what goes into a successful patent program, including: (1) providing an understanding of patent applications components and processes (such as drawings, claims, and the specification, formalities, best practices, and the like), (2) providing an understanding of patent prosecution before the United States Patent and Trademark Office (USPTO), in addition to (3) providing an in-depth look at various business considerations such as patent portfolio generation, strategic implementation, and valuation.

While patent law for managers training concentrates mostly on patents, attendees will also learn other tangential aspects of protecting intellectual property, such as trademarks, trade secrets, and licensing agreements. The training will provide a thorough review of the rights that inventors and assignees (e.g., companies employing the inventors) and the information that managers need to protect their company’s valuable intellectual property assets from competition in dynamic U.S. markets.

Learn About

  • S. patent law institutions and organizations, including: the United States Patent and Trademark Office (USPTO), the Patent Trial and Appeal Board (PTAB), U.S. International Trade Commission (ITC), the United States Court of Appeals for the Federal Circuit (CAFC)
  • S. Patent laws (35 U.S.C. § 101, § 102, § 103, § 112, and others)
  • The legal concept of invention (conception, reduction-to-practice, diligence, etc.) and the importance inventorship and it’s distinction from ownership and assignment
  • The various types of patents (provisional patents, utility patents, design patents)
  • Patent searching (pros and cons of searching, search strategies, how to implement)
  • Patentability requirements (novelty, non-obviousness, utility, etc.)
  • Patent application components (claims, drawings, specification, and other formalities)
  • US patent application filing procedures and costs (timing pitfalls, related websites, parameters such as entity-size status and it’s affect on fees, formalities, application data sheet, transmittals, oaths, declarations, etc.)
  • Patent prosecution procedures and strategies (how to refute rejections by the USPTO examiners, various arguments such as impermissible hindsight, teaching away, commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results, the use of 37 CFR 1.132 declarations, etc.)
  • Patent application preparation (working with attorneys, developing an efficient in-house model)
  • International patenting (patent cooperation treaty (PCT) applications, World Intellectual Property Organization (WIPO), pitfalls in major jurisdictions including China, European Union, and Japan)

Patent law for managers training is designed to deliver theoretical and practical training related to intellectual property law in the form of lectures, interactive presentations, templates, case studies, group activities, and hands-on workshops.


Patent law for managers training is a 3-day course designed for all managers and supervisors in all capacities (e.g., engineering managers, business managers, etc.) who already have or are planning to patent ideas generated by inventors in their company, or who are interested in having a thorough understanding of alternative forms of protection that are available such as trademarks, copyrights, trade secrets, and the like, and being able to determine the pros and cons of various protection strategies.

Training Objectives

Upon the completion of patent law for managers training, the attendees will be able to:

  • Describe the various types of patents (utility, provisional, plant)
  • Understand the patentability criteria (novelty, non-obviousness, utility)
  • Understand the process for filing and obtaining a patent (forms needed, what each form means, and other tricks of the trade), in view of timelines and associated costs
  • Understand the principals of patent inventorship, assignment, ownership, and the nuanced role that patent documents play in business transactions
  • Understand patent components (claims, drawings, specification) and how each component works with other components to enable and invention
  • Execute the early necessary steps to protect their invention including patents (utility, plant, and design), copyrights, trademarks, and trade secrets
  • Describe the business value and significance of association between innovation, patents and other forms of IP, and related business concepts
  • Identify what is and is not patentable and when a patent is not the best IP protection
  • Describe the patent development process and the right to exclude derived from a patent
  • Recognize content to include in a patent application and in particular, what to include in claims
  • Efficiently read patents which out getting lost in irrelevant legalese: what parts to focus on, what parts to discard, what parts may present legal traps
  • Interact with proper IP professionals at the right time during the IP process
  • Demonstrate a fundamental understanding of confidentiality agreements including employment contracts, non-disclosure agreements
  • Determine when and how to perform patent searches, analyze the results of such searches, and determine whether to proceed with patent application based on such searches
  • Understand business/legal concepts such freedom to operate, clearance searching, patentability searches, and the like
  • Describe the requirements and procedures for filing internationally, while understanding the potential benefits and pitfalls of various jurisdictions

Introduction to Intellectual Property Patents

  • Innovation and economic considerations
  • Why should you file a patent application?
  • What is a patent application?
  • What rights are created by a patent?
  • What if you cannot afford to enforce your patent rights?
  • What are the benefits of patent pending status?
  • Patentable subject matter
  • Novelty and non-obviousness
  • Patent protection for software, algorithms, and business methods

Rights of the patent holder

  • Right to Exclude
  • Infringement
  • The patent application
  • Scope of claims

Agencies involved

  • United States Patent Office
  • Patent Attorney
  • Stakeholders
  • Courts and other governing bodies

Patent Search

  • What is a patentability search?
  • How can searches avoid wasteful patent applications?
  • How can searches improve a patent application?
  • When is a search unnecessary (or even unhelpful)?

Patent Timing

  • When should a patent application be filed?
  • What difference do the “first to file” laws make?
  • What are the deadlines for filing a patent application?
  • Do you need to create a working model of your invention?

Patent valuation basics

  • How to determine whether invention valuable?
  • How to identify invention (not my proposed product)?
  • How to value invention

Patent law basics

  • Secrecy, Access, National Security, and Foreign Filing
  • Types and Status of Application; Benefit and Priority Claims
  • Provisional patents
    • Introduction to provisional applications
    • Requirements for provisional applications
    • Concerns about filing provisional applications
    • The best way to use provisional applications
  • Non-Provisional / Utility patents
  • Design Patent Applications
  • International (Patent Cooperation Treaty, PCT) Patents
    • Procedure
    • Filing
    • Search and written opinion
    • Publication
    • Optional examination
    • Subject matter
    • National and regional phase
    • Statistics
  • Formalities
  • Ownership and Assignment
  • Representative of Applicant or Owner
  • Receipt and Handling of Mail and Papers at USTPO

Parts, Form, and Content of Application

  • The identity of the patent inventor
  • The specification (the part of the patent application that describes the invention)
  • The claims (which define the scope of the patent application)
  • The patent application drawings
  • The inventor’s oath or declaration
  • Examination of Applications

Patent Examiners

  • Pre-Examination
    • Office of Initial Patent Examination (OIPE) Collect Fees, Scanning-Convert All Paper to Image, Initialization-Assign Serial Numbers, Formalities Review Specification? Claims? Oath/Declarations? Drawings? (Optional)
    • Assign Filing Date, Assign Class, Art Unit, Examination
  • Examination
    • 2nd Formalities Review
    • Patentability? Patentable Subject Matter? Utility? Clearly Described? Enabled? ▪ Claims Definite? Novel? Non-obvious?
    • Prior Art, Classification, and Search
    • Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
    • First Office Action
    • Applicant’s Amendment and Response
    • Final Office Action
    • Appeals
  • Post Examination
    • 3rd Formalities Check
    • Collect Issue Fee, Convert Image to Text, Assign Patent Number

Allowance and Issue Correction of Patents

  • Design Patents
    • Scope of protection
    • Process for obtaining protection
    • Distinguishing between design patents and copyrights
    • Distinguishing between design patents and trademarks
    • Design patents in computer and Internet technologies
    • Patent Cooperation Treaty and International Patents
    • Duty of Disclosure
  • Patentability
    • The invention must be statutory (subject matter eligible)
    • The invention must be new (novelty)
    • The invention must be useful
    • The invention must be non-obvious
  • Software Patents
    • Why patents are being used to protection computer software
    • Are Software and Business Methods Still Patentable after the Bilski Decision?
    • The historical reluctance to grant patents on computer code
    • An explanation on why software is currently considered to be patentable
    • Bad software patents
    • In Depth: Software patents under United States patent law
  • What is a 35 U.S.C. § 101 (Section 101) Rejection
    • Four statutory categories under Section 101
    • Non-statutory exceptions to subject matter eligibility
    • Overview of the Alice text
  • How to argue against a Section 101 Rejection
    • Responding to a statutory rejection (outside four categories)
    • Proving patent eligibility under step one
  • Applying Step One of the Alice test
    • Overview of step one of the Alice test
    • Analyzing step one for abstract ideas
    • Analyzing step one for natural phenomena
  • Step two Test: Applying the Markedly Different Characteristics
    • Overview: Searching for an “inventive concept”
    • Evaluating the “conventionality” of the claim elements
    • What is enough for inventive concept?
    • The machine-or-transformation test
    • Relevant case law (Bilski case, Mayo case, Alice case, Post-Alice period: Digitech, buySAFE, DDR Holdings, Versata v. SAP, Allvoice)
    • Citation of Prior Art and Ex Parte Reexamination of Patents
    • Section 102 of Title 35 S.C.
    • Section 103 of Title 35 S.C.
    • Maintenance Fees
    • Patent Terms and Extensions
    • Supplemental Examination

Patent Costs

  • How much does a patent application cost?
  • What makes patent application so expensive?
  • What is the cost breakdown of a patent application?
  • What is the cost of a design patent application?
  • Cost to Prepare a Utility Patent
  • Cost to File an Amendment to Your Patent

Post-allowance and Issuance Fees

  • International Patent costs

Preparation and filing of corresponding foreign application from PCT or US application Docketing, reviewing and forwarding Office Action received from foreign associate Assisting associate or client with prosecution Trademarks & Trade secrets

  • Trademark, trade secrets, copyright, or patent?
  • Basis for filing trademark, Federal registration
  • Trademark searching
  • Legal and procedural review of trademark application
  • Trademark timing
  • Trademark filing, information to include in trademark application
  • What happens after filing trademark and what to do
  • Publication for opposition
  • Trademark costs: application filing fees, maintenance

  License agreements What Is a Licensing Agreement?

  • Types
    • Exclusive license
    • Non-exclusive license
    • Sole license
  • Elements of a Licensing Agreement
    • Contract length
    • Dispute resolution
    • Exclusivity
    • Inventory issues
    • Minimum sales requirements
    • Oversight
    • Quality control
    • Patent applications
    • Payment amount
    • Payment schedule
    • Renewal rules
    • Returns and allowances
    • Royalty rates
    • Royalty calculations
    • Sub-licensing
    • Territorial agreements
  • Checklist
    • Arbitration
    • Assignment provision
    • Confidentiality
    • Considerations
    • Definitions
    • Diligence
    • Export rules
    • Favored nation status
    • Force majeure
    • Improvements
    • Infringement
    • Inspection rights
    • Intellectual property
    • License restrictions
    • Parties involved
    • Rights and privileges
    • Schedules
    • Termination
    • Warranty

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