The next WITCON Delivered seminar will be hosted by Improbable in London on Wednesday, May 8. Attendees are also welcome to join the program virtually.
The seminar will focus on best practices and strategies for US patent enforcement and portfolio development strategies, as well as other forms of IP. Banner Witcoff’s Ross Dannenberg, Scott M. Kelly, and Mercedes Meyer will share cost-effective approaches for adapting your UK/EU IP portfolios to create value and opportunities in the US.
Making the most of your US portfolio requires a different approach from that typically pursued in UK and EU matters. Many see the average cost of district court litigation exceeding $3MM and will write off plans for US enforcement. But there are many other means of pursuing enforcement and licensing in the US which can be more cost-effective. And by operating in the US, your business will be subject to them too.
It is important to build a US IP portfolio that takes this into account, adapting claims and filings to US considerations not present in (or even contrary to) typical UK/EU practice. For example, in patents the US offers a permissive approach to portfolio development through continuation practice. Patentees can seek varied claim scopes in multiple filings to support a range of options, informed by ongoing prosecution, market developments, and strategic considerations. Pursuing a tailored approach in the US may lead to added costs, but it can help create additional licensing/enforcement opportunities and provide ways to defend the company in the competitive US market.
Our Speakers
Ross Dannenberg, Shareholder
With a background in computer science, Ross handles all facets of intellectual property procurement, counseling, and enforcement. In addition to working on thousands of software patent prosecution matters, Ross has extensive experience with contentious patent, copyright and trademark matters, including litigation, counseling and licensing, for companies in virtually every industry, including video games, software development, automobile parts and manufacturing, healthcare, medical devices, and craft brewing.
Scott M. Kelly, Shareholder
Scott represents clients throughout the life of an invention — from the birth of an idea through procuring a patent and enforcing it to protect key technologies and business interests. He has experience with a wide range of technologies, including computer software, networking, and business methods. In addition to preparing and prosecuting patent applications, Scott regularly counsels clients on validity, infringement, and other issues presented by asserted patents or potential acquisitions.
Mercedes K. Meyer, Ph.D., Shareholder
Mercedes Meyer, Ph.D., represents leading life science and technology companies maintaining an extensive biotechnology and pharmaceutical patent management, prosecution, opinion and due diligence practice. With a doctorate in virology and degree in chemistry, Mercedes has a deep understanding of complex biotechnology and scientific research, which is key for advising life science clients on commercializing and protecting product innovations as well as performing diligence for investing in new technologies, particularly in corporate joint development projects. Mercedes advises on developing patent strategies, managing the intellectual property rights, and making associated investments and acquisitions. Mercedes also handles patent reexaminations and inter partes matters.
If you have any questions about the event, please email us at event@bannerwitcoff.com
Register to attend virtually by clicking here.
Register to attend in-person by clicking here.
WITCON Delivered is intended exclusively for a corporate audience and clients of the firm, and attendance is by invitation only.
Application for 1 hour of CLE credit will be sought in IL and VA. Applications for credit in other states will be considered upon request. We apologize we are unable to provide CLE credit outside of the U.S. Please provide complete bar information during registration to seek credit. Please note that because of various jurisdictional requirements, we cannot guarantee that CLE applications will be approved. Our programs are intended for the benefit of our clients and contacts and we reserve the right to refuse any registration at our sole discretion.
