Building and Maintaining a Formidable Patent Portfolio in a Fluctuating Environment

Presented by NAPABA’s Intellectual Property Committee

Webinar Topic:
Patent Prosecution Strategy

Event Description:
Join industry experts for an engaging panel discussion on effective strategies for building and managing a robust patent portfolio, especially in today’s fluctuating economic and technological landscape. This insightful webinar, hosted by NAPABA’s Intellectual Property Committee, will provide valuable perspectives on the nuances of patent prosecution, portfolio growth, and long-term maintenance.

Our esteemed panelists will dive deep into key aspects of patent prosecution, including the best practices for managing pending applications based on a company’s stage and economic conditions, as well as the intricacies of handling invention disclosures—both domestically and internationally. Additionally, the panel will explore strategies for growing your portfolio, from filing initial patent applications to acquiring patents from others and offer practical tips on maintaining a large patent portfolio over time.

As the IP landscape continues to evolve with emerging technologies such as AI, the panel will also discuss future-proofing your portfolio and adapting your strategy to handle these rapid changes. Whether you are an in-house counsel or working with outside counsel, this webinar will provide actionable insights for navigating the complexities of patent law and strategy in a dynamic environment.

Learning Objectives:
Through this panel, attendees will gain a deeper understanding of:

• Recommended procedures for patent prosecution across different company stages and economic climates.
• Best practices for accepting invention disclosures and managing patent applications in-house.
• How to grow a patent portfolio and encourage innovation among engineers.
• Strategies for maintaining and tracking large portfolios.
• How to make informed decisions about patent acquisitions, divestitures, and maintenance fees.
• Preparing for the future of patent law, including the role of AI and emerging global IP systems.

Panelists:

• Brent Yamashita (co-moderator)
• Josephine Chang (co-moderator)
• Paul Liu
• Chun Kuo
• Ami Patel Shah

Nuts and Bolts of Patent Prosecution

• Handling pending applications based on company stage and economic conditions.
• Best practices for invention disclosures and patentability searches.
• Procedures for managing disclosures in multiple countries.
• Thoughts on provisional patent applications.
• In-house counsel involvement in the patent prosecution process.

Growing the Portfolio

• Strategies for building a portfolio from zero to 100 patents.
• How to effectively work with outside counsel in portfolio development.
• Motivating engineers to submit invention disclosures.
• When and how to acquire patents from others.
• Deciding between U.S. filings and international applications during uncertain times.

Maintaining the Portfolio

• Managing large patent portfolios: tools, software, and team structure.
• Deciding when to sell patents or abandon applications.
• Justifying your IP budget to management.
• Taking over an existing patent portfolio at a new company.

The Future of Patents

• Future-proofing your portfolio in uncertain times.
• The evolving role of AI in patent law.
• Predictions for the next five years in the patent world.

Note:
NAPABA did not seek CLE for this program; however, this live webcast may be eligible for CLE credit in your jurisdiction. Please follow up directly with your jurisdiction to self-apply for CLE credit.

Don’t miss this opportunity to hear from leading IP professionals about navigating the complexities of patent prosecution and maintaining a strong, future-ready portfolio in a rapidly changing environment. Register today