U.S. Patent Law Essentials: What Scientists, Engineers, Physicians & Entrepreneurs Need to Know

U.S. Patent Law Essentials: What Scientists, Engineers, Physicians & Entrepreneurs Need to Know

 

Six Repeated Sessions:

Instructors: Stephen M. Hou & Julian G. Pymento

 

Patent protection for inventions is a valuable component of business strategy for startups and established companies alike. This workshop covers the basics of U.S. patent law, including the patent application process, prosecution, litigation, and licensing. We will identify key issues that inventors should be aware of as they navigate the patenting process, discuss what recent developments in patent law mean for inventors, and draw examples ranging from the computer software to the pharmaceutical industries.

 

Some questions we will explore: • What is the difference between a patent and a trade secret? • Which inventions are patentable? • What are the "novelty" & "non-obviousness" standards for patentability? • How much do I have to disclose to obtain a patent? • At what point in the R&D process should I file for a patent? • Why am I an author on the paper, but not listed as an inventor on the patent? • How are my patent rights affected if I am a researcher at a university or an employee of a company? • What if I want a patent, but my co-inventor doesn't (or is deceased)? • What is the scope of my patent? What does and doesn't it protect? • Why are the sentences in patents so long and difficult to read? • What should I do if my patent application is rejected? • What are my duties and ethical obligations as an inventor during the application process and prosecution? • Who can invalidate my patent after it is granted, and on what grounds? • If someone is practicing my patent without my permission, how can I stop them? • If I am accused of patent infringement, what recourse do I have? • What changes were made to U.S. patent law by the America Invents Act of 2011 and recent court decisions? • What issues do I face if I seek patent protection in multiple countries? • What questions should I ask my patent attorney? Undergraduates, graduate students, post-docs, faculty, and industry professionals in science, engineering, medicine, business, and law are welcome.

Stephen M. Hou has practiced patent prosecution for law firms in Boston and San Francisco, and is registered to practice before the US Patent & Trademark Office. He has been involved in three award-winning startup companies, serving as co-founder, chief engineer, and software engineer. Stephen received his law degree from the New York University School of Law, where he was an InSITE Fellow, advising startup companies and venture capitalists on patents, technology, and entrepreneurship. Stephen graduated Phi Beta Kappa with two undergraduate degrees in physics and electrical engineering (EE) and two graduate degrees in EE, all from the Massachusetts Institute of Technology (MIT), where he was a microsystems engineer andinstructor, earning the President Paul E. Gray Award for Excellence in Research and the Goodwin Medal, MIT's highest honor for excellence in teaching by a graduate student.

 

Julian G. Pymento has experience at Washington DC and New York law firms specializing in both patent prosecution and litigation, and is registered to practice before the US Patent & Trademark Office. Julian received his law degree from the New York University (NYU) School of Law after completing undergraduate and graduate degrees in electrical engineering at NYU and a minor in business at NYU Stern. He has published research in NYU's Journal of Intellectual Property & Entertainment Law (JIPEL) that compares patent claim construction standards in the Patent Trial & Appeal Board andfederal courts, and how those distinct standards impact legal practice. Julian was the Senior Notes Editor for JIPEL and served as Patent Chair for the NYU Intellectual Property & Entertainment Law Society.