“PROCURING ENFORCEABLE PATENTS PER RECENT CAFC GUIDELINES”
Thursday, February 24, 2005
Crowne Plaza Cabana Hotel, Palo Alto (El Camino Real just north of San Antonio Road)
6:00 p.m., cocktails and registration; 7:00 p.m., dinner and program
SPEAKER: Paul Hickman, Perkins Coie LLP
Paul Hickman is a partner at Perkins Coie LLP and is in the Menlo Park office. His patent practice focuses on procurement, litigation, counseling and licensing in industries including computer architecture, software, electronics, semiconductor devices and equipment, and specialty materials. Paul was previously with Oppenheimer Wolff & Donnelly, Applied Materials, Inc., and Hewlett-Packard. He is the author of “The Patent and Technology License.” He has served as an adjunct professor of intellectual property law at the Peninsula University School of Law, an instructor at the Institute for Paralegal Studies, Santa Clara University, and is a former SVIPLA president.
TOPIC: “PROCURING ENFORCEABLE PATENTS PER RECENT CAFC GUIDELINES”
Our speaker will examine and discuss the CAFC decisions made over the last few years which have had a strong impact on the scope and enforceability of patent claims. Specific suggestions and techniques for both the drafting and prosecution of patent applications will be proposed to support the broadest possible claim interpretation during litigation and to reduce the effects of prosecution disclaimer, implicit definition and estoppel. Revised roles (if any) for various portions of the patent application, including the Summary, will be discussed, as well as the enhanced role of broadening boilerplate. Continuation practice will also be examined for its potential effect on parent applications and with respect to prosecution laches.
To register (in the RSVP email message, please include attendee name(s), company name, email address and any special dietary needs): CLICK HERE
If your system will not allow you to click on the registration email above, you can send your registration to: svipla@yahoo.com.
Cost: Member - $50 Non-Member - $65 Student - $25
Bring your check for dinner payment to the meeting on February 24, payable to: SVIPLA.
PLEASE DO NOT MAIL YOUR CHECK - BRING DINNER PAYMENT TO MEETING.
DEADLINE FOR RESERVATION OR CANCELLATION: Noon, Tuesday, February 22. Please make your reservation by the deadline as there are only a few extra spaces allotted at the meeting. The hotel may not be able to serve meals beyond the guaranteed number expected for the meeting.
YOU CAN ALSO BRING YOUR 2004-2005 MEMBERSHIP DUES PAYMENT TO THE FEBRUARY MEETING (see renewal/new member information below). Attendees will be assessed at the member or non-member rate for the dinner meetings. If you have recently mailed in your membership dues, you are encouraged to bring a copy of your dues payment check with you. Dues are also accepted at the meeting.
DUES FOR THE SEPTEMBER 2004-JUNE 2005 MEMBERSHIP YEAR WILL ONLY BE ACCEPTED THROUGH MARCH 1. Dues for this membership year will not be accepted after March 1, and the non-member dinner charge will be assessed from the March through June meetings.
MCLE: This activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of 1.0 hour. SVIPLA certifies that this activity conforms to the standards for approved education activities prescribed by the State Bar of California governing minimum continuing legal education.
PRESIDENT\'S MESSAGE
It\'s all about the claims! Knowing up-front how the PTO and courts can eviscerate your claims is the first step in improving your claim drafting skills. This month we learn from Paul\'s years of experience.
And:
1. SVIPLA wants YOU - to be next years Program Chair.
2. SVIPLA wants your client - to be our June Inventor of the Year.
Get involved - Contact Brian Coleman, SVIPLA Vice President, bcoleman@perkinscoie.com.
See you at the meeting!
Robert Q. Guillot, SVIPLA President
SVIPLA 2004-2005 RENEWAL/NEW MEMBER DUES – DEADLINE FOR DUES PAYMENT MARCH 1. (September 2004 through June 2005)
To renew membership dues or join SVIPLA, complete the application by clicking on this link: www.svipla.com/application.html. If you have trouble accessing the link, go to www.svipla.com and click on Application.
Mail completed application with your check to the address indicated on the application.
PLEASE NOTE THAT AT THE END OF THIS NEWSLETTER, IT IS INDICATED WHETHER YOUR DUES HAVE BEEN PAID FOR THIS MEMBERSHIP YEAR (September 2004-June 2005). If you have paid your dues for this membership year, and it does not indicate as such, please send an email to svipla@yahoo.com with the check number and date of check. Thank you.
NOMINATIONS NOW BEING ACCEPTED FOR INVENTOR OF THE YEAR AWARD
It’s that time again – we are seeking your submission for the 2005 SVIPLA Inventor of the Year.
Deadline for submission is Thursday, March 31.
The SVIPLA Board of Directors will judge the nominees based on their contributions to the technical arts, and then celebrate the achievements of the winner by naming him or her \"Inventor of the Year.\" The award presentation will take place during our June meeting.
You may submit your nominations by replying to: svipla@yahoo.com. Please provide the nominee\'s name, place of employment (if applicable), and a brief description of the nominee\'s work. It would also be helpful if you could attach a copy of one or more of the nominee\'s patents via a web link or a PDF file. If necessary, additional information may be requested.
The 2004 Inventor of the Year was Radia Perlman, Distinguished Engineer, Sun Microsystems Laboratories. At Sun, Radia conducts research on network security and routing technologies. She holds 70 patents with others pending, has published in numerous publications and was named as one of the 20 most influential people in information technology by Data Communications Magazine in its 20th and 25th anniversary editions.
BE SVIPLA’S NEW PROGRAM CHAIR FOR 2005-2006 MEETING YEAR
The SVIPLA Board of Directors is seeking nominations for Program Chair for the September 2005-June 2006 meeting year.
Please submit via email your nomination to svipla@yahoo.com (include in your nomination email a brief paragraph about the nominee and why they are interested in the position). Members are most welcome to nominate themselves.
Nominations are requested to be submitted no later than May 15th.
Job Description - Program Chair: Plan the program topics for the 2005-2006 meeting year (September through May - the June meeting each year is devoted to the Inventor of the Year Award); solicit and obtain speakers for the meetings; work with the SVIPLA administrator to coordinate requests by the confirmed speakers on the planned programs.
SEEKING PATENT ATTORNEYS AND PATENT AGENTS
Silicon Valley IP Practice: Growing San Jose, CA IP law firm, in suburban location with collegial environment, seeks patent attorneys or patent agents with CS, EE, or CSE backgrounds and 1- 4 years experience in software or electronics patent prosecution. CA bar membership required for attorneys. View www.hptb-law.com for background. Send resume, references and representative patents or other work to Recruiting Coordinator IPT, Hickman Palermo Truong & Becker LLP, 2055 Gateway Place, Suite 550, San Jose, CA 95110-1089, fax to (408) 414-1076, or email to jobs@hptb-law.com No phone calls, please.
2004-2005 SVIPLA BOARD OF DIRECTORS
PRESIDENT
Bob Guillot, IP Law Offices, rguillot@iplo.com
VICE PRESIDENT
Brian R. Coleman, Perkins & Coie LLP, bcoleman@perkinscoie.com
SECRETARY-TREASURER
Andre Gibbs, andgibbs@us.ibm.com
PROGRAM CHAIRS
Marcel Bingham, Hickman Palermo Truong & Becker LLP, mbingham@hptb-law.com
Sean Fitzgerald, Sean M. Fitzgerald, Attorney at Law, sean@competitivefactors.com
PAST PRESIDENTS
Stephen Sullivan, The Sawyer Law Group LLP, stephen@sawyerlawgroup.com
Paul Hickman, Perkins Coie LLP, phickman@perkinsCoie.com
Debra A. Shetka, dlearyously@aol.com