Patent Prosecution Through The IP Counselor's Looking-Glass

Streams live on Monday, October 21, 2019 at 01:30pm EDT

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$ 59 Intellectual Property Law In Stock
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Course Information

Time 60 Minutes
Difficulty Beginner

Course Description

The fortunes of countless companies have been made, and sustained, by securing patents of significant commercial value. Practitioners who specialize in patent prosecution play a critical role, helping clients to describe and claim inventions and negotiate with patent offices. The nature of patent prosecution, including its emphasis on process, written ex parte communications, and volume, can promote a complacency that commoditizes the work. Practitioners may think in narrower terms, limiting their potential to deliver great results to their clients.

This course, presented by Carlo Cotrone of Baker Hughes, a GE company, describes the paradigm of an intellectual property counselor—a practitioner who leverages patent prosecution as one strategic tool among many, rather than narrowly conceptualizing their role. It applies that paradigm to demonstrate how law firm and corporate practitioners can become more effective advocates, advisors, and collaborators in a prosecution context.

Learning Objectives:

  1. Identify challenges in prosecution practice that reduce practitioner effectiveness
  2. Distinguish between actual and apparent constraints impacting clients’ engagement with prosecution teams
  3. Understand the mindset that an IP counselor applies when advising clients and prosecuting patent applications
  4. Discuss concrete ways to recalibrate your practice to build stronger, better-aligned patent portfolios

Credit Information

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Carlo Cotrone

Baker Hughes

Carlo Cotrone is Senior IP Counsel at Baker Hughes, a GE company (“BHGE”). As lead IP counsel for three BHGE business units, he manages the development and execution of offensive and defensive IP strategies, provides IP and general corporate advice, and negotiates agreements with licensees, customers, and suppliers. He also is Adjunct Professor of Law at University of Houston Law Center, and a frequent conference speaker and blog contributor on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Carlo is the inventor of two United States patents directed to digital sheet music technology. Previously, he practiced law at several firms on the East Coast and in the Midwest, most recently as a partner.