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Patent Prosecution Through The IP Counselor's Looking-Glass

(257 reviews)

Produced on October 21, 2019

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$ 89 Intellectual Property In Stock
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Course Information

Time 1h 1m
Difficulty Beginner
Topics covered in this course: Intellectual Property

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.


Joan K L.

Well-presented approach that will benefit patent practitioners.

Clifford H.

Very unique program and very relevant

Erin f.

Great presentation and topic.

Valerie D.

Very creative content.

James M.

This was a great presentation. I would strongly recommend it to anyone new to their practice.

David G.

That was an excellent presentation

Nicolle P.

Very inspiring.

William B.

Well thought out practical advice for becoming a better attorney.

Catherine D.

Topic and presentation can translate to all areas of your life and practice. You will rethink how you view yourself as a lawyer, and see how re-calibrating your thinking helps you excel in any legal field.

John D.

Interesting topic.

John C.

Well-structured and thoughtful presentation

T. O.

Carlo Cotrone offered an excellent presentation today!

Elizabeth F.

Fascinating perspective

Tom O.

Amen on Carlo's practice tip #1.

Nicole K.

This was the most valuable CLE presentation I have watched via Lawline. Highly recommend.

Jessica B.

Interesting program that was about how to be an IP attorney, not how to do IP law

Kathryn A.

thank you

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