Patent Prosecution Through The IP Counselor's Looking-Glass

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