Practical Considerations in Valuing, Evaluating, and Enforcing Patent Rights

Patents are core strategic assets for many organizations and their valuation may be paramount in providing freedom to operate within an innovative marketplace, protecting differentiating product features from being copied, and generating revenues to offset investments into research and development.

This presentation provides an overview of the basic tenets of patent protection and practical implications on the procurement, licensing, and litigation of patents. In particular, this presentation presents important considerations for determining the value of a subset of key patents in a patent portfolio such as the class of products or services covered, the scope of coverage afforded by the claims, and important claim construction considerations that impact patent valuation and enforcement.

This program will benefit patent attorneys as well as any attorney with business clients who own patent assets or create products or services impacted by the patent assets of others.

Learning Objectives:

1. Identify patent coverage for products and services in the context of apparatus, method and process claims

2. Examine what acts would constitute infringement under direct and indirect infringement theories in view of statutory constructs and relevant case law examples

3. Explore remedies such as injunction and compensation for infringement, focusing on compensation in the context of lost sales, and reasonable royalty considerations

4. Discuss relevant claim construction principles and considerations that are impactful in creating and valuing individual patents (e.g., ordinary and customary meaning of claim terms, the role of the patent specification and the role of the prosecution history).