Track C

C6 A Road Well-traveled: Don’t Get Lost in Protecting Intellectual Property in the United States and Abroad

Track: Administrative & Operations

Target Audience: Fundamental

Kimberly Dunn, Thomas Horstemeyer LLP

Melanie A. Campos, University of Florida
Glenn P. Ladwig, Saliwanchik, Lloyd & Eisenschenk

To effectively triage the pursuit of patent protection for your institution’s various inventions, your office must have a good understanding of the options available both in the United States and abroad. This is often taken for granted as there are many nuances to consider other than just the prosecution of a patent itself.  Newcomers to technology transfer may be forced to find their own path through a maze of similar-sounding, yet distinctly different information. This session lays the groundwork for a solid competency in intellectual property (IP) protection in the United States, segues to options and processes for filing in foreign jurisdictions, and along the way weaves in hard-won insights.

Attendees will hear about the decision-making process for filing a patent application from the perspective of the technology transfer office, methods for establishing a budget, and guidelines for reviewing invoices.  Copyright and trademark protection will be briefly overviewed. A more detailed discussion will explore the U.S. patent process. Attendees will also learn the fundamentals of foreign practice, including a description of the Patent Cooperation Treaty (PCT) application, differences between international and national stages, timelines, entity status, searching authorities, costs, and the constants and variables of foreign practice.

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