iMAPS New England Chapter

Archived Meetings

"An Insider's Guide to Understanding and Obtaining Patents and Managing Costs" Robert J. Sayre

"Patent Prosecution Strategies in a Changing Legal Environment" Joseph B. Milstein, Ph.D., P.E., Esq.

Abstract: While the overall US patent allowance rate plunged to about 40% last year, Bob has maintained a patent allowance rate of over 70%; and you can use many of his insights and tactics, as an applicant, to dramatically improve your likelihood of obtaining a patent at a reasonable price. Bob will share his best ideas on: evaluating whether your inventions are patentable; the various classes of inventions that a materials scientist should think about; deciding whether a patent application is worth the investment and, if so, when to file and what kind of application to file; understanding the process and costs (Bob will provide free copies of his report on typical costs over the life of a US patent); deciding whether to file internationally and, if so, where else to file; providing a US examiner with "cover" to allow your patent application; how to pitch your story and establish credibility to win an examiner to your side (the applicant/inventor—not just the attorney—must often play a key role); Biography:  Bob is a registered patent attorney with 14 years experience. He elevated from one of Boston's largest firms, Mintz Levin, to found Modern Times Legal (http://www.mxlegal.com) in Kendall Square, Cambridge in 2007. He represents a couple well-known universities in Cambridge and commercial entities ranging from small startups to one of the world's top companies by revenue. He earned his bachelor of science in ceramic engineering from Clemson University and his juris doctorate from Duke University School of Law. Though he now usually keeps his hands clean, Bob spent a year conducting research in the Materials and Components Technology group at Argonne National Laboratory. PDF Presentation

Abstract: Patents are business assets that can play an important role in the success of an endeavor. Recent activities of the United States Patent and Trademark Office (“USPTO”), and recent legal opinions by the Court of Appeals for the Federal Circuit and by the Supreme Court of the United States may have appreciable consequences for patents in various technological areas. It is possible that the issues being raised may relate to the fact that legislators and judges often do not have appreciable technical training and experience. Joseph Milstein will describe some of the recent decisions, and will discuss how they may affect the possibility of obtaining patent protection in areas of technology relating to electronics and materials processing, software, telecommunications, medical devices and biotechnology. Biography:  Dr. Milstein is a co-founder, Chairman and co-Managing Principal at Milstein Zhang & Wu LLC. Dr. Milstein focuses his practice on the preparation and prosecution of patent and trademark applications, both nationally and internationally. He counsels clients in patent prosecution strategy, assessing intellectual property for business transactions and/or litigation, and technology licensing. Dr. Milstein also provides advice on the treatment of patent royalties under Internal Revenue Code section 1235. Dr. Milstein brings with him an impressive following of clients including a number of institutions of higher education. PDF Presentation