Patents and Secrecy Orders - IIPLA

Patents and Secrecy Orders

Categories: IP COURSES
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About Course

About the Course:

The Director of the US Patent and Trademark Office is authorized to order patent applications to be kept secret and not published, if such publication is deemed to be “detrimental to national security.” Not only may such determinations risk depriving inventors of their ability to monetize their inventions, but violations of Secrecy Orders can be criminal offenses deserving of time in jail.

Whether or not you believe your invention has national security implications, all US patent applications are reviewed in terms of the appropriateness of subjecting them to Secrecy Orders. Thus, you should be aware of the potential dispositions of patents that are subject to Secrecy Orders.

This unique and crucial webinar provides critical insights into issues surrounding Secrecy Orders such as:

  • What can trigger the Director of the US Patent and Trademark Office to authorize abandonment of a patent application?
  • Under what circumstances can a patent applicant foreign file a secret application?
  • Which division of the USPTO reviews patent applications relative to national security concerns?
  • To what extent can a patent applicant contact the Defense Agency that is reviewing his patent in connection with possible Secrecy Orders?
  • How can an inventor subject to Secrecy Orders apply for compensation? What remedies are available if no such settlement is reached?
  • Can an inventor subject to Secrecy Orders sue defense contractors that are infringing?
  • In defending itself from an infringement claim, can the government claim that the patent is invalid?
  • Can inventors whose patent applications trigger Secrecy Order concerns delete parts of the patent in order to avoid the imposition of Secrecy Orders?
  • Can an applicant bring a claim against the government after his patent issues?
  • To what extent is patent life extended in cases where such patent was subject to Secrecy Orders?
  • What are the time limits on Secrecy Orders? What are some of the exceptions to this rule?
  • To what extent do damages against the government resemble the calculation of damages in traditional patent infringement?

Course Leader: Thomas J. Scott Jr., Partner, Goodwin Procter LLP

Thomas Scott, a partner in the firm’s Litigation Department, focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice (especially before the Federal Circuit) and technology licensing. Mr. Scott has developed significant patent portfolios for financial institutions and patent licensing organizations. He has negotiated numerous patent licenses which have collectively brought in more than $650 million in royalties. Mr. Scott has a continuing active practice before the U.S. Patent and Trademark Office in computer software technology and other complex electrical arts. He has tried numerous patent infringement cases to judgment, at least five before juries.

Mr. Scott is the co-author of “Proscribed Conduct for Patent Holders Participating in Standard-Setting Organizations,” IP Law & Technology Journal, Vol. 20, No. 10, October 2008. He is the co-author, of “Reducing Your Risk as a Licensor or Licensee in Patent and Technology Licensing – The Important Terms,” which appeared in the June/July 2008 edition of The Licensing Journal. Mr. Scott is admitted to practice in the District of Columbia and Virginia, and before the U.S. Patent and Trademark Office, U.S. Tax Court, U.S. Court of Federal Claims, U.S. Court of Appeals for Federal Circuit, U.S. Supreme Court, U.S. District Court for the District of Columbia, U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit Optional: A quiz is offered for an additional $39. This quiz is delivered in true/false, multiple choice and very short answer format. Certificates of Achievement in Patents and Secrecy Orders will be furnished to those that score 70% and above.

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