Advanced Patent Valuation

Advanced Patent Valuation 

About the Course:

This course dissects patents in order to ascertain their ability to withstand invalidity challenges, exclude others from practicing the art described in the patents as well as to determine their licensability.

Among the issues addressed in this course are:

o  Claims Analysis
        o  Why do seminal studies suggest that the number of independent claims is the single most telling indicator of patent value
        o  Getting the mix of independent and dependent claims right
        o  Balancing broad versus narrow claims


  • Assessing the Rigor of Patent Prosecution
          o   When is a long prosecution history indicative of patent quality
          o   Interpreting the impact of office actions on patent strength
          o   Determining risks of inequitable conduct
  • Citation Analysis
          o   How do you measure the quality of one patent’s citations against the citations of another patent
          o   When might examiner citations be more valuable than applicant citations
          o   Are self-citations sound indicators of patent quality
  • Other Patent Analysis Issues
          o   Is it better to have more patents each with fewer claims or fewer patents each with more claims
          o   Selecting and defining the most appropriate terms
          o   Impact of continuation filings on patent family value
          o   Do patents filed in more (foreign) jurisdictions have more value that patents filed in a single jurisdiction
          o   How do drawings impact patent value
          o   Are patents that contain more classifications more valuable that those that contain fewer classifications
          o   How do you determine how well the terms used in the descriptions sync up with the terms used in the claims
          o   How does the number of inventors listed on a patent impact invalidity risks
          o   How do you measure the risks and extent of possible patent value deterioration due to re-exam
          o   How do you determine the quality of the examiner and the impact of the examiner on patent strength

About the Instructors:

Lynda L. Calderone, Shareholder and Chair, Intellectual Property Group, Flaster/Greenberg

Ms. Calderone has extensive experience in the preparation and prosecution of U.S. patent applications as well as intellectual property litigation. Ms. Calderone serves a wide range of clients in U.S. and foreign patent prosecution, appeals before the Board of Patent Appeals and Interferences, U.S. reexamination and interference practice and European opposition practice.

Paul L. Hickman, A.B., BSEE, JD, CPVA, Partner, Technology & Intellectual Property Strategies Group PC

Paul L. Hickman, A.B., BSEE, JD, CPVA founded the technology law firm of Technology & Intellectual Property Strategies Group PC (dba TIPS Group) in 2006. His practice includes patent and trademark prosecution and IP counseling, licensing and litigation. He obtained his A.B. degree from Stanford University, his B.S.E.E. degree from San Jose State University, his J.D. degree from Santa Clara University School of Law and his Certified Patent Valuation Analyst (CPVA) designation from The Business Development Academy.  Mr. Hickman served as President of Silicon Valley Intellectual Property Law Association (SVIPLA) from 2002‑2003, was an Adjunct Professor of IP Law at Peninsula University School of Law from 1986‑1999 and was an Instructor of IP Law at Santa Clara University Institute for Paralegal Studies from 1987‑1998.

Joel H. Bootzin, Partner,  Beem Patent Law

Joel H. Bootzin has had a broad-based intellectual property law practice for over 15 years. He manages U.S. and global patent portfolios for clients of all sizes, and he assists with the development of their worldwide patenting strategies. In addition, Mr. Bootzin counsels clients on avoiding patent infringement, working closely with client product development teams to provide opinions and suggest design-arounds. He also analyzes intellectual property portfolios for due diligence of potential merger, acquisition, or licensing targets.

Course Length: Approx. 3.5 hours