October, 2017

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Patent Pro Bono Program: An Investment in Economically Under-Resourced Communities

Join us on December 12th for a presentation by Grant Corboy, Patent Pro Bono Administrator of the United States Patent and Trademark Office, and Ted Theofrastous, Managing Attorney of the IP Venture Clinic at Case Western Reserve University School of Law, will discuss a relatively new way that attorneys can give back and support their local communities by providing free legal assistance to financially under-resourced inventors and small businesses through the USPTO’s Patent Pro Bono Program.

The Patent Pro Bono Program offers a unique opportunity for patent professionals to provide pro bono assistance, in their area of expertise, in preparing and filing of patent applications.   When Congress enacted the America Invents Act (AIA) in 2011, they did so with an understanding of the nexus between innovation and the U.S. economy. Therefore, participation in the Patent Pro Bono Program not only helps individuals gain access to the patent system, but has the potential to change, for the betterment, the financial circumstance of those individuals that apply.  View the video below to learn about inventor assistance through the Patent Pro Bono Program.

Mr. Corboy will provide background on the USPTO’s Patent Pro Bono Program, and share information on the growth and impact of the Program.  In addition, Mr. Corboy will discuss the challenges associated with pro bono representation in an IP environment.   Mr. Theofrastous will share information on the IP Venture Clinic and the “holistic” approach that his Clinic takes with its applicants, where qualified applicants are not only provided patent prosecution assistance, but law students assist in business formation counseling and help founders reach agreement on key issues prior to formally launching a business.  Mr. Theofrastous will also discuss how IP practitioners can become involved.

*Event registration link to be provided soon!

About the Speakers:

Grant Corboy joined the Office of Enrollment Discipline (OED) as a Patent Attorney in 2016.   As a member of the Patent Pro Bono Team, he is dedicated to making sure that all inventors have access to the patent system, including those who are financially under-resourced.  In addition to his Patent Pro Bono responsibilities, Mr. Corboy also serves as a Staff Attorney investigating discipline and enrollment matters.   Mr. Corboy was a Primary Patent Examiner for the United States Patent and Trademark Office (USPTO) and, prior to joining the USPTO in 2010, he worked for fifteen years in industry as a design engineer, project manager and government contracts manager with DuPont and Lockheed Martin. Mr. Corboy is a member of the Maryland bar, and he is registered to practice before the USPTO.  He graduated, cum laude, from The University of Baltimore School of Law and received a Bachelor of Science in Mechanical Engineering and his Masters of Science in Structural Engineering from the University of Delaware.

Ted Theofrastous is Managing Attorney of the IP Venture Clinic and Distinguished Practitioner-in-Residence at the Case Western Reserve University School of Law.   Mr. Theofrastous has extensive experience in the field of high technology development and commercialization, both as a business architect/manager and as a legal professional. Prior to founding his corporate legal practice and ThetaSquared, a strategic technology commercialization firm, Theofrastous served as managing director and fund counsel for a small family venture fund, where he created and managed a portfolio of new and existing technology startup investments. Before the fund, Theofrastous managed a diverse IP portfolio and launched startup companies for the Cleveland Clinic Foundation designed to commercialize products based on CCF intellectual property. Theofrastous’ roles related to the tech startups he works with typically include business structuring and operational planning, developing an intellectual property strategy, negotiating financial investment and playing an active role as a manager and/or director. Before joining CCF, Theofrastous practiced in the Cleveland and London offices of the law firm of Squire, Sanders & Dempsey L.L.P., where his primary practice focused on the nexus of investment capital and technology. At Squire Sanders and CCF, he handled matters ranging from high tech start-up ventures to multi-billion dollar domestic and off-shore private equity fund offerings. Theofrastous’ business background consists of over twenty years’ working as a technologist, executive and board member to design and implement new and re-engineered products and business systems. Theofrastous also teaches courses in Technology Commercialization & Venture Law at the School of Law and the School of Engineering.

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The Devil Made Me Do It: Lessons Learned in Negotiating License Deals

Join us on November 14th at The Hampton Inn & Suites*, where Steve Gillen of Wood Herron & Evans will discuss lessons he has learned in negotiating license deals.

There is a well-established rule of construction applicable to the judicial interpretation of a contract: “Words in a written contract are to be interpreted according to their common, ordinary, and usual meaning . . . unless manifest absurdity results . . .” Foster Wheeler Enviresponse, Inc. v. Franklin County Convention Facilities Authority, 78 Ohio St. 3d 353 (1997).

Mr. Gillen has, over the course of his nearly 40 years of practice, collected many examples of contract language from a variety of IP licenses and agreements that illustrate the exception better than the rule. He will roll them out for your edification and entertainment.

REGISTER HERE by November 8th at noon.

*This month’s meeting will be held at the Hampton Inn & Suites, which is on Vine Street around the corner from The Cincinnatian.   

 

About the Speaker:

Steve Gillen is a partner at Wood Herron & Evans in Cincinnati, Ohio.  He counsels clients in publishing and entertainment transactions and disputes, Internet issues, advertising law, computer law, copyrights, and related matters. His clients have included publishers, authors, artists, photographers, videographers, independent producers, Internet service providers, multimedia developers, and software programmers from Maine to California. Steve has written and spoken nationally on various publishing and copyright topics and teaches courses in Media Law at the University of Cincinnati. Earlier in his career, Steve served as in-house counsel for a middle market publisher of high school and college educational materials.

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