The Evolving Patent Law Landscape and its Effect on 5G Innovation

Date: Monday July 9
4:30 – 6:30

Abstract:  In this panel session, local and national experts will discuss recent developments in patent law and their effects on innovative activities of our members and their companies.  The panel will cover inventors’ ability to obtain patents, to defend them once issued, to use them or license them in order to protect products or revenue streams in the market, and companies’ tools for defending against patent infringement assertions.

Scope:  Topics include: the use of Inter Partes Review (IPR) proceedings at the Patent Office for invalidating patents; the effects of these proceedings on patent rights and “freedom to operate;” the recent Supreme Court decision in Oil States, narrowly upholding the constitutionality of IPRs; the implications of that Court’s holding that a patent is a government-granted “franchise;” and the Court’s leaving open potential constitutional challenges based on the 5th Amendment “due process” and “taking” clause.

The narrowing field of patent-eligible subject matter — patent protection challenges for computer-implemented inventions after the Supreme Court decision in Alice; patent claiming strategies and implications for prosecuting computer-implemented patent applications.

The new direction at the US Patent Office set by Director Andre Iancu; recently-proposed Patent Trial and Appeal Board (PTAB) rules changing the claim construction standards the PTAB uses from the Broadest Reasonable Interpretation (BRI) to the standard used in federal courts; and the new Patent Office examination guidance for determining patent-eligibility under Section 101 of the Patent Act.

Practical insights into filing and prosecuting patent applications; various strategies for protecting patent rights when forging strategic partnerships or licensing relationships.

Panel Chair/Moderator:

Dr. Ron D. Katznelson, President, Bi-Level Technologies, Encinitas, CA; Vice Chair for Patents, Intellectual Property Committee of IEEE-USA.


Gregory A. Hopewell, Fenwick & West LLP, Mountain View, CA. [To be confirmed].

Keith D. Grzelak, Wells St. John PS, member and past Chair of the IP Committee of IEEE-USA.

Intended audience: Inventors, technology developers, engineering managers, IP portfolio managers, patent practitioners, licensing executives and specialists, technology transfer managers, venture capitalists, investors, and risk management officers.