Patent Law 101

Jason Balich | Wolf, Greenfield & Sacks, P.C

Jason Balich is a trial and appellate lawyer who protects clients’ technology and defends their freedom to use it. Jason’s experience includes successfully defending multiple patent owners—from manufacturers to public universities—facing inter partes review challenges at the Patent Trial and Appeal Board (PTAB) where the PTAB denied institution. He also focuses his practice on trade secrets. For instance, he has represented a plaintiff seeking to protect its trade secrets and a patent owner looking to stop a competitor’s infringement. In addition, Jason regularly represents defendants in patent and commercial litigation, including Hatch-Waxman ANDA litigation, before district courts and at the International Trade Commission. Jason’s counseling and litigation experience spans a diverse set of industries including pharmaceuticals, biotechnology, medical devices, data storage media, electro-hydraulic devices, military equipment, and consumer electronics. Jason studied engineering at Princeton and is the co-inventor of four US patents as a product development engineer for 3M.

Arden Bonzo | Wolf, Greenfield & Sacks, P.C

Arden Bonzo is a patent litigator with experience supporting case with everything from preparation of litigation documents to case research. She serves clients in a variety of sectors, including the electrical and biotechnology industries. While in law school, Arden participated in the Boston College Civil Litigation Clinic and the Boston College Entrepreneurship and Innovation Clinic (EIC). Prior to law school, Arden studied industrial engineering and received a master’s degree in science, technology, and public policy from Rochester Institute of Technology.

Session I – Why Patents, What Can Be Protected, and How | 2:00pm – 3:00pm

• Why patents?
  • An overview of IP rights
  • How patents fit into a comprehensive IP portfolio
  • Choosing patent or trade secret protection
• Source of patent law: U.S. Constitution, the U.S. Patent Act, case law
• What can be patented?
  • Patent eligibility
  • Novelty
  • Non-obviousness
• How patents are obtained?
  • Preparing a patent application
  • Examination at the USPTO

Break | 3:00pm – 3:10pm

Session II – Enforcing Patent Rights & Defending Against Enforcement Actions | 3:10pm – 4:10pm

• Monetizing IP and litigation funding
• Patent infringement
  • Direct, induced, and contributary
  • Literal and the doctrine of equivalents
• Defenses against patent infringement
  • Non-infringement
  • Invalidity
  • Unenforceability
• Forums: district courts, the USPTO, the International Trade Commission (ITC)