The recently passed America Invents Act is a very important piece of patent reform. The July 11th webinar will look at what it changes for leading up to and including filing for entrepreneurs and technology transfer professionals. The panel will consist of Henry Wixon, chief counsel to the National Institutes of Standards and Technology, David Orange, patent attorney and editor of “Great Patents,” a book on patent strategy for small and medium businesses, and Janet Gongola, the United States Patent and Trademark Office's Patent Reform Coordinator, and a former USPTO associate solicitor. Specific topics include: first inventor to file changes; micro-entity status and other fee changes; new oath or declaration requirements; the pro bono program; and the small business patent ombudsman. The panelists will discuss the changes and strategies for getting the most out of patent applications, such as deciding between provisional and non-provisional patent applications.
ABOUT THE WEBINAR SERIES:
The focus of this Webinar series is to help bridge the knowledge gap on Intellectual Property Law Issues between the US Government and various stakeholders in the “University-Based Startups Innovation Ecosystem”. A key attribute that make this webinar series unique from other programmatic endeavors is the ability to directly deliver “Thought Leaders” in the field who will address various IP issues from an applied, pragmatic, and deeply experienced viewpoint. Through participation in this webinar program, the audience will be afforded both the opportunity to understand and retain best practices when deriving appropriate IP-Strategic Frameworks coupled with Business and Technology Development, as well as gain access to a much more comprehensive and holistic viewpoint on why Intellectual Property Law is such an important economic tool in the “Entrepreneur’s Toolkit”.
ABOUT THE PRESENTERS:
David Orange Vice-Chair, MIT Enterprise Forum of Washington Patent Attorney with Sterne, Kessler, Goldstein & Fox
David Orange is a Washington, DC based patent attorney with Sterne, Kessler, Goldstein & Fox. His technical background is in electrical engineering, where he performed research in academic and industrial labs. David is active in the startup space, as an investor, on advisory boards, and previously as in-house counsel. He is the Vice Chair of the MIT Enterprise Forum of Washington and serves as a commercialization grant reviewer for the National Science Foundation's Small Business Innovation Research Awards. He received his BSEE, JD and LLM from the University of Washington, and interned for the Hon. Judge Randall R. Rader of the Federal Circuit in law school.
Janet Gongola Reform Coordinator, United States Patent and Trademark Office
Janet Gongola is the Patent Reform Coordinator at the U.S. Patent and Trademark Office (USPTO). In this capacity, she manages all aspects of the agency’s implementation of the America Invents Act. Ms. Gongola has been an Associate Solicitor in the Office of the Solicitor at the USPTO where she provided legal advice to agency officials and defended decisions of the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board before the U.S. Court of Appeals for the Federal Circuit as well as district courts across the country.
Before joining the USPTO, Ms. Gongola served as a law clerk for Chief Judge Paul R. Michel at the Federal Circuit and for Chief Judge Sue L. Robinson in the U.S. District Court for the District of Delaware. Ms. Gongola previously worked as a patent attorney, patent agent, and research chemist at Eli Lilly and Company in Indianapolis, Indiana.
Ms. Gongola graduated summa cum laude with a J.D. from Indiana University School of Law—Indianapolis, and she received B.S. degrees in Chemistry and Mathematics from Muskingum University.
Ms. Gongola is an officer of the Giles S. Rich American Inn of Court. She has served as an adjunct professor at the George Mason University School of Law and currently teaches at the George Washington University Law School.
Hiram Bernstein Senior Legal Advisor, Office of Patent Legal Administration United States Patent and Trademark Office
Hiram Bernstein is currently a Senior Legal Advisor in the Office of Patent Legal Administration under the Associate Commissioner for Patent Examination Policy. Mr. Bernstein has served as a Primary Examiner in the areas of single crystals, distillation, and food technology. He was appointed a Special Program Examiner to review Rule 56 duty of disclosure violations. Mr. Bernstein has worked on rulemaking, changes to the Manuel of Patent Examination (MPEP), and a variety of petitions, including access, inventorship, and reissue matters in applications, real party in interest, and attorney conflict in reexaminations, and petitions for waiver and for matters not provided for by the rules of practice. He is now working extensively on rulemaking, including the new statutory changes brought about by the Leahy-Smith America Invents Act, and implementing the Federal Circuit’s Theresense decision relating to the duty of disclosure. Mr. Bernstein is an instructor for the Patent Law & Evidence class given to examiners and has drafted and reviewed questions for both the examiner certification exam and the practitioner’s exam.
Mr. Bernstein has numerous awards including: a Department of Commerce Silver Medal for his past work in rulemaking; two Department of Commerce Bronze Medal awards, one for handling sensitive matters, and one for working on MPEP revisions; and a Distinguished Career Award for at least 10 years of outstanding service.
Mr. Bernstein is a member of the Commonwealth of Virginia Bar, the District of Columbia Bar, and the Maryland State Bar. Mr. Bernstein holds a J.D. from the George Mason University School of Law where he was appointed Managing Editor of the Law Review, and a Bachelor of Chemical Engineering degree from the City College of New York.
ABOUT THE MODERATOR:
Henry Wixon Chief Counsel, National Institute of Standards and Technology
Henry Wixon is Chief Counsel for the National Institute of Standards and Technology (NIST) of the U.S. Department of Commerce. Prior to joining NIST, he was a Partner with the law firm of Wilmer Cutler Pickering Hale and Dorr LLP in Washington, DC.In over twenty years in private practice as a registered patent attorney and intellectual property specialist, Mr. Wixon developed and implemented worldwide patent defense and enforcement strategies for domestic and international clients, coordinating the efforts of counsel in multiple European countries and Japan. He conducted intellectual property due diligence and valuation analyses in connection with venture capital funding, mergers and acquisitions and IPOs.
With extensive experience in technology transfer, Mr. Wixon worked cooperatively with and between private and public laboratories, universities, corporations and government agencies, including the negotiation of patent and know how licenses, cooperative research and development agreements, employment contracts, and confidentiality agreements.
Mr. Wixon was "highly recommended" in the 2006/07 and 2007/08 editions of the PLC Cross-border Life Sciences Handbook in the USA Patent Counseling category. Mr. Wixon is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, several U.S. district courts, and the courts of Maryland and the District of Columbia. He is a Certified Licensing Professional.
Mr. Wixon was awarded his J.D. degree from George Washington University, where he was a member of The George Washington Law Review. He holds a B.S. degree in zoology with a minor in chemistry and a M.S. degree in neuropharmacology from the University of Maryland, College Park. Mr. Wixon is Immediate Past Chair and current Education Chair of the Maryland Chapter of the Licensing Executives Society, USA and Canada (LES). He has been a member of the LES Professional Development Series (PDS) Faculty for many years, teaching fundamental, intermediate and advanced PDS courses.
In his community, Mr. Wixon chairs the Board of Visitors of the University of Maryland College of Chemical and Life Sciences, and is a member of the Life Science Advisory Board of George Mason University. He is also Chair of the Board of the Patriots Technology Training Center. Based inside the Capital Beltway in Seat Pleasant, Maryland, Patriots is a non-profit foundation committed to generating interest, enhancing skills, promoting technology-related careers and preparing youth for successful futures. Mr. Wixon was founding Chair of the Board of the Chesapeake Bioscience Education Foundation, a non-profit formed to promote and encourage education in math and science for K-16 students in the Mid-Atlantic region, and is a past member of the Board of the Virginia Biotechnology Association.
VIEW PREVIOUS WEBINARS IN THIS SERIES:
To view video recordings and download presentation slides, please click on the links below.
All webinars listed below are scheduled from 1:00-2:30 pm ET. For changes in schedules and other announcements, please visit the series website.
August 8 – The 411 on Other Forms of Intellectual Property Topics: Trade secrets, trademarks, copyrights
September 12 – Researcher’s Life After Invention Disclosure Topics: Working with university TTOs, agreements, within the context of AIA
October 10 – Working with the USPTO: Selecting the Right Legal Advocates Topics: Working with the right TT Officer and law firm, addressing the documents needed for a proper application submission, drafting proper specification/drawings/claims, effective use of interview, understanding a final and non-final rejection
November 14: Patent Trial and Appeal Board & The Higher Courts Topics: Post-final rejection, post-grant review, appeal process, interpartes re-exam
December 12 – Protecting IP in Global Markets Understanding a PCT, international issues on IP procurement, markets and competitors
January 9, 2013 - Picking the Right Global Markets Topics: To where and how do I export? What programs are out there to help?
IMPORTANT INFORMATION FOR ATTENDEES:
WEBINAR SCHEDULE: This webinar series is scheduled every 2nd Wednesday of the month. Changes in schedules or topics will be posted on this page and sent to you through email.
WEBINAR DURATION: Each session is a 90-minute webinar with 60 minutes of presentation and 30 minutes of Q&A.
COST:Free, but registration required by clicking on the Register button above. Your registration is valid for all webinars in this series
HOW TO PARTICIPATE?: This webinar is online. You need a computer with web access for the visual/audio. You may also dial-in using the audio-only telephone number. The call in details and instructions on how to join the webinar will be sent to you via email after you register. Once registered to the webinar you will receive a reminder email 24 hours before the start of the webinar with instructions on how to join.
QUESTIONS TO SPEAKERS: Q&A is conducted by a chat box to the speakers.
WHO SHOULD PARTICIPATE IN THE WEBINAR?:National and international media, federal and state government officials, venture capitalists, angel investors, Global 1000 companies, industry representatives, university officials, entrepreneurs, tech transfer professionals, students, and university faculty and staff.
SLIDES AND VIDEO: The slide presentations and video recording will be available on this page. If you are unable to join the live webinar, you may view the recorded video that will be posted within 24 hours after the scheduled webinar ends.
For questions or more information, please email us at