Global Patent Prosecution: Leading Lawyers on Developing a Strategy for Foreign Patents, Making Filing Decisions, and Understanding the Challenges of Overseas Protection (Inside the Minds)

Global Patent Prosecution is an authoritative, insider's perspective on developing a global patent strategy in order to effectively manage intellectual property. Featuring partners and shareholders from some of the nation's leading law firms, these experts guide the reader through the complex cost-benefit analysis required when determining where and how to file in foreign jurisdictions. These top lawyers demonstrate the importance of evaluating the business needs of the company, the potential for enforcement, the costs associated with effective protection, and the potential return on investment for foreign filings. From understanding the differences between U.S. and foreign patent laws to weighing the pros and cons of regional patents and PCT filings, these authors explain important concepts for the client and attorney to consider when developing a global patent strategy. Additionally, these leaders offer tips on how to avoid common mistakes that can harm future enforcement and outline strategies for coordinating international prosecution efforts, including establishing effective relationships with local counsel. The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today, as these experienced attorneys offer up their thoughts around the keys to navigating this complex and ever-evolving area of law.

Inside the Minds provides readers with proven business intelligence from C-Level executives (Chairman, CEO, CFO, CMO, Partner) from the world's most respected companies nationwide, rather than third-party accounts from unknown authors and analysts. Each chapter is comparable to an essay/thought leadership piece and is a future-oriented look at where an industry, profession or topic is headed and the most important issues for the future. Through an exhaustive selection process, each author was hand-picked by the Inside the Minds editorial board to author a chapter for this book.

Chapters Include:

1. Wayne O. Stacy, Partner, Cooley Godward Kronish LLP Understanding the Value of Foreign Patent Protection as a Business Asset in a Changing Marketplace

2. Gregory A. Nelson, Shareholder and Chair of the Intellectual Property Practice Group, Akerman Senterfitt Understanding the Unique Issues of Protecting Intellectual Property Internationally

3. Doreen Yatko Trujillo, Member, Cozen O Connor PC The Attorney s Role in Prosecuting Patents Internationally

4. Stephen J. Driscoll, Partner, Saul Ewing LLP Foreign Patent Filing: A Pragmatic View

5. Valerie K. Friedrich Ph.D., Partner, Baker & McKenzie LLP Creating a Cost-Effective Foreign Patent Strategy

6. Douglas C. Doskocil, Partner, Goodwin Procter LLP Strategies for Successful Global Patent Prosecution

7. Brian J. Colandreo, Partner and Boston Patent Practice Leader, Holland & Knight LLP Successfully Managing a Global Patent Portfolio

8. Daniel N. Yannuzzi, Partner, Sheppard, Mullin, Richter & Hampton LLP Developing a Foreign Filing Strategy

Appendices Include:

Appendix A: Contracting States to the Patent Cooperation Treaty

Appendix B: Non-Contracting States to the Patent Cooperation Treaty

Appendix C: WIPO Overview of the Patenting Process Using the PCT System

Appendix D: Invention Management Diagram

Appendix E: Representative Estimates for National Stage Filing and Annuities