Patenting Outside of the U.S.

Spring Course 2017 – Postponed to the fall!

Dates: Monday, June 19th

Time: 6 – 9 pm

Decision date: Monday, June 12, 2017

Early Registration Date deadline: Monday, May 29, 2017

Before Early Registration Date
IEEE Members: $50
Non-members: $60

After Early Registration Date
IEEE Members: $60
Non-members: $70

WHERE: Tufts University, Halligan Hall, Room 209, 161 College Avenue, Medford, MA

Phone 781-245-5405
Fax 781-245-5406

If paying by check, the check must be received before the appropriate dates for Early Registration and Decision Dates.

Make Checks payable and send to:
IEEE Boston Section
One Centre Street, Suite 203
Wakefield, MA 01880

Speaker: Christine Kuta,

Course Overview: Most countries in the world have a patent office where one can apply for protection of inventive ideas. There is, however, no global patent that provides rights everywhere. Operating in the global economy, though, requires some patent protection beyond the U.S. borders. Therefore, understanding the systems and strategies for determining how and where to apply for protection outside the U.S. is critical for operating in the global economy. This class will provide information about systems and strategies for obtaining patent protection outside the U.S.

Description: The class will provide an overview of the laws and requirements, and explain the procedures in obtaining foreign patent rights. International treaties such as the Patent Cooperation Treaty (PCT) will be discussed. The PCT enables the applicant to begin the patent process in most of the world’s countries simultaneously. The European Union (EU) unitary patent, the first multinational patent, and unified patent court will also be discussed. The EU unitary patent and the unified court have been in development for a number of years and is about to launch despite delays caused by Brexit. Foreign filing rights are easy to lose and costs can be difficult to contain, however, the class will also provide some strategies for effective foreign filing in spite of the difficulties.

Target Audience: Engineers in large and small companies with new ideas, inventors, entrepreneurs seeking to develop a patent strategy, anyone interested in learning about patents and how to obtain a patent outside the U.S.

Benefits of attending: Understanding the process and requirements for obtaining a foreign patent; information about how to leverage U.S. patents rights in the foreign application process; understanding the procedures in order to make effective business decisions and contain costs. Course will include handouts including a list of resources.

Course outline:

I. Patents
A. Quick overview of what patents protect and why patent protection should be pursued.
B. High level view of process
C. Foreign filing license

II. Foreign patents
A. Basis for foreign patent protection
B. Representation
C. Differences in the process as compared to U.S.
i. Patent eligibility
ii. Inventorship
iii. Patent Types
iv. Process
v. Fees

III. International applications – i.e., starting the foreign application process in many countries at once
A. Patent Cooperation Treaty
B. Regional applications

IV. The Unitary Patent and Unified Patent Court — new developments in the Old World
A. What it is and how it works
B. Proposed dates of implementation
C. Filing options

V. Protection strategies

VI. A few words about enforcement

Christine Kuta is an Intellectual Property lawyer. Her practice includes Intellectual Property strategy, portfolio development and management, and patent and trademark prosecution, search and opinions. Ms. Kuta counsels clients in a wide variety of technical areas including computer systems and software applications, medical devices, lighting systems, optics, materials and manufacturing processes, complex data management systems, electronics, energy management systems and energy storage including fuel cells, mechanical devices and consumer products including clothing and accessories.