The world of patent law is constantly changing. Never more than this year with the enactment of the Leahy-Smith America Invents Act (AIA) of 2011 (formerly known as the “Patent Reform Act of 2011”). The changes that have been ushered in by the AIA will take effect over the 18 months following the enactment on September 16th, 2011. Some of the changes will be seen sooner and a few have already been applied. While many seminars and meetings have been and will be held to discuss the changes, the goal of this presentation is to provide practical tips and suggestions for how to deal with the changes that have already taken effect and how to prepare to handle the changes that will be implemented over the course of the transition period.

A panel of practitioners has been assembled to provide insight and information to inventors, leaders of companies and patent practitioners and to facilitate a discussion between the panel and the audience of ways in which the changes will affect how inventions are protected and the manner in which inventors and companies should seek such protection.

Dr. Charles N. Pateros has been with ViaSat, Inc. in Carlsbad, CA since 1993.   As the corporate patent manager, he focuses on the generation and prosecution of patent applications.  Chuck works closely with his fellow engineers across a wide range of technologies from high frequency RF circuits to network protocols, etc.  Dr. Pateros also has provided both technical and program management for commercial and military programs involving digital signal processing and modem development/production.  His Ph.D. (1993, Rensselaer Polytechnic Institute, Troy, NY) involved the invention and development of a multiple access digital receiver.  Dr. Pateros is the Chair of the Electrical Engineering Advisory Board and is also a member of the Engineering Advisory Board at the University of San Diego, where he teaches when time permits.  He is registered to practice before the United States Patent and Trademark Office and has a number of patents.

Ray Hom
VP, Patent Counsel, Qualcomm

Rich Kim is a partner in the San Diego office of Morrison & Foerster LLP where he heads up the Electronics, Software and Telecommunications (EST) patent group.  Mr. Kim’s practice focuses on patent procurement and counseling, patent reexaminations, and intellectual property litigation.  Mr. Kim has assisted clients, including start-ups and established corporations, in procuring patents and developing patent portfolio strategies in a variety of technologies, including electronic devices, computer hardware and software, telecommunications and medical devices.  Mr. Kim also has extensive experience representing both requesters and patent owners in ex parte and inter partes reexamination proceedings before the USPTO.  Mr. Kim also represents clients in patent litigation matters. He was part of the team that successfully represented Echostar Communications Corp. against Gemstar/TV Guide in one of the largest ITC cases ever filed.  He was also part of the litigation team that assisted Nikon in its dispute against ASML and Carl Zeiss, in which the defendants agreed to pay $145 million to Nikon to settle the case.   Mr. Kim is admitted to the U.S. District Courts in the Southern, Central, and Northern Districts of California, as well as the U.S. Court of Appeals for the Federal Circuit.  He was recently selected by his peers to be included in the 2012 editions of The Best Lawyers in America and Southern California’s Best Lawyers in the area of patent litigation.

Mr. Greenhaus is currently Vice President, Chief Patent Counsel for Entropic Communications, Inc., a company that designs and manufactures integrated circuits for high speed home entertainment networking.  Mr. Greenhaus has been with Entropic since Dec. of 2007.  He is also an adjunct professor with Thomas Jefferson School of Law.    He is formerly Vice President, Patent Counsel for Qualcomm Incorporated.  His has had careers as an electrical engineer, private law firm practitioner and in-house counsel.  Mr. Greenhaus graduated from the State University of New York at Stony Brook in 1983 with a Bachelor of Electrical Engineering degree. During his senior year he worked full time designing circuits for detection of failures and redundancy switching in satellite earth station equipment.  After graduating, he spent another six years designing phase lock loops and filters for receivers, synthesizers, aircraft transponders, secondary radar, and equipment used to receive and transmit radio frequency signals between satellites and satellite earth stations.  He culminated his career as a project engineer leading an engineering team that was responsible for designing and installing one of the largest satellite earth stations in Europe.  Mr. Greenhaus subsequently attended Hofstra University School of Law while working as a consultant for Satellite Transmission Systems, a subsidiary of California Microwave.  During law school, Mr. Greenhaus was an author for, and Editor of, the Hofstra Property Law Journal and was awarded the “Gina Maria Escarce Memorial Award” for contributing to the understanding of complex legal issues.  Mr. Greenhaus has been practicing patent law in San Diego since 1991 as an associate with Spensley Horn Jubas & Lubitz and, subsequently, in 1995, with Baker, Maxham, Jester, & Meador.  As a private practitioner, he represented clients in various technologies including cordless telephones, radar systems for automobiles, trucks and buses, ophthalmic laser surgery, and blood analyzers. Mr. Greenhaus joined Qualcomm in 1997.

Questions? Contact Michele Yoshioka at michele@commnexus.org