Intellectual Property Owners Association

Serving the Global Intellectual Property Community


IP Chat Channel


webinarbutton_360 clebutton Passbutton sponsorshipbutton contactbutton

Intellectual Property Owners Association’s weekly
one-hour webinar series on current topics in IP


Registration Fee: $135 per user
Save with an Unlimited Annual Pass
Government/Academic Rates are
available upon written request to

Hosted and produced by
journalist Pamela Sherrid

2017 Scheduled Webinars

Outsourcing Patent Work: Avoiding Pitfalls
Thursday, 16 November, 2:00pm-3:00pm ET

The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and presents its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services, and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

  • Offshoring technical data in disregard of USPTO guidance;
  • Improper fee-splitting;
  • Monitoring suppliers for conflicts of interest;
  • Getting the informed consent of the ultimate client; and
  • Aiding and abetting the unauthorized practice of law.

Our panel includes the head of patent operations at a major multinational who has supervised patent service providers for many years, an India-based executive of a patent services provider, and an attorney who specializes in ethical issues facing IP lawyers and who represents them in disciplinary matters.


  • Mukundan Chakrapani, Clairvolex
  • Michael Gnibus, General Electric Co.
  • Michael McCabe, IP Ethics Law

Functional Claiming After Mastermine Software v. Microsoft
Wednesday, 6 December, 2:00pm- 3:00pm ET

What happens when the Federal Circuit doesn’t follow the guidance of the Supreme Court? It puts patent prosecutors in a tough spot. Consider the Federal Circuit’s recent guidance on functional claiming in Mastermine v. Microsoft, that reversed a lower court’s finding of indefiniteness — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. That decision could provide helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class.

Some experts find it difficult to follow the Federal Circuit’s reasoning that distinguishes Mastermine’s claims as valid, and more fundamentally, worry that the Federal Circuit is disregarding the Supreme Court’s finding in Nautilus (2014) that a patent is indefinite if it doesn’t describe the invention with “reasonable certainty.” Already the PTAB has explained that it believes that the proper test for indefiniteness remains the test outlined by the Federal Circuit in In re Packard, which predates Nautilus. And lately, patent eligibility concerns usually limited to section 101 are cropping up in decisions regarding functional claiming.

Our panel will discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.


  • Charles Beineman, Bejin Bieneman PLC
  • Prof. Dennis Crouch, University of Missouri
  • Scott McKeown, Ropes & Gray LLP