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Optimizing Patents for Licensing and Enforcement: Common Pitfalls and Best Practices

  • 28 Feb 2012
  • 6:00 PM - 7:00 PM
  • Hyatt Regency, 5101 Great America Parkway, Santa Clara, CA


  • Special price for members

Registration is closed


6:00 p.m.-Registration and no-host cocktails; 7:00 p.m.-Dinner and Program


In recent years, a slew of Federal Circuit cases have found patents covering valuable technologies to be invalid, unenforceable, or economically worthless ... because of attorneys’ mistakes in drafting or prosecuting the patents. Joe Yang, an attorney who specializes in patent monetization, will share tips for identifying & avoiding these mistakes, and strategies to optimize patents for licensing and enforcement.


Joseph Yang is a partner at PatentEsque Law Group, LLP, where he specializes in IP-centric deals (patent licensing/sales, technology transactions, JVs, and IP aspects of mergers & acquisitions) and in the use of IP as business assets. He has also been an arbitrator, overseen patent litigation, and led development of corporate patent portfolios. Joe previously served as VP & GC of Cryptography Research, Inc. (now part of Rambus Inc.), helping to develop and monetize a patent portfolio under which 5 billion chips a year are currently being produced by the company’s licensees. He has been named one of the “World’s Leading IP Strategists” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management magazine, and is profiled in “Marquis Who’s Who in American Law.” Joe co-chairs the “Advanced Licensing” and “Advanced Patent Licensing” courses at the Practising Law Institute. He has also been cited by U.S. federal courts and treatises, on patent and licensing law, and has co-taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Before PatentEsque Law Group, Joe co-founded and later led the IP Strategy & Transactions practice in the Palo Alto office of Skadden, Arps, Slate, Meagher & Flom LLP. In his early career, Joe was a research engineer in the aerospace and energy industries. He holds a J.D. from Stanford and a Ph.D. (engineering) from the California Institute of Technology.

DEADLINE FOR RESERVATION OR CANCELLATION: Monday noon, February 27, 2012.  Online registration automatically closes at that time - please make your reservation online (see link above) by the deadline as there are only a few extra spaces allotted at the meeting for walk-ins. The venue may not be able to serve meals beyond the guaranteed number expected for the meeting.

SVIPLA Tax ID#-77-0491659

MCLE: This event will qualify for 1 hour of CLE credit. The Silicon Valley Intellectual Property Law Association is a State Bar of California approved MCLE provider.

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