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Patent Portfolio Management: Best Practices in 2018

Legal CLE

Patent Portfolio Management: Best Practices in 2018

Live Webcast Date: Thursday, June 28, 2018 at 12:00 pm - 1:30 pm (ET)

In this Webcast, a panel of thought leaders and professionals brought together by the Knowledge Group will provide and present to the audience an in-depth analysis of the fundamentals of Patent Portfolio Management. The speakers will help the audience understand the implications of the recent trends and developments in patent portfolio management. They will identify practical tips in implementing an efficient and effective patent portfolio management program. Going beyond the basics, the speakers will also provide the audience with the best practices and strategies to maximize the patent portfolio benefits and opportunities while minimizing risks and legal pitfalls.

Key topics include:

  • Patent Portfolio Management: Practical Tips and Strategies
  • Significant Issues and Trends in 2018
  • Opportunities and Legal Pitfalls
  • Common Risks and Pitfalls
  • What Lies Ahead

Who Should Attend

  • Patent Lawyers
  • Patent Licensing Attorneys
  • Patent Owners
  • Patent Portfolio Managers
  • Private and Public Companies
  • Multinational Companies
  • In-House Counsel
  • Patent Consultants
  • Patent Litigators
  • Heads of Patent, Trademark, Brand Protection & Anti-Counterfeiting


Van Thompson

Van Thompson
Director, Professional Services

Peter A. Nieves

Peter A. Nieves
Head, Patent Law and Intellectual Property and Technology Groups
Sheehan Phinney

Christopher Daley-Watson

Christopher Daley-Watson
Partner, Patent Attorney
Perkins Coie LLP

Click Here to Read Additional Material

Peter A. Nieves
Head, Patent Law and Intellectual Property and Technology Groups

Sheehan Phinney

  • Strategies for decreasing overall international patent portfolio cost by 10-25% by capitalizing on relationships and formatting for multiple countries.
  • How to make an international patent portfolio manageable in cost and minimize surprises.
  • Considerations in determining where to file patents.


Christopher Daley-Watson 
Partner, Patent Attorney

Perkins Coie LLP

  • Use of workflows and/or dashboards to improve the three major considerations in patent portfolio management: 1) quantity, 2) quality, and 3) price.  Considerations, for both small and large companies, include identifying which inventions to pursue (and which to pursue internationally and where), which patent families to keep alive with continuations/divisionals, and which patents to let lapse. 
  • The history and future of patent valuation, and a proposed optimum strategy to pursue valuable patent families worldwide at lower cost.
  • Standards essential patents: changing valuation of SEPs, recent cases, and how to pursue SEPs as an inventor or how to scrutinize SEPs when defending against such patents.
  • Patent, Publish or Private: when publication or trade secrets are preferable over patenting, and how to best publish (e.g. so that your publication is considered by Patent Examiners), or how to best protect trade secrets (e.g. which legal and physical safeguards to protect confidentiality are best).


Van Thompson
Director, Professional Services


  1. Portfolio Composition requirements
    1. What you have vs. what you should have
  2. Patent Quality considerations
    1. Driving quality within your portfolio (invention selection through maintenance/acquisition)
  1. Tool Use vs. Subject Matter Experts (SME’s)
    1. When should you use one vs. the other?
Van Thompson

Van ThompsonDirector, Professional ServicesTechInsights

Van Thompson has worked with TechInsights, an intellectual property services business that works with clients to maximize the value of their patent assets, since 1998. As Director, Professional Services, Mr. Thompson provides leadership to TechInsights’ global team of Principals and Advisors whilst working directly with several clients including external licensing agencies and in-house corporate counsel of leading technology firms. Areas of specialization include patent portfolio management; reverse engineering for competitive intelligence or licensing purposes; and IP due diligence & risk management. He is a Professional Engineer (Ontario) and holds a BSc in Electrical Engineering from Queen’s University.”

Peter A. Nieves

Peter A. NievesHead, Patent Law and Intellectual Property and Technology GroupsSheehan Phinney

Peter’s extensive knowledge and expertise in the area of international patent portfolio management is highly sought after by his peers, and by domestic and international corporations. His unique perspective comes from years of patent prosecution, patent litigation in multiple jurisdictions, handling the IP portion of M&A deals, international IP portfolio management, and building successful patent law practices.  Peter has consistently been named a New England Super Lawyer and a Managing IP Magazine IP Star, recognized in Best Lawyers in America for Patent Law, and received other recognitions, in addition to formerly being an adjunct professor of patent law at UNH School of Law (formerly Franklin Pierce Law Center).  Most treasured, however, are his wife and two daughters, which is why he chooses to maintain his home in New Hampshire.

Christopher Daley-Watson

Christopher Daley-Watson Partner, Patent AttorneyPerkins Coie LLP

Named Seattle "Patent Law Lawyer of the Year” 2018 by Best Lawyers, Christopher Daley-Watson is known for advising companies on patent protection and patent enforcement strategies as well as for transactional counsel during high tech companies’ corporate financings and M&A transactions. His deal counsel includes patent valuation, due diligence, third-party patent analysis and preparation of S-1, merger and patent sale and licensing documents. Christopher has particular practice depth in managing wireless-related patents and patent applications, and he has represented global market leaders on significant acquisitions to preserve market competitiveness. He is the founder and co-chair of the firm’s 5G Industry Group, which includes not only cutting-edge cellular wireless technologies but also Internet of Things technologies.

Course Level:

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

   Basic Knowledge in Intellectual Property Law

Course Code:

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
   1.5 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

For over a quarter-of-a-century, intellectual property teams and outside legal counsel have trusted TechInsights’ Intellectual Property Services to prove patent value and enable sound, fact-based IP decisions. Our Patent and Technology analysts have become an extension of some of the most advanced IP teams including 37 of the top 50 U.S. patent holders. 

By combining deep patent knowledge with the most advanced reverse engineering and technical analysis capabilities in the world we have demonstrated an unrivaled ability to match patents to products and deliver solid evidence of use in advance technology markets.

Our clients use our insights to develop successful IP strategies that optimize the value of their patent portfolio, protect their competitive position, assert their IP or defend their position.

Website: http://www.techinsights.com/

Sheehan Phinney is a full service business law firm representing local, national and international clients with innovative approaches and practical solutions. Founded in 1937, Sheehan Phinney has grown to over 60 attorneys with four offices throughout New Hampshire and Massachusetts and is known for professional excellence, practical counsel and commitment to both its clients and the communities it serves. Sheehan Phinney is the exclusive member in New Hampshire of Lex Mundi, the world’s leading association of premier independent law firms.

Website: http://www.sheehan.com/

Perkins Coie is a leading international law firm that is known for providing high value, strategic solutions and extraordinary client service on matters vital to our clients’ success. With more than 1,000 lawyers in 19 offices across the United States and Asia, we provide a full array of corporate, commercial litigation, intellectual property and regulatory legal advice to a broad range of clients, including many of the world’s most innovative companies and industry leaders. The firm’s IP practice includes more than 250 lawyers focused on IP litigation, post-grant proceedings, patent and trademark prosecution, strategic portfolio counseling, technology licensing, copyrights, and trade secret and unfair competition counseling. The IP practice has extensive experience litigating patent and trademark infringement actions, internet disputes, trade secret, and gray market and anti-counterfeiting claims for companies in the online, biotechnology, medical products and electronics industries. More than 175 of Perkins Coie’s attorneys have degrees in electrical engineering, computer science and life sciences-related fields. Perkins Coie’s clients benefit from its interdisciplinary approach to matters, which combines extensive legal and technical experience with strong corporate and litigation resources in a leading technology law firm.

Website: http://www.perkinscoie.com/

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