Patents 101 For Engineers and Scientists

Jonathan Kaplan, esq.

January 30, 2004
11 a.m. - 12 noon
Fuller Labs 320

Abstract

This talk answers basic questions about patents that the speaker has found to be of particular concern to engineers and scientists. The three main questions addressed are: What is a patent?, When should you patent?, and How can the option to patent be lost?

Under the topic of "What is a patent?", issues to be addressed include: a review of the basic structure of a patent, a comparison of patents to other forms of IP, and the patenting process.

Under the topic of "When should you patent?", issues to be addressed include: factors by which to judge an invention's importance, typical goals in seeking a patent and considerations in deciding whether to pursue non-US patents.

Under the topic of "How can the option to patent be lost?", issues to be addressed include: US and Non-US legal rules that limit the option to patent and some common "pitfall" business situations in which such rules can become applicable.

Biography

Mr. Kaplan is an independent IP attorney based in New York City specializing in high technology patents. Prior to starting his own practice in 2003, Mr. Kaplan was a partner with a large top-tier IP law firm and he has over 11 years of experience in leveraging his graduate training in electrical engineering and computer science within a legal framework. Mr. Kaplan began his legal career by obtaining substantial experience in IP litigation before deciding to specialize in the non-litigation areas of IP. He currently specializes in strategic patent prosecution, IP counseling, and IP related agreements. He counsels companies in high technology industries, companies using technology in innovative ways and investment firms seeking IP advice or due diligence. He regularly represents clients on both coasts, ranging in size from startups to industry leaders. Current clients include leading companies in integrated circuits, healthcare and financial services.

Before earning a law degree from New York University, Mr. Kaplan pursued graduate research in electrical engineering and computer science at the Massachusetts Institute of Technology, in the Artificial Intelligence Laboratory and the Research Laboratory of Electronics, completing the Master's degree. Mr. Kaplan gained industrial experience, in the area of computer chip design, working for an MIT spin-off company.

Mr. Kaplan is an inventor on three patents, two obtained by MIT for his Master's research in the area of integrated circuit design tools and another patent obtained in high school. He was a national finalist in high school in the Intel (formerly Westinghouse) National Science Talent Search.

Mr. Kaplan is a founding member of the Board of Advisors for the Patent Strategy & Management newsletter, a publication of American Lawyer Media.

Education

J.D., New York University School of Law, 1992
M.S.E.E., Massachusetts Institute of Technology, 1989
B.S.E., University of Pennsylvania, Moore School of Engineering, 1983, summa cum laude, Tau Beta Pi

Bar Admissions, California, New York, U.S.P.T.O

Host

Dr. Michael A. Gennert

Refreshments will be served

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Last modified: Sep 27, 2006, 16:05 EDT