Slot 2

Intellectual Property Rights: Protection, Enforcement and Risks
Matthew Ma, Dorsey & Whitney LLP

Abstract

This course provides attendees with the basic knowledge necessary to understand intellectual property (IP) from both engineering and business perspectives. The syllabus is specially designed for attendees with a non-legal background by reducing complex concepts around IP into easy to understand language. This course aims to help engineers and entrepreneurs properly secure IP rights from their technologies, whether they are involved in academia, corporations or startups. Attendees will learn how to avoid common pitfalls that cause loss of IP rights, develop proper IP strategies to leverage funding for startups, and minimize the risks of IP liabilities, as part of the exit strategy.

The topics include an overview of the patent system, patent reading, patent creation, patent strategy, patent evaluation and valuation, as well as patent licensing and monetization. Special topics including intersections between trade secrets and patent, artificial intelligence (AI) technologies and software patenting, and patent preparation and filing will also be covered. The course will be interactive and hands-on, including lectures combined with discussions on case studies and projects on patent search and analytics using available software tools.

After completing this course, attendees are expected to be able to quickly identify the protected technical content of patents, to determine what IP can and should protect, and to apply proper knowledge and IP strategies to engineering, research, startups or whatever endeavours they pursue.

Bio

Dr. Matthew Ma is a patent attorney at Dorsey & Whitney LLP. He is the author of two intellectual property books “Fundamentals of Patenting and Licensing for Scientists and Engineers (English)” (World Scientific, 2008 and 2015), and “Handbook of Best Practices in Intellectual Property Management (Chinese),” Enterprise Management Publishing, 2011. His practice concentrates on patent drafting and prosecution, trademark registration and counselling, patentability and freedom-to-operate studies, due diligence, and IP licensing. He brings 30 years of experience in technology development, patent drafting and prosecution, intellectual property management and technology licensing.

Before transitioning to the legal profession, Matthew acquired 17 years of industrial experience, including an 11-year tenure at Panasonic Research Company of North America as a senior scientist. He is also the editor of two books: “Mobile Multimedia Processing: Fundamentals, Methods and Applications,” Springer, May 2010, and “Personalization Techniques and Recommender Systems,” World Scientific Publishing Company, 2008. He has published 30 academic conference and journal papers and is an inventor of 14 granted U.S. patents. He is also on the editorial board of the International Journal of Pattern Recognition and Artificial Intelligence. Matthew earned his B.E. in electronics from Tsinghua University, M.S. and Ph.D. in electrical and computer engineering from The State University of New York at Buffalo and Northeastern University, respectively, and his J.D. from Seton Hall University School of Law. He is admitted to the state courts of New Jersey and Pennsylvania, U.S. District Court for the Western District of Pennsylvania, and the United States Patent and Trademark Office.


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