Below is a list of representative publications by Beem attorneys. Download options are available as well.
Rich Beem was a moderator for “Hot Topics in International IP Law and Practice” at the American Bar Association’s 26th Annual Intellectual Property Law Conference, April 6-9, 2011 at the Crystal Gateway Marriott Hotel in Arlington, Virginia. As president of AIPPI-US, he…
At the Alliance for Illinois Manufacturing -IP Seminar on March 29, 2011, Rich spoke on the topic – “What every business manager must know about Patents and Trade Secrets” and Aric Jacover addressed Copyrights and Trademarks. Rich discussed two questions posed by the Alliance: “What do I need to know before launching a new product to avoid infringing on someone else’s intellectual property rights?” and “How do I identify our company’s intellectual property, and how do I protect it in order to maximize profits and prevent others from infringing on our rights?”
Richard Beem presented at the AIPLA IP Practice meeting in Tokyo, Japan on the use of video animation in Markman hearings and patent litigation to AIPLA, AIPPI and Japanese bar associations. April 22, 2010.
Richard Beem and Stephen Wentsler presented at the AIPLA IP Practice in Japan Committee meeting in Washington DC on October 14, 2009, on perspectives of the patent examiner and the patent attorney in U.S. patent prosecution.
Rich Beem on ISBA panel discussing the topic “Rambus is final, where do we go from here?” on September 11, 2009. The panel included ITC representative, corporate executive, antitrust lawyer and patent lawyer speaking to the “Implications of Rambus for Antitrust and IP Practitioners.” Rich concluded with: “Know your patent holdings, take care in standard setting, state your holdings truthfully, honor your commitments, e.g., to grant licenses on certain terms, enforce patents against infringers, and if your company owns and asserts patents, the FTC and your competitors are watching you.”
Rich Beem participated in a panel discussion for students at Chicago-Kent College of Law on “Developing Business as an IP Attorney” on April 1, 2009. The program was sponsored by the school’s Intellectual Property Law Society, along with a group that fosters interaction with Chinese LLM students – most of whom focus on IP law. Joined by Richard Balough, IP solo practitioner, and Mark Partridge of Pattishall, a large IP firm, each attorney spoke to the question “How do you successfully cultivate business for your firm/practice?”
Richard P. Beem presented this at the AIPLA Mid-winter Meeting of the IP Practice in Japan Committee in Miami, FL on January 28, 2009. This presentation is focused on the issue of double patenting, particualrly in the In re Basell Poliolefine, decision by the U.S. Court of Appeals for the Federal Circuit, 2008. This appeal was the culmination of about 35 years of prosecution, interferences and litigations involving multiple claims to the invention of crystalline polypropylene. The presenter (Richard Beem) was one of the attorneys for Phillips Petroleum in a related case United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247 (Fed. Cir. 1989).
Richard P. Beem presented this at the AIPLA Annual Meeting of the IP Practice in Japan Committee in Washington DC on October 21, 2008. This presentation is focused on strategy for prosecution of U.S. patent applications after the KSRdecision, including: obviousness, prior art, TSM and appeals.
Rich Beem speaks out in the October 3, 2008 National Law Journal Online article by Lynne Marek, Staff reporter, http://www.nlj.com, about Chicago attorneys’ efforts to seek a more predictable patent system by drafting a set of local patent rules – aimed at increasing predictability – that could be in use as soon as 2009 in U.S. District Court for Northern Illinois. Patent litigator Richard Beem said that such rules might slow the process and add costs.
First presented by Richard P. Beem at the Association of Intellectual Property Protection International (AIPPI) MIE Budapest International Conference in September 1994, and later revised for the AIPPI Congress in September 2008. In this article, attorneys for applicants who plan to file U.S. patent applications (including those claiming priority based on first filing in another country or based on a PCT application) are advised to prepare a very detailed original specification in order to comply with U.S. requirements.
Written by Richard P. Beem, May 28, 2002, regarding The U.S. Supreme Court Patent Decision In Festo V. Shoketsu, No. 00-1543. This article provides a business-oriented analysis of Festo in the context of the new patent environment.
Subtitled, “The Abraham Lincoln School of Patent Litigation,” first presented by Richard P. Beem to the American Intellectual Property Law Association (AIPLA) at the Annual Meeting in Washington D.C. in October 1998. In this article, the author challenges the assumption that patents are too complex to be understood by the layperson. Agreeing with federal judges who demand simplicity, the author suggests ways to marshal the evidence into simple compelling arguments.
Presented by Richard P. Beem at the International Association for the Protection of Intellectual Property (AIPPI) Forum, Singapore, Oct. 2007 and at the AIPPI-US Annual Meeting, San Francisco, Oct. 2007. The presentation discusses the uncertainty caused by U.S. patent rules and practices, and alternatives and recommendations for dealing with this reality.
First presented Richard P. Beem to the American Society of Mechanical Engineers (ASME) Central Region Administrative Conference, Lexington, KY, March 27, 2004. This presentation addresses engineers as inventors and applicants of patent rights and protection.
Published in the Chicago Daily Law Bulletin, March 1, 2004. Written by Richard P. Beem, Co-Chair, ABA-IPL Committee on Amicus Briefs, a principal author of ABA amicus brief in Knorr-Bremse v. Dana, Appeal No. 01-1357 (argued Feb. 5, 2004, Fed. Cir.) (en banc).
Published by the Chicago Bar Association Record, March 30, 2004. “If you step into a patent infringement suit, you will be entering into an upside down differenct world with respect to the attoreny-client and work product privileges. Practitioners need to understand how these privileges are handled in the patent infringement context.”
Presented by Richard P. Beem at the 48th Annual IP Conference, John Marshall Law School, February 27, 2004. This article addresses the importance of the issue of privilege and includes 10 Predictions of the pending Federal Circuit decision on Knorr-Bremse v. Dana.
As Co-Chair of the American Bar Association (ABA) Intellectual Property Law Committee on Amicus Briefs, Richard P. Beem co-authored the ABA Amicus Brief on Knorr-Bremse v. Dana . The ABA recognized the importance of the issue of privilege presented in Knorr-Bremse by filing an amicus brief in the pending appeal. The ABA’s statement of interest in Knorr-Bremse indicates its longstanding recognition of the importance of the attorney-client relationship.
Beem summarizes oral argument in Knorr-Bremse, reporting on prevailing assumption that Federal Circuit will overruleits precedent imposing an adverse inference of willfulness as a penalty fordefendant’s assertion of the attorney-client privilege.
Presented by Richard P. Beem at the 12th Association of Intellectual Property Protection International (AIPPI)-MIE Conference on Intellectual Property, Budapest, Hungary, Sep. 6, 2003. This presentation addresses preparing and filing U.S. design applications.
Presented by Richard P. Beem at the American Bar Association 2003 Annual Meeting and Published In The Chicago Daily Law Bulletin, Aug. 26, 2003. When patent litigation cannot be avoided, it is necessary to consider three parameters in handling the case: (1) positioning for mediated resolution; (2) preparation for trial (BATNA) and (3) cost control.
First presented by Richard P. Beem to the Association of Intellectual Property Protection International (AIPPI) U.S. Meeting, Washington, D.C., October 1998. Clients often call on American lawyers to conduct international patent litigation. The client typically is American, but with increasing frequency, both the client and the forum are outside the United States. The principles of effective advocacy transcend language, national borders, and legal systems. As a member of an international litigation team, the American lawyer can and should make a substantive contribution through knowledge of the facts, the client, the technology, and the industry. But even more than this, the American lawyer can supply needed skills in the preparation of the case, using the principles of effective advocacy to present a compelling story to the court.
First presented by Richard P. Beem at the 1997 American Intellectual Property Law Association (AIPLA) Annual Meeting in Washington, D.C. in October of 1997. This paper is addressed to companies which believe that they have been accused unjustly in U.S. federal court of infringing a U.S. patent. What can the allegedly infringing company do to defend itself? This paper was translated in Japanese and published in Japan.
Translated in Japanese and published by International Legal Strategy (ILS) Japan in three parts, March 1998, Part 1; April 1998, Part 2, May 1998, Part 3. This article is addressed to companies which believe that they have been accused unjustly infringing a U.S. patent. What can the allegedly infringing company do to defend itself?