French Client, German Court & You Speak Only English?, AIPPI
French Client, German Court & You Speak Only English?, AIPPI
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.
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| French Client, German Court BEEM.pdf | 123.42 KB |
Implications of Rambus for Antitrust and IP Practitioners
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."
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| Beem, ISBA Rambus REVISED.ppt | 103.5 KB |
The Festo Decision
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.
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| The Festo Decision.pdf | 23.97 KB |
Knorr-Bremse v. Dana (ABA Amicus Brief): Attorney-Client Privilege, Opinions and Willfulness; 2004
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.
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| Knorr-Bremse v. Dana, ABA Amicus Brief, BEEM.pdf | 53.87 KB |
Beem's Summary of Knorr-Bremse v. Dana Oral Argument; Feb. 5, 2004
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.
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| Beem Summary of Knorr-Bremse Oral Argument.pdf | 18.99 KB |
Changes in the Law of Willfulness, Opinions and Privilege
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.
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| Changes Willfulness Opinions Privilege re Knorr-Bremse BEEM.pdf | 246.43 KB |
Federal Circuit Weighs Attorney Client Privilege, Chicago Daily Law Bulletin, 2004
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).
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| Fed. Cir. Weighs Attorney Client Privilege Article Chi DLB BEEM.pdf | 217.58 KB |
Obviousness after KSR –Litigation Perspective, AIPLA Japan Committee
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 KSR decision, including: obviousness, prior art, TSM and appeals.
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| AIPLA Japan mtg DC FINAL 102108.pdf | 174.46 KB |
Double Patenting, In re Basell Poliolefine; AIPLA Japan Committee 2009
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).
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| Beem, Double Patenting AIPLA FINAL 012609.pdf | 92.24 KB |
Japanese translation: Recovering Attorney Fees & Damages When Defending Against Bad Faith Patent Litigation, ILS, 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?
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| Japanese Recovering Atty Fees in Patent Litigation BEEM.pdf | 1.75 MB |
Winning the Patent Battle - A Challenge to Corporate Counsel - Mediation & Dispute Resolution, ABA, 2003
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) reparation for trial (BATNA1) and (3) cost control.
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| winning-the-patent-battle-dispute-resolution-chi-dlb-082603_0-1.pdf | 193.96 KB |
French Client, German Court & You Speak Only English?, AIPPI
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.
| Attachment | Size |
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| French Client, German Court BEEM.pdf | 123.42 KB |
Use of Attorney-Client Privilege in Willful Infringement Case Raises Unique Issues, CBA Record, 2004
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.”
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| Atty-Client Privilege Article CBA Record, BEEM.pdf | 288.73 KB |
Recovering Attorney Fees & Damages When Defending Against Bad Faith Patent Litigation
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.
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| recover-atty-fees-in-patent-litigation-2-97.pdf | 191.53 KB |
Patent Litigation and Abraham Lincoln (AIPLA)
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.
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| Patent Litigation and Abraham Lincoln.pdf | 101.28 KB |
U.S. Patent Prosecution, Perspectives of Examiner and Attorney
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.
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| AIPLA JP Beem_Wentsler US Patent Prosecution.pdf | 702.15 KB |
Developing Business as an IP Attorney, Chicago-Kent 2009
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?”
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| Beem, Chicago-Kent Bus. Development 040109.pdf | 144 KB |
Attorneys seek predictable patent system
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.
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| NLJ Online Beem Paten tSystem 100308.pdf | 23.08 KB |
U.S. Design Patent Practice, AIPPI-MIE Budapest, Hungary
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.
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| US Design Patent Practice, Hungary BEEM.pdf | 435.45 KB |
The Role of Engineers in Creating Intellectual Property, ASME, 2004
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.
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| ASME 032704 FINAL Patent Focus 032404.pdf | 364.57 KB |
Writing Good Invention Disclosures for Obtaining Good Patents
This two-day course was first developed by Beem Patent Law Firm for the U.S. Army and was used by Beem Attorneys for training of Army Scientists and Engineers in 2005 and 2006. It has since been used for workshops and courses with groups of corporate and university scientists and engineers.
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| Writing Good Invention Disclosures.pdf | 30.03 KB |
Preparing the Patent Specification for Filing in the U.S., AIPPI
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.
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| Preparing the Patent Specification for Filing in the United States REV 092908.pdf | 183.87 KB |
Recovering Attorney Fees & Damages When Defending Against Bad Faith Patent Litigation
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.
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| recover-atty-fees-in-patent-litigation-2-97.pdf | 191.53 KB |
Do Patent Prosecution Rules and Practices Lead to Legal and Commercial Uncertainty? AIPPI Forum, Singapore, 2007
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.
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| Patent Uncertainty, Singapore AIPPI, BEEM.pdf | 490.07 KB |