Deep Dive into Intellectual Property

About the Deep Dive Series:

The Office for Research and Graduate Education is collaborating with other offices across the college and university to host an ongoing series of webinars and workshops that will take a “deep dive” into topics that impact your day-to-day experience working within the Penn State research ecosystem. We delve into topics that may have been introduced through orientations and diving deep to go beyond the “what” to better explain the “why” and the “how” of different university functions, resources, and the development of your career at Penn State.

Deep Dive into Intellectual Property

This session, relevant to both novice and experienced inventors, included an expert panel of intellectual property attorneys, moderated by the John and Patty Warehime Entrepreneur in Residence. 

Topics included: 

• Distinguishing your inventions from the prior art
• Strategies for establishing non-obviousness
• Options for patenting new intellectual property derived from existing intellectual property
• Filing strategies for technologies with an extended timeframe for commercialization
• The translation of trade secrets from the academic setting
• Second and third generation patent rights and related strategies
• Patent infringement: strategies for ‘policeable’ inventions, detecting putative infringement, admissible evidence, litigation

Special guest panelists included:

Geoff White

Geoffrey White is General Counsel, Chief IP Counsel, and a Director for SilcoTek Corporation, a State College area high-tech materials science company. Before joining SilcoTek, Geoffrey previously practiced as a patent attorney for a 130+ attorney firm, handling patent and other IP matters for startups through multi-billion dollar organizations. He has been named to IAM Strategy 300: The Worlds Leading IP Strategists multiple times, and volunteers his time to a variety organizations, including the Penn State Start-Up Leadership Network.  Geoffrey is involved in wide variety of disciplines, with a balance between his role as an attorney, an IP strategist, and a manufacturing executive. 

Shawn Leppo 

Shawn is a patent attorney and Co-Chair of the McNees Intellectual Property Group.  Shawn’s practice includes advice and counseling on all aspects of intellectual property law, with a focus on patent matters, including patent prosecution, enforcement, licensing, and risk avoidance strategies.  He is involved in portfolio planning and management, evaluating and preparing non-infringement and invalidity opinions, structuring and negotiating patent, trade secret and copyright license agreements, as well as development agreements and assisting with IP aspects of diligence in mergers and acquisitions.  Shawn’s practice is international and he routinely works with an extensive group of foreign counsel around the world to help manage clients’ portfolios worldwide.

Moderator

Maria Spencer, PhD, MBA, John and Patty Warehime Entrepreneur in Residence, College of Agricultural Sciences