Patenting Skills

Joe Mariconda is a registered patent agent (CIPO and USPTO), and is a licensed professional engineer (P. Eng., Ontario).

Joe worked in the patent departments of manufacturers (IBM and HUSKY); he has deep and extensive experience with preparing and prosecuting an extensive number of patent applications in the mechanical, electrical/electronics, and software arts, with a reach extending to patent offices worldwide. He has attended many ongoing patent training courses.

Joe completed a B.A.Sc. (electrical engineering) at the University of Toronto. He has extensive technical knowledge and experience in technology for testing, measuring and analyzing electrical, electronic, vibration and acoustic phenomenon, and technology for monitoring and controlling automotive traffic movements. As well, he graduated with a certificate in technical writing, and has worked as a technical writer.

Joe is intimately familiar with the best practices for patenting strategies and tactics used by large corporations having extensive patent portfolios.

Joe looks forward to collaborating with you on your journey to building your patent portfolio. Send him a note at gem.patent.services@gmail.com

The Canadian Intellectual Property Office (CIPO) recently launched the 2017 IP Canada Report.

This report contains the most recent statistics and information that will help businesses and innovators identify opportunities to help grow their business and increase their global competitiveness. It sheds light on the changes and the trends in the use of intellectual property by Canadians both domestically and abroad.

The report also contains a preview on patenting in space technologies, to provide intelligence and allow for a better understanding of potential areas of further innovation and collaboration.

Get the complete picture by reading the 2017 IP Canada Report.

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04333.html

https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/IP_Canada_Report_2017_en.pdf/$file/IP_Canada_Report_2017_en.pdf

Formal Education

University of Toronto (1982): Bachelor of Applied Science degree (B.A.Sc. electrical engineering).

Humber College (1997): a certificate in technical writing.

Professional Designations

Professional Engineer (P. Eng.): Professional Engineers Ontario (PEO)

Registered CIPO (Canadian) Patent Agent

Registered USPTO Patent Agent

Professional Patent Training received by Joe:

Webinars:

Top Patent Law Stories of 2017 (January 2018)

Advanced Guide to Patenting in Japan (November 2017)

The Ubiquitous Problem of Inherency in Obviousness (November 2017).

Presenting Alice-Friendly Patent Claims (October 2017).

Patent Analytics: Trends, Reality and Avoiding Rejections (September 2017).

Understanding AIA 102: Prior Art Exceptions and Declaration Practice (August 2017).

Post-Grant for Practitioners: Choosing Whether to Challenge a Patent at the PTAB (July 2016).

Running an Effective Invention Disclosure & Patenting Program (July 2016).

Institution of Covered Business Method Patent Reviews (July 2016).

Evolving 5 W's of Global IP Enforcement (AUG 2017).

CIPO Patents - General Correspondence Webinar (JUNE 2017).

Who Owns the World's Patents? (June 2017).

The Difficulties of Being Obvious: Practical Advice for Overcoming Obviousness Rejections (June 2017).

Docketing Excellence (June 2017).

Strategic patent portfolio decision-making (June 2017).

There’s No Place Like Home for Patent Infringement Actions (May 2017).

The Scope of AIA's Estoppel Provision (May 2017).

Nuances of North American Patent Law (April 2017).

After Final Patent Prosecution Strategy (January 2017).

Implications of CLS Bank Int'l v. Alice Corp. on Computer-Implemented Inventions, 2013 - MBHB

On May 10, 2013, the Federal Circuit handed down the much-anticipated en banc decision in CLS Bank Int'l v. Alice Corp. regarding the patent eligibility of computer-implemented inventions under 35 U.S.C. § 101. In the Per Curium opinion, the Federal Circuit affirmed the district court's holding that all of the computer-implemented claims at issue were not directed to patent eligible subject matter under 35 U.S.C. § 101. However, the Federal Circuit was unable to reach a consensus on a framework for evaluating the patent eligibility of computer-implemented inventions going forward, and thus there was no majority opinion to support this affirmance. As a result, it is unclear what impact this decision will have on the PTO and the courts as they assess the patent eligibility of these types of claims under 35 U.S.C. § 101.

Invention Analysis and Claiming, 2013 and 2012 - Slusky Seminars

This course teaches a comprehensive approach for analyzing inventions and capturing them in a sophisticated set of patent claims. The practitioner’s first task is to identify the invention—the broad inventive concept underlying the embodiments—and only then to undertake to draft the claims. So although we will be drafting claims, this isn’t a claim-drafting course per se. The focus is on claiming strategies based on our analysis of the invention and its fallback features.

Inventive Problem Solving, 2011 - PRQ Group

This course teaches the concepts of TRIZ, a problem-solving, analysis and forecasting tool. This tool was derived from the study of patterns of invention in the global patent literature". It was developed by Genrich Altshuller. Following Altshuller's insight, the theory developed on a foundation of extensive research covering hundreds of thousands of inventions across many different fields to produce a theory which defines generalizable patterns in the nature of inventive solutions and the distinguishing characteristics of the problems that these inventions have overcome.

Drafting Patents For Multiple Jurisdictions, 2011 - Patent Resources Group

This course teaches an approach to preparing patent applications for filing in the USPTO, EPO and other patent offices, using a common denominator approach.

Problem Solving and Decision Making, 2009 - Kepner Tregoe (KT)

This course teaches the Kepner-Tregoe Problem Solving and Decision Making (PSDM) method. The analysis helps the practitioner make sound decisions. It provides a process to identify and sort all the issues surrounding a decision. As a troubleshooting tool, the Analysis helps prevent jumping to conclusions. The Analysis leverages the combined knowledge, experience, intuition, and judgment of a team, resulting in faster and better decisions. The Analysis is a problem solving and decision making framework. The Analysis process divides decision-making into five steps:
(1) define the problem, (2) describe the problem, (3) establish possible causes, (4) test the most probable cause, and (5) verify the true cause.

Prior Art Search Strategy, 2008 - Patent Resources Group

This course comprehensively teaches how to conduct a professional patent search. It provides direction for determining when a search is needed and what types and sources of information should be searched in the process. Patent searching is both an art and a science. Consequently, search capability improves with practice. But optimum practice requires a solid foundation for those who seek to conduct searches accurately and efficiently. The course teaches when, how, where, and why to conduct a search and is appropriate for those who will conduct the search or commission it.

Patent Strategy, 2007 - Patent Resources Group

This course explores the dynamics behind creating, acquiring, advancing and defending patentable assets. These dynamics are central to winning the competition for ideas and relationships through which companies derive successful products. The Patent Strategy course puts patentable assets, the core value of technology companies, at the center of a broader business and legal strategy discussion.

PCT Patent Seminar, 2007 - University of Ottawa

This course teaches the PCT (Patent Cooperation treaty) procedure as well as the numerous options and safeguards available for applications filed under the PCT. The course enumerates procedures and strategies designed to obtain patent protection for inventions in multiple countries through the filing of a single international application under the Patent Cooperation Treaty. While a basic working knowledge of the PCT is useful when taking this course, it will prove valuable to both new and experienced users of the PCT.

Patent Strategies, 2006

This course provides a detailed overview of effective corporate portfolio development and management systems, from invention capture to foreign filing and maintenance fee decisions. In-house patent counsel and other professionals responsible for designing, implementing and/or managing systems for capturing, reviewing and evaluating inventions and patents will gain practical knowledge that will aid in the designing or revising of their own corporate systems.

Inventive Problem Solving, 2006 - PRQ Group

Federal Circuit Review, 2005 - Patent Resources Group

This course discusses the US Federal Circuit’s patent opinions during the past years.

Patent Validity & Infringement Opinions, 2005 - Patent Resources Group

This course teaches the preparation of opinions relating to patentability (and scope of protection during prosecution), freedom to operate, validity/invalidity and infringement or non-infringement. Each of these opinion forms has, as its basic purpose, to provide the client with a practitioner's analysis of the scope of rights and limitations on those rights accorded both existing patents and pending applications.

Patent Drafting & Amendments, 2004 - Patent Law Institute

This course teaches hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, participants receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls.

Advanced Patent Drafting, 2003 - Patent Resources Group

This course is for practitioners who prepare and prosecute patent applications. The focus is on a series of cases where the patent owner lost, not because of what the litigators did, but because of how the patent practitioners drafted and prosecuted the application. The course teaches how to write provisional applications and draft and prosecute non-provisional patent applications to avoid the pitfalls.

Patent Agent Training Course, 2002 - Intellectual Property Institute of Canada

Patent Law Course, 2001 - Intellectual Property Institute of Canada

Patent Law Course, 2000 - York University

GEM Patent Services is owned and operated by (is a division of) 8399328 Canada Inc.
www.gempatentservices.com