International Patent Subject Matter Eligibility: Court Treatment, Patent Office Practices, Filing and Claiming

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, January 20, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on patent subject matter eligibility around the world. The panel will discuss court treatment, practices of the various patent offices, and prosecution strategies. The panel will offer guidance on determining where to file applications, the risks and benefits of certain claim types and language, and tips for strengthening patent portfolios.
Faculty

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman proceedings, and on appeal. His litigation experience includes taking and cross examining witnesses at trial, briefing and arguing dispositive motions, drafting appellate briefs, and arguing cases on appeal. He has also managed day-to-day litigation activities in actions involving multiple parties. In addition, he advises clients on patent matters, including coordination of prosecution and U.S. and foreign litigation strategy.

Dr. Leiman prosecutes and provides strategic counseling on U.S. and foreign patent portfolios, provides validity and patentability opinions, and manages and prepares landscape and freedom-to-operate analyses. She has developed global prosecution strategies and prosecuted patent applications in fields spanning the life sciences, including antibodies, complement inhibition, controlled-release formulations, diagnostics and in vitro detection assays, gene editing (e.g., CRISPR), gene therapy, immunology, immuno-oncology, metabolic disease, neuroscience, nucleotide sequencing, protein purification, and recombinant and fusion protein therapeutics. Her work also includes preparing invalidity and infringement contentions for district court litigations in the mechanical and electrical spaces.

Ms. Morozova's professional career has spanned across three countries and more than ten years of legal experience across two continents. Her unique background enables her to understand cultural nuances and helps her to advise a broad range of clients across the world. Qualified as a patent attorney in the United States and Europe, she focuses her practice on patent procurement and portfolio development in all fields of engineering on both sides of the Pond. She has technical expertise across different fields of engineering, most particularly in information technology and software, telecommunications, and mechanical. Her experience includes patent drafting and prosecution of patent and design applications internationally, developing and implementing IP strategies tailored to business plans, worldwide patent portfolio management, freedom-to-operate searches and infringement, and validity advice. She has worked with a diverse range of global clients from startups to large corporations and is well adept at understanding and meeting the different aims and requirements of each individual client.Â

Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to electronics, software, telecommunications, and business methods; providing client counseling and portfolio management; and handling post-grant proceedings including inter partes review and covered business methods. He also provides freedom-to-operate opinions and has assisted on district court litigations related to telecommunications, computer software, and mechanical devices. Before joining Finnegan, he served as a patent examiner at the U.S. Patent and Trademark Office (USPTO)Â for nearly five years.
Description
Every year patentees file more patent applications in a wider range of countries. Since the Patent Cooperation Treaty (PCT) came into force in 1978, nearly four million PCT applications have been filed to enable patentees to obtain international protection for their inventions – and more than half of these PCT applications were filed in the last ten years. A broad patent portfolio is of increasing importance to large and small companies in a variety of fields.
Yet, prosecuting patents in different countries can be challenging. Each country has its own laws for pursuing patent applications and achieving enforceable patents. And while treaties and other agreements (like the Paris Convention and the PCT) lay a foundation for many countries’ patent systems, local patent law varies widely on the issue of patent eligibility. Patent attorneys and the clients they serve therefore must be cognizant of these differences in eligibility law in different jurisdictions and take them into account when pursuing patent protection internationally.
Listen as our authoritative panel of patent attorneys discusses the significant differences in subject matter eligibility in the United States and before the European Patent Office (EPO). Panel members will also provide insights gleaned from their recently published global guide to patent subject matter eligibility, which examines the different approaches to subject matter eligibility in many important jurisdictions around the world.
Outline
- Patent eligible subject matter and patent office practices
- Europe
- U.S.
- Overview of other significant jurisdictions (Japan, Australia, China, Canada, etc.)
- Best practices
- Where to file
- Claim types and language
- Strengthening patent portfolios
Benefits
The panel will review these and other essential matters:
- How do the patent offices around the world treat eligibility issues?
- What considerations should counsel weigh when determining where to file patent applications around the world?
- What steps can counsel take to strengthen global patent portfolios?
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