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  • videocam On-Demand
  • signal_cellular_alt Intermediate
  • card_travel Patent
  • schedule 90 minutes

Drafting and Prosecuting Patent Applications to Survive a Markman Hearing: Claim Construction Case Studies

$347.00

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Description

Patents prepared and prosecuted with future litigation and litigation-related issues in mind are more likely to withstand challenges and provide the protection desired. For example, statements made in a patent application or during prosecution will influence the outcome of a Markman hearing. However, for patent attorneys and agents who have never litigated a patent, it may be difficult to fully appreciate the practical implications of actions taken and statements made in preparing and prosecuting a patent application on the scope of the patent when it is asserted against an accused infringer.

Closely examining district court cases can be the next best thing to give real life context to the potential impact what is done and said during the patent application drafting and prosecution processes can have on the scope of the claims during the Markman hearing.

Listen as our authoritative panel of patent attorneys conducts claim construction case studies, examining district court cases where the patentee's statements in the application or during prosecution directly impacted the outcome of the Markman hearing. The panel will also offer tips and pointers on how to minimize the impact of what patent counsel have to say and do in order to get the patent granted.

Presented By

Roy P. Díaz
Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital
L’Oréal Research & Innovation USA

Dr. Díaz is the Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital for L’Oréal Research & Innovation USA. He started his career as a patent attorney in one of the top patent law firms in the US. Dr. Díaz then joined Intellectual Ventures where he built and developed patent portfolios mainly in the fields of medical devices, wearable technology, digital transformation technology, optics, and advanced materials. Afterwards, he co-founded Díaz|Cook an IP law firm providing clients counseling on the procurement, enforcement, management, and monetization of intellectual property rights and assets.

Michelle E. O'Brien
Partner, Head of Life Sciences
Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.

Nichole M. Valeyko
Director
Merck & Co

Ms. Valeyko is a registered U.S. Patent Attorney and has acted as IP counsel for over 15 years. She is currently a Director in the IP Legal group at Merck & Co., Inc. in Rahway, New Jersey, where she is the Committee Chair for the Merck Legal Network Diversity Committee and head of the U.S. Patent Practice Committee. Ms. Valeyko holds a Bachelor of Science in Biology from Virginia Tech, a law degree from Seton Hall School of Law, and a Master of Science in Biotechnology from Johns Hopkins. She is a member of the New York and New Jersey State Bars, and is a registered patent attorney of the U.S. Patent and Trademark Office. Prior to joining Merck, Ms. Valeyko was in private practice at several IP boutiques based in New Jersey, where she handled prosecution, litigation, and opinion matters. At Merck, she has a broad-based intellectual property practice involving patent prosecution, patent counseling and procurement, transactional matters, and due diligences.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Thursday, May 23, 2024

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Claim construction case studies
  2. Best practices
    1. Clearly defining terms
    2. Clear and concise claim terms
    3. Consistent use of terms
    4. Consider including definitions of claim terms in specification
    5. Use of dependent claims and multiple independent claims of varying scopes

The panel will review these and other key issues:

  • How can practitioners draft and prosecute patent applications and claims to survive Markman hearings?
  • What claim drafting strategies can patent counsel employ with the Markman hearing in mind?
  • What steps can counsel take to improve the likelihood that claims will be interpreted as intended?