- videocam On-Demand Webinar
- card_travel Patent
- schedule 90 minutes
Optimizing Enforceable Patent Claim Scope, Minimizing Costs for Global Patent Portfolios
Protection Differences in Different Jurisdictions, Where and When of Claims Amendment, Cost Considerations
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About the Course
Introduction
This CLE course will guide patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities outside the U.S. The panel will discuss optimizing enforceable claim scope while minimizing costs for the patent portfolio, focusing on “the big five” jurisdictions (U.S., EPO, Japan, China, and Korea). The panel will offer practical examples and approaches and will discuss the implications for enforceable claim scope.
Description
Companies must be prudent when determining IP budgets. They must maximize the value of their patents while ensuring that the patents meet the company's objectives.
Operating in the global marketplace, companies should consider seeking patent protection outside the U.S. if there is any possibility of use, manufacture, or sale of the patent's technology outside the U.S. Even without potential use, manufacture, or sale outside the U.S., companies should explore whether seeking protection outside the U.S. can add value to its IP portfolio by blocking competitive activities that may ultimately reach the U.S.
The strongest global patent protection considers competitors' business and location, and the patent claims that provide the most value in each jurisdiction.
Listen as our authoritative panel of patent attorneys examines optimizing enforceable claim scope while minimizing the patent portfolio costs. The panel will focus on key patent jurisdictions, including the U.S., EPO, Japan, China, and Korea. They will provide practical examples and approaches and will discuss the implications for enforceable claim scope.
Presented By
Dr. Barker is a Chartered UK and European patent attorney with experience in all areas of patent portfolio management from drafting and filing applications to prosecution strategy and beyond to EPO opposition and appeal procedures. Her experience spans a broad range of chemical technologies and key jurisdictions including China, Japan, and Korea. Having worked on numerous global patent families Dr. Barker is well-practised in both developing and implementing a worldwide prosecution strategy that meets the requirements of local patent offices and the needs of clients.
Ms. Murphy focuses on developing patent filing and prosecution strategies tailored to clients’ worldwide business goals. She works with a wide range of clients, including small biotech startup companies, research foundations, and large publicly traded biotechnology and pharmaceutical companies. Ms. Murphy prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants in ex parte appeals before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has also led clients through numerous reissue applications, inter partes and ex parte reexamination applications, and supplemental examination proceedings. Ms. Murphy’s extensive client counseling practice includes providing patentability, freedom-to-operate, infringement, and validity opinions. In addition, she represents petitioners and patent owners in inter partes review (IPR) and post grant review (PGR) proceedings before the PTAB. She has substantial experience in a wide variety of life sciences technologies, including antibodies and antibody drug conjugates; antiretrovirals and anticancer agents; biologics; blood clotting factors; cell signaling and signal transduction; diagnostic markers and detection assays; drug formulations; gene delivery systems, including AAV; gene editing technologies, including CRISPR; immunooncology; lipid nanoparticles; microbiome analysis and probiotics; nucleic acid modifications; peptide synthesis and protein purification; single-cell and single-molecule analysis; small molecule drugs; and vaccines.
Ms. O’Flynn is a European and UK patent attorney with more than a decade of in-house experience, having worked at some of the world’s largest multinational corporations in the oil and chemical industries. She has worked for a range of clients, from startups to multinationals, covering diverse technologies such as cosmetics, sustainable chemistry, and catalysis.
Mr. Tridico has worked in Europe for most of his career, gaining significant knowledge of the European Patent Convention (EPC) and the diversity of laws and practice among the European national systems. His knowledge of the various legal systems and how they differ from the U.S. allows Anthony to effectively counsel clients across life sciences industries with global interests in intellectual property.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
Date + Time
- event
Tuesday, January 19, 2021
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Scope of protection and enforcement
- Claims amendment
- When
- Jurisdiction dependent
- Cost considerations
- Best practices
The panel will review these and other key issues:
- How the protection afforded by different claim types varies in different jurisdictions
- How many claims (category, scope, independent) are needed to ensure adequate protection
- Amending claims during enforcement proceedings and implications for dependent claim strategies
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Unlimited access to premium CLE, CPE, Professional Skills and Practice-Ready courses.:
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Unlimited access to Professional Skills and Practice-Ready courses:
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