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IP Chat Channel – Patent Prosecution and PTO Practice

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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USPTO on Restriction Practice, Terminal Disclaimers, and Patent Term Adjustment

Webinar Date: 09/26/2017

Restriction requirement practice has assumed a new importance since the Federal Circuit decision in Gilead v. Natco three years ago, which found that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference. A restriction requirement lets a patent examiner categorize a patent application as containing multiple inventions and then restrict examination to just a “single” invention. Our panelists — an expert from the USPTO’s Office of Patent Legal Administration and two veteran and savvy patent prosecutors — will analyze the opportunities and pitfalls for patent prosecutors raised by restriction requirements, discussing such topics as:

  • After a restriction requirement, how can a patent applicant make sure that the subsequent application falls into the section 121 “safe harbor,” while also garnering the longest protection through patent term adjustment?;
  • What does it mean for claims in a new application to be “consonant” with those withdrawn from the earlier case?;
  • The new amendment to the Manual of Patent Examining Procedure that describes when a terminal disclaimer can be withdrawn; and
  • Lessons learned from cases such as Hagenbuch v. Sonrai (E.D. Ill. 2016) on the potential danger of filing an ill-worded terminal disclaimer, and Janssen v. Celltrion (D. Mass. 2016) on serious consequences from filing a continuation instead of a divisional.

Speakers:

  • Kathleen Fonda, USPTO
  • Jeffrey Hohenshell, Medtronic, Inc.
  • Kevin Noonan, McDonnell Hulbert Berghoff & Boehnen LLP



Exhaustion Unleashed: Licensing, Patenting Strategy, and Litigation After Lexmark 

Webinar Date: 06/28/2017

This webinar will explore the significant ramifications of the recent U.S. Supreme Court decision in Impression Products v. Lexmark. Exhaustion of patent rights is a very simple matter, the Court said, and the Federal Circuit has been wrong both to allow domestic post-sale restrictions under patent law and to allow U.S. patent owners to sue for infringement of products imported into the U.S. that the patentee first sold abroad. The opinion notes, “We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.” 

Our panelists include the top IP lawyer at a multinational pharmaceutical company, a law firm attorney who was formerly the head of IP litigation at GE, and a licensing expert. They will discuss how companies will need to react to the newly-fortified power of exhaustion, including: 

  • Structuring licenses as a way around exhaustion; 
  • Antitrust concerns about enforcing post-sale restrictions through contracts after Lexmark; 
  • Structuring patent ownership, supply chain management, and inventory management to reduce exhaustion, and important tax implications. 

Speakers: 

  • Paul Jahn, Morrison & Foerster LLP 
  • William Krovatin, Merck & Co., Inc. 
  • Richard Rainey, Covington & Burling LLP



Pharma Lessons from the PTAB: Litigation and Prosecution 

Webinar Date: 06/08/2017

After a slow start, AIA challenges are now a frequent life-or-death risk for biopharmaceutical patents, totaling 212 in 2016, more than twice the number two years earlier. Exemplifying the PTAB’s power was the Federal Circuit’s April decision in Novartis v. Noven that upheld the invalidation by the PTAB of claims covering Novartis’ dementia patch Exelon, even though both the Federal Circuit and Delaware’s federal court had earlier ruled otherwise. Our panelists, all litigators with extensive pharma patent PTAB experience, will spell out winning strategies specific to the industry for both patent owners and challengers, and also will highlight lessons for patent prosecutors that emerge from PTAB practice. Topics to be discussed include: 

  • The role of objective indicia of nonobviousness. Pharma patents do put up a better fight at the PTAB than other technologies: last year, a third of biotech/pharma claims survived PTAB trials, almost three times the survival rate of electrical/computer claims; 
  • The surge in PGRs challenges to pharma patents on Section 112 grounds of indefiniteness and enablement; 
  • The relationship between district court Hatch-Waxman litigation and PTAB challenges; 
  • How to inoculate continuations or divisionals of challenged patents to relevant prior art. 

Speakers: 

  • Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC 
  • Cynthia Lambert Hardman, Goodwin Procter LLP 
  • Kerry Taylor, Knobbe, Martens, Olson & Bear LLP 



Design Protection After Star Athletica: Way Beyond Fashion

Webinar Date: 04/13/2017

Don’t be distracted by the sports metaphors and the fashion industry commentary. Last month’s decision by the U.S. Supreme Court in Star Athletica v. Varsity Brands found that decorative elements of cheerleader uniforms were potentially protected by copyright law. That decision opens a new avenue for protection of industrial designs as well, an area which itself has earned a higher profile within IP law recently because of the ongoing fight in Apple v. Samsung. That smartphone case involves design patents, of course, but experts say that the Star Athletica should spur new consideration of how copyright and design patents, as well as trade dress and utility patents, can or can’t work together. Increased use of copyrights to protect industrial design makes new litigation on this issue more likely.

Our panel includes an in-house counsel at a technology company and two law firm lawyers, one specializing in design patents and the other in copyright. They will discuss such questions as:

  • How does Star Athletica change the scope of copyright protection for designs? When is copyright protection for useful objects now appropriate?
  • What are the differences among the different modes of protection, including “novelty and non-obviousness” for design patents, “originality” for copyrights, and “acquired distinctiveness” for trade dress?
  • What are the open questions left by Star Athletica that are likely to be litigated in the future?

Speakers:

  • Terry Carroll, IBM Corp.
  • Robert Katz, Banner & Witcoff, Ltd.
  • Katherine Spelman, Lane Powell PC



Divided Infringement in the Life Sciences: Patent Prosecution Perspective

Webinar Date: 03/16/2017

With the Federal Circuit decision earlier this year in Eli Lilly v. Teva Parenteral, the reach of divided infringement into the life sciences left the realm of the hypothetical. Akamai v. Limelight and other prior cases about divided infringement involved software and the Internet, but the Lilly case involved a medical method of treatment. The case is also the first Federal Circuit decision to affirm a finding of divided infringement using the new standard for “direct or control” established by the en banc Federal Circuit in August 2015. Under that standard, an infringer can be found guilty of infringement, even if one did not perform all steps of a patented method. In addition to exerting control through traditional means, an infringer can now be held liable when one “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” The relationship between doctor and patient is discussed in this context in the Lilly opinion.

Our panel, which includes an in-house patent counsel at a drug company and two patent prosecutors, will analyze Lilly, and extract principles that can be used to guide patent claim drafting in such fields as personalized medicine and companion diagnostics, measuring the efficacy of treatment through biomarkers, and methods involving pretreatment. The panelists will also consider the interplay of factors unique to the drug industry, such as the role of the FDA label.




After Life Tech v. Promega: Litigation and Business Strategies for Patent Owners and Defendants

Webinar Date: 03/09/2017

This webinar will consider what new legal battles are likely to follow from last month’s U.S. Supreme Court decision in Life Tech v. Promega. The decision reversed the Federal Circuit by finding that Thermo Fisher Scientific’s Life Technologies unit did not infringe by shipping a single component of Promega’s patented invention overseas, in a case involving Section 271(f)(1) of the Patent Act.

In parsing that statute, the Justices declined to rule on how close to “all” of an invention’s components must be exported in order to be the “substantial portion” that is needed to infringe. Presumably, that determination will be argued in front of a jury. It is also not clear whether it will be a judge or the jury who will answer the question of exactly how many “components” are defined within a patent. Patent owners will want to argue that there are multiple components in the part of an invention shipped overseas, while alleged infringers will want to include many parts of a patent in one component.

Our panel, which includes the head of IP for a large technology company and two litigators, each of whom was involved in an amicus brief in the case, will also discuss strategies for patent prosecution and global supply chain management going forward. For instance, inventors may want to look harder at procuring foreign patents in countries where competitors are likely to repackage or use components of an invention that now is patented only in the U.S.

Speakers:

  • Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
  • Irena Royzman, Patterson Belknap Webb & Tyler LLP
  • Bradford Schmidt, Agilent Technologies



Ex Parte Schulhauser and Claim Drafting for Computer-Implemented Inventions

Webinar Date: 03/01/2017

In the less than four months since the PTAB designated Ex Parte Schulhauser as a precedential decision last fall, the Board has cited it in more than three dozen appeals from USPTO patent application rejections. Schulhauser, the first ex parte appeal to be designated precedential since 2013, clarified the difference in scope between system and method claims with conditional limitations. That distinction is particularly important in claiming computer-implemented inventions, where patent prosecutors often rely on a combination of method, system, and apparatus claims. (Some life science patents also rely on this multiplicity.) Schulhauser clarified that no patentable weight is given to limitations in method claims that rely on a condition precedent that is not required to be performed — which means an examiner need only show that one of the two “paths” of the method claim is anticipated or obvious over the prior art. By contrast, under the broadest reasonable interpretation, the Board did give patentable weight to conditional limitations in Schulhauser’s system claim, because it recited “structure capable of performing all the recited functions.”

Our panel has examined the follow-on decision citing Schulhauser to provide insight into the varied types of method-claim limitations that have not been given patentable weight, including how to avoid emerging trigger words such as, “carrying out a step upon a threshold being exceeded,” “upon,” “whether,” or “when.” They will also discuss how these decisions extend Schulhauser’s holding to system, machine, and apparatus claims without means-plus-function limitations, and will give other relevant practice tips.

Speakers:

  • Christopher Francis, Bejin Bieneman
  • Scott McKeown, Oblon
  • Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



Design Patents: Future of Damages After Apple v. Samsung

Webinar Date: 01/12/2017

In its recent opinion, the U.S. Supreme Court answered this question posed by Samsung: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” The reply of the unanimous court, in an opinion written by Judge Sotomayor: “The term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” That answer rejects the Federal Circuit’s longstanding interpretation of Section 289.

However, experts say the Supreme Court’s opinion raises many more questions. The Federal Circuit must now create a test that will allow a jury to determine whether the “article of manufacture” covered by a design patent is the entire product or a component, and what that component is. For now, it is not clear whether the patent owner or the defendant bears the burden of proof. Then, it will be up to a judge to apportion to the component some part of the infringer’s entire profits on the product. Our panel — a design patent litigator, a damages expert, and a law professor specializing in patent damages — will discuss how the law of design patent damages might evolve, and see what the options might mean applied to cases currently being litigated, such as Apple v. Samsung and Nordock v. Systems.

Speakers:

  • Prof. Thomas Cotter, University of Minnesota Law School
  • Dawn Hall, FTI Consulting
  • Richard Stockton, Banner & Witcoff, Ltd.



BRI and Claim Drafting

Webinar Date: 12/09/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which also includes the USPTO expert and two different patent prosecutors, will consider in depth claiming options for a series of hypothetical inventions and accompanying prior art. They will discuss techniques such as using a figure in the application to overcome prior art and “incorporating by reference.”

Speakers:

  • Amir Penn, Brinks Gilson & Lione
  • John Phillips, Fish & Richardson, PC
  • Joseph Weiss, USPTO



BRI in Patent Prosecution

Webinar Date: 12/08/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which includes a USPTO expert and two patent prosecutors, will discuss practice tips for finessing the issues posed by BRI for patent prosecutors, relying on several PTAB and BPAI decisions of ex parte appeals. They also will discuss how to make sure an issued patent is not caught unexpectedly in the future by Section 112(f), and how to make the best of an existing application in which the specification is lacking but not open to broadening without a loss of priority date.

Speakers:

  • Charles Bieneman, Bejin Bieneman PLC
  • Sameer Gokhale, Oblon, McClelland, Maier & Neustadt, LLP
  • Joseph Weiss, USPTO



Design Patents: International Filing Strategies

Webinar Date: 11/15/2016

More companies these days feel the need for design patent protection in several countries outside the U.S. But complications are plentiful, pitfalls are many, and international harmonization efforts may offer false security. Our panel includes an in-house counsel with experience managing design patent prosecution in more than 15 countries plus the European Community, and two international design patent prosecution veterans. They will examine a number of issues that should be addressed in preparing an effective international filing strategy, including:

  • The significance of the “absolute novelty” standard in nations including China. No grace period means that any disclosure by the inventor or designer anywhere in the world, including in consumer testing and trade shows, is considered prior art before filing;
  • Differences in rules regarding partial designs, where only a particular feature is claimed;
  • Limits in enforceability, such as the “must fit, must match” and “hidden in use” exclusions;
  • Balancing cost and coverage.

Speakers:

  • John Cheek, Caterpillar, Inc.
  • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Robert Katz, Banner & Witcoff, Ltd.



Software Patent Prosecution and Section 101: Finding Your Way Through Turbulence

Webinar Date: 10/19/2016

Software patent law has been on a wild ride over the past month. At first, in mid-September, patent owners applauded the long-awaited Federal Circuit  decision in McRO v. Bandai, only its fourth pro-patent eligibility decision (out of 20) since the U.S. Supreme Court’s landmark holding in Alice v. CLS Bank. McRO appears to offer new paths to patent eligibility for many inventions by, e.g., its analysis of how the invention in question did not preempt other ways of solving the same problem and its embrace of automated mathematical rules.

But then, in early October, a wide rift among the Federal Circuit judges on Section 101 issues was revealed in the decision that invalidated three patents of Intellectual Ventures that had been asserted against Symantec and Trend Micro. Judge Stoll dissented, saying that one of the patents offered concrete steps and was a technical improvement over prior art, relying on Bascom, a Federal Circuit opinion earlier this year. The majority opinion was written by Judge Dyk, but the eye opener was a concurrence by Judge Mayer, stating his view that patents on software should be banned.

Our panel of patent prosecutors will discuss how they think the USPTO will apply the analysis of patent eligibility presented in McRO, and how applicants can best position their arguments to take advantage of McRO and the earlier DDR, Enfish and Bascom decisions.

Speakers:

  • Stephen Durant, Schwegman Lundberg & Woessner, P.A
  • Amir Penn, Brinks Gilson Lione
  • Robert Sachs, Fenwick & West LLP



Blockchain: What IP Lawyers Need to Know

Webinar Date: 08/23/2016

Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.

Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:

  • New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
  • Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
  • Security:  What is the focus of the debate about blockchain security?

The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?

Speakers:

Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP




Life Sciences & Section 101: The Way Ahead

Webinar Date: 08/11/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation. The life science webinar will include discussion of both therapeutics and diagnostics, and the software webinar will include discussion of several recent useful ex parte PTAB decisions that overturned examiners Section 101 rejections.

Speakers:

Deborah Martin, Pfizer Inc.
Christopher Jeffers, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Warren Woessner, Schwegman, Lundberg & Woessner, P.A.




Software Section 101: The Way Ahead

Webinar Date: 08/10/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation.

Speakers:

Stephen Durant, Schwegman, Lundberg & Woessner, P.A.
Michelle Macartney, Intellectual Ventures, LLC
Amir Penn, Brinks Gilson & Lione




After Cuozzo: Litigation at the PTAB, U.S. District Court, and the Federal Circuit

Webinar Date: 07/06/2016

The USPTO emerged as the big winner in the U.S. Supreme Court’s recent Cuozzo decision. The Court approved the PTO’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims in post-grant proceedings and it upheld the agency’s interpretation of the AIA provision that bars challenges to the PTO’s decisions to institute inter partes review (IPR).
Our panelists will place Cuozzo in the context of other recent Supreme Court decisions on IP and on judicial deference to federal agencies. They also will discuss:

  • The avenues that remain open for challenging IPR institution decisions, and the pending cert petitions that challenge USPTO post-grant proceedings on constitutional grounds;
  • Whether a Federal Circuit decision on the reviewability of Covered Business Method reviews (CBMs) is inconsistent with Cuozzo;
  • The Federal Circuit decision SAS Institute v. ComplementSoft that gives guidance on procedural safeguards of the Adminstrative Procedure Act regarding post-grant proceedings;
  • Practical tips for litigators on how to deal with two different claim construction standards going forward and;
  • What lessons should patent prosecutors take from Cuozzo?

Speakers:

Morgan Chu, Irell & Manella LLP
Rachel Krevans, Morrison & Foerster, LLP
Scott McKeown, Oblon




Life Science and Section 101: USPTO New Examiner Guideline

Webinar Date: 05/25/2016

A senior lawyer at the USPTO and two experienced life science patent prosecutors will use this webinar to probe deeply into the new examples published this month that show how claims for life science inventions should be examined by the agency for subject-matter patent eligibility. They will look in detail at the first four examples, two centering on diagnostics and two on inventions that involve a product of nature. Attendees will benefit most if they are already familiar with the examples and have a printed copy of the examples available to refer to during the webinar. The examples are available on the USPTO website.

The panelists will crystallize the examples into “dos and don’t” for patent prosecutors in life science matters relating to Subject 101. They will also discuss pending litigation and how the guidelines will have to change if the U.S. Supreme Court denies certiorari in the Sequenom case. The two diagnostic examples do not apply the 2015 Federal Circuit decision in Sequenom.

Speakers:

Raul Tamayo, USPTO
Courtenay Brinckerhoff, Foley & Lardner
Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP




USPTO and Section 101: New Examiner Guidelines

Webinar Date: 05/18/2016

The USPTO is trying to put an end to the “I know it when I see it” era of subject-matter ineligibility decisions by patent examiners. This month the agency published a new package of guidance to examiners that includes, among other things, instructions on formulating detailed subject-matter eligibility rejections and responses to applicant’s replies, and a new set of life science examples.

Our webinar on Wednesday, May 18 will focus on the patent prosecution process and Section 101 rejections in light of the new guidance. The panel features the USPTO’s Deputy Commissioner of Patent Examination Policy. In discussion with two law firm patent prosecutors, he will explain the agency’s new policies and how the agency will encourage examiners to follow them. The panel will also review the recent Federal Circuit decision in Enfish v. Microsoft and other pending decisions that may cause the USPTO to further adjust its policies.

Another upcoming webinar (date to be announced shortly) will feature a USPTO life sciences expert who will hone in on the new life science examples in discussion with two life science patent prosecutors. Despite the welcome new insights provided to patent applicants by the latest USPTO examples, some experts point out that hard questions remain. For example, what is the likely eligibility of a claim directed to a mixture of an efficacious amount of a naturally-occurring product?

Speakers:

Robert Bahr, USPTO
Bart Eppenauer, Shook, Hardy & Bacon L.L.P.
Michelle Holoubek, Sterne Kessler Goldstein and Fox




Lexmark: A Bulwark Against Exhaustion?

Webinar Date: 03/03/2016

Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.

Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:

  • What questions to ask at the first hint of a problem;
  • How to quickly gather and maintain crucial evidence both in-house and externally;
  • Best practices for internal investigations and giving Upjohn warning to employees;
  • How to contact new employers of suspected thieves or other possible bad actors;
  • How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
  • Should we call in law enforcement? Calculating the trade-offs;
  • First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Speakers:
Jeff Dodd, Andrews Kurth
Mark Patterson, Fordham University School of Law
Susan Van Keulen, O’Melveny & Myers



Conflicts of Interest in Patent Prosecution after Maling v. Finnegan

Webinar Date: 02/10/2016

The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”

Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.

Speakers:
Martin Kaminsky, Greenberg Traurig, LLP
Scott Markow, Stanley Black & Decker, Inc.
Michael McCabe, Funk & Bolton



Design Patent Damages: The Law As It Is Today

Webinar Date: 01/28/2016

When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.

Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.

Speakers:

Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC




Double-Patenting: Tech Patents, Double Patenting, and Ex Parte Reexam

Webinar Date: 01/08/2016

This panel will examine how double patenting arises in tech company patent portfolios, how ex parte reexam differs from other post-grant proceedings vis a vis double patenting, and how it can be used to invalidate vulnerable patents. Our panel includes both an in-house tech company lawyer and a law firm lawyer with relevant first-hand experience, and a law firm attorney who was former head of the USPTO’s Central Reexamination Unit.

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and tremors from that decision – which expanded the universe of patents vulnerable to charges of double patenting — are being widely felt in the pharma and biotech industry. But life sciences companies are not the only ones to find themselves with Gilead’s problem: after asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued but earlier expiring patents to knock out a patent that was issued earlier but expires later. Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

Speakers:

Barry Bretschneider , BakerHostetler
Jeffrey Hohenshell , Medtronic
Lissi Mojica, Dentons US LLP




Double-Patenting: Impact of Gilead on Bio and Pharma

Webinar Date: 01/07/2016

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and it is widely seen as expanding the universe of patents vulnerable to charges of double patenting in the pharma and biotech industry. However, life sciences companies are not the only ones to find themselves with Gilead’s problem. After asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued, but earlier expiring patents, to knock out a patent that was issued earlier but expires later.

Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers, with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

This panel will focus on tips for patent prosecution after Gilead, as well as the litigation outlook with a particular focus on biosimilars. Because many branded pharma companies are entering the biosimilar market, they are finding themselves combing the portfolios of competitors for double patenting weakness, much as generic companies are doing. Our panel features the lawyer who argued for Natco at the Federal Circuit, a law firm biotech lawyer who is an expert on patent term adjustment, and the vice president of IP at a drug development company.

 

Speakers:

Tim Babcock, Akros Pharma Inc.
Jack Brennan, Fish & Richardson
Jeremy Lowe, Axinn Veltrop




CBM Review: Taking Stock of the Case Law

Webinar Date: 12/03/2015

The AIA Covered Business Method (CBM) review deserves its reputation as a fearsome weapon: just 2% of patents against which this review has been instituted have emerged intact. But not all is as grim for patent owners as it may appear. Under the radar, patent owners have been having more success lately in evading the review entirely: in the past fiscal year, almost half of the petitions for CBM have been denied by the PTAB, either because petitioners failed to place the invention within the target circle of a “financial product or service” or because the patent owner proved the patent fell within the exemption of “technological invention”.

Our panel includes a PTAB judge who helped develop the proceedings and sits on CBM review panels, and two litigators with CBM experience. They will discuss the trends in PTAB decisions regarding institution of CBM reviews, considering cases both where petitions were successful and where they were denied. They also will discuss the recent important Federal Circuit decisions regarding the institution of post-grant proceedings, including Cuozzo, Achates, and Versata. Unlike its mostly hands-off approach to inter partes review, in the latter decision the Federal Circuit ruled that the PTAB’s decision of whether a patent is a CBM patent is subject to its appellate review.

Speakers:

Hon. Michael Tierney, USPTO
Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Ben Quarmby, MoloLamken




USPTO's After Final Consideration Pilot: Tips to Reach Allowance

Webinar Date: 11/19/2015

The USPTO recently announced that it is extending the After Final Consideration Pilot (AFCP), a compact prosecution initiative that authorizes additional time for examiners to search and to consider responses from a patent applicant after final rejection. Many applicants remain leery of this program that dates in its current form to 2013. But that skepticism may be misplaced. According to the USPTO, about 27% of the 122,882 AFCP requests since then have directly resulted in allowances, a result made possible by the fact that an applicant must file a non-broadening amendment to at least one independent claim to be eligible for the program. More than 60% of applicants in a recent USPTO survey said that using the AFCP reduced the likelihood a Request for Continued Examination (RCE) being filed. The applicants who fail to get an application allowed during AFCP are less likely to appeal. Appeal briefs are only submitted in 2.4% of AFCP applications, compared to 6% of cases with traditional after-final submissions.

Our panel features the group director of a USPTO Technology Center who practices in and helped develop the program, and two law-firm patent prosecutors, one specializing in electronics and the other in the life sciences. They will discuss which cases are best suited to the AFCP and which are not, giving real-life examples of successful cases that passed through the program and others that failed. They will also discuss another recently-extended USPTO program aimed at the later stages of prosecution, the Quick Path Information Disclosure Statement (QPIDS) program, which can let an applicant file an IDS after the issue fee is paid without paying for reopening prosecution through an RCE.

Speakers:

Tariq Hafiz, USPTO
David Longo, Oblon, McClelland, Maier & Neustadt, L.L.P.
Eli Loots, Knobbe, Martens, Olson & Bear, LLP




Patent Prosecution After Akamai: Exploring the Contours of "Control and Direction"

Webinar Date: 10/29/2015

This webinar will investigate the new environment for patent prosecution in software, Internet, and IT technologies in the aftermath of this summer’s Federal Circuit decision in Akamai v. Limelight. Our panel, which includes a top IP lawyer at a financial services technology company and two veteran software patent prosecutors, will tackle such questions as:

  • Which inventions call for taking advantage of the new more liberal standard under which multiple defendants can together practice all the claims of a patent and be found guilty of direct infringement? Or should patent prosecutors stick to a conservative approach and continue to draft claims so that a single actor can perform all steps?
  • Will including more implementation details in a patent application, such as system protocols, potentially ensnare infringers that would otherwise be seen as separate parties? How will that interact with Alice issues?
  • How to approach opinion work — and design around advice regarding non-infringement — when there is no developed case law on the new standard?

Speakers:

Stephen Durant, Schwegman Lundberg
Ken Hobday, Fiserv
Michelle Holoubek, Sterne Kessler Goldstein & Fox




Advance Conflict Waivers: How to Avoid Unpleasant Surprises

Webinar Date: 09/22/2015

CLE Ethic credits will be applied for

Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.

Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.

Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser




New Litigation Scenarios after Akamai: Fact Pattern Hypotheticals

Webinar Date: 09/17/2015

Trying once again to meet the challenge posed by situations in which multiple parties work together and infringe a patent, in August the en banc Federal Circuit expanded the scope of a key aspect of patent law: the definition of direct infringement under Section 271(a) of the Patent Act. In the new Akamai opinion, the Federal Circuit adds to its own earlier precedent an additional category of direct infringement that falls within the scope of “control or direction”: “… Liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.

Our panel of litigators will consider several different fact patterns to discern and discuss, at the margin, where the boundary will fall between infringement and non-infringement under this new scope. Some of these facts will be drawn from earlier Federal Circuit cases on joint infringement involving the Internet and software, such as McKesson v. Epic Systems and Golden Hour v. emsCharts; others will be hypotheticals to analyze joint infringement in personalized medicine and diagnostics.

Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Andrei Iancu, Irell & Manella LLP
Steve Moore, Kilpatrick Townsend & Stockton LLP




3-D Printing Advanced Topics for Patent Lawyers: Repair, Reconstruction, Exhaustion, Inducement

Webinar Date: 08/27/2015

Lawyers who want to give good advice regarding the disruptive technology of 3-D printing need to refresh their understanding of many areas of case law and rethink how it all fits together. For instance, companies with more than one business model – eg, those who both sell repair parts for machines they manufacture and also want to repair machines bought from others – may be subject to competing imperatives.

Our panel includes an IP lawyer at a major multinational manufacturer, a design patent specialist, and a patent litigator. Through the lens of 3-D printing, they will reconsider case law and current litigation involving repair, reconstruction, and exhaustion, including the pending en banc Federal Circuit Lexmark case; the pending Federal Circuit case on whether the International Trade Commission has jurisdiction over imports of digital files; and the issues of inducing and contributory infringement.

 

John Cheek, Caterpillar Inc.
Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Bryan Vogel, Robins Kaplan LLP




Elusive Global Patent Claims - Software and Info Tech Hardware

Webinar Date: 08/12/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • How to work with statutory bans against software per se in Europe and China
  • “Inventive step” in Europe; “solving a technical problem” in China
  • Addressing flaws in foreign-drafted applications involving means-plus-function claims before submitting to USPTO
  • The European examiners requirement that all “essential features of invention” be within the claims?”
  • Differences in obviousness and written description standards

Speakers:

James Kulbaski, Oblon
Bo Li, CCPIT Patent and Trademark Law Office
Nicholas Malden, D Young & Co




Elusive Global Patent Claims - Life Sciences

Webinar Date: 08/11/2015

Economic globalization continues, but patent owners still must reckon with differences among national and regional patent regimes that make it challenging to protect innovation across borders. Speakers will highlight key differences among law and practice that matter in their industry, and give examples when and how it is possible to tweak claims to meet foreign standards and when it is not.

  • Methods of treatment (MOT) claims, including combination claims and dosage regimes; MOT v. “medical uses” in Europe, dealing with statutory ban on MOT claims in China
  • Methods of diagnosis claims
  • Personalized medicine and biomarkers
  • Need for more data support in China and Europe
  • Composition of matter claims and Section 101 concerns, including pursuing protection outside the U.S. for inventions that are not patent-eligible here

Speakers:

Michael Lin, Marks & Clerk
James Mullen, Morrison & Foerster, LLP
Edward Oates, Carpmaels & Ransford LLP




Functional Claims Hit a Wall: Impact of Williamson v. Citrix

Webinar Date: 07/15/2015

In litigation involving means-plus-function claims, the June en banc Federal Circuit opinion, Williamson v. Citrix, is a game changer. The Federal Circuit overruled its own prior precedent that stated a “strong” presumption that claim limitations that do not use the term “means” are not means-plus- function limitations. “Henceforth, we will apply the presumption as we have done prior to Lighting World (2004), without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong’.” In the new decision the court also made it easier to prove a claim indefinite by overruling the prior strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.” The panel will discuss how this change is likely to play out for both patent owners and alleged infringers.

Speakers:

Richard Megley, Lee Sheikh Megley & Haan
James Myers, Ropes & Gray LLP
Prof. Michael Risch, Villanova University School of Law




Algorithms and Software Patents: USPTO and Litigation Perspectives

Webinar Date: 07/14/2015

In its May opinion Eon v. AT&T, the Federal Circuit issued a clear endorsement that “when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.” A USPTO Legal Advisor will discuss what this obligation means in practice, including how much algorithm detail is enough to satisfy Section 112(f) in examination. She and our panelists, the head of IP at a tech company and a law firm software expert, will also discuss what role, if any, algorithms can play in a Section 101 inquiry. Looking ahead to after issuance, they will deliberate what else, such as a more complete prosecution record, can give assurance to a patent owner that a patent will stand up to a challenge in a district court or at the PTAB.

Speakers:

Carolyn Kosowski, USPTO
Robert Sachs, Fenwick & West LLP
Douglas Luftman, NetApp




USPTO and Plain Meaning of Terms

Webinar Date: 05/21/2015

At its two-day Patent Quality Summit at the end of March, the USPTO asked for public comment on a detailed set of proposals on how the agency could improve the quality of issued patents. That comment period was extended recently to May 20. IPO commented on May 6.

Practitioners may not be aware that the USPTO has already taken steps, through new examiner training guidelines, to make the record clearer during prosecution by explaining claim interpretation as necessary. Through the new clarifications, the guidelines explain, “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean”. Examiners received training on the new guidance this spring. The goal of the new initiative, according to the USPTO, is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Our webinar features the head of IP at a technology company and a law firm patent litigator. They will explore the implications of the change for patent prosecution and litigation. Our third panelist is an attorney from the USPTO’s Office of Legal Administration, who will explain how the new guidelines will work in practice.

Speakers:

Brenton Babcock, Knobbe, Martens, Olson & Bear, LLP
Gary Ganzi, Evoqua Water Technologies LLC
Joseph Weiss, U.S. Patent & Trademark Office




Drafting Patents with an Eye to the PTAB

Webinar Date: 05/14/2015

Petitioner success in invalidating thousands of patent claims in the two-and-a-half years since the inauguration of the inter partes review means that every important patent needs to be drafted and prosecuted with an eye toward strengthening its chances at the PTAB. Because the patent owner’s preliminary response to an IPR petition cannot present new evidence, the ideal time to prevent a challenger’s IPR petition from being instituted is before the IPR is filed.

This webinar will give tips for patent claim and specification drafting that can go a long way to bullet-proofing a patent, as well as advice on savvy prosecution strategy using declarations, continuation applications, reexamination, and reissue. For instance, submitting arguments and declarations supporting §112 and §103 positions during patent prosecution will give the patent owner a powerful defense for use, if needed, in an IPR. Such declarations can be used to make the argument for non-obviousness, for instance, by supplying evidence of commercial success that otherwise would not be available at the PTAB.

Speakers:

Courtenay Brinckerhoff , Foley & Lardner
Michelle Macartney, Intellectual Ventures
Thomas Rozylowicz, Fish & Richardson




Design-Arounds: Strategy at the ITC and District Courts

Webinar Date: 04/30/2015

Designing around an infringed patent creates many strategic challenges for both plaintiffs and defendants. For example, in district court litigation, plaintiffs can either broadly seek discovery related to potential redesigns (and risk a finding of noninfringement), or sit back and attempt to preclude such evidence. By contrast, defendants must choose between introducing potential design-arounds early in discovery and risking an adverse adjudication, or waiting until later during litigation and risking preclusion or other unwanted consequences. Similarly, in ITC proceedings, parties must consider whether to attempt to force the ITC to adjudicate potential design-arounds during the investigation or to wait until after any exclusion order issues. Then the fight over the scope of the exclusion would move to Customs and Border Protection or may require a return to the ITC to seek an advisory opinion or enforcement order.

Our panel will review the case law regarding redesign and discuss strategy issues relating to timing, discovery, claim construction, and procedures. In addition, an official of the ITC will discuss a new pilot program, announced this winter, that will test the use of expedited procedures to evaluate and rule on new and redesigned products in modification and advisory proceedings.

Speakers:

Steven Bauer, Proskauer Rose, LLP
Brian Busey, Morrison & Foerster, LLP
David Lloyd, U.S. International Trade Commission




Safeguarding GUIs: Best Practices Using Multiple Layers of IP, including Design Patents, Utility Patents, Copyright and Trade Dress

Webinar Date: 04/29/2015

Protecting the IP of Graphical User Interfaces (GUI) is tricky – and crucial. Successful GUI is key to strategy at many corporations these days, as more manufactured products offer sophisticated digital features and connectivity through the Internet of Things. Our panelists — an attorney expert in design patents, an in-house lawyer who works to protect the inventions of an “experience design” team, and a software IP specialist — will discuss how best to protect GUIs using multiple layers of IP.

Design patents are certainly important, and have come to the fore recently because of Apple’s success in enforcing a GUI design patent against Samsung. But some sophisticated companies have actually backed off from filing design patents on GUI, concerned about how crowded the field is with prior art and how the quick pace of design changes during product development and even after launch make it necessary to file multiple applications to have any hope of a patent strong enough to enforce.

Utility patents protecting the functionality of GUI are facing their own challenges. A number of these patents have been invalidated in post-grant proceedings based on prior art. New patent applications face a higher hurdle because of Alice. Some experts wonder if copyright protection could fill the gap. Trade dress claims can be preempted by a registered copyright, but alone they may well be effective in protecting a GUI from copycats — if the GUI is already well-known and is associated by consumers with its particular source.

Speakers:

Michael Hsu, Adobe Systems Inc.
Robert Katz, Banner & Witcoff, Ltd.
Robert Lord, Osha Liang, LLP




IP5 Global Dossier: A New Era in Global Patent Prosecution?

Webinar Date: 04/02/2015

This spring marks the debut of the IP5 Dossier, an international cooperative effort of the patent offices of the U.S., Europe, China, Japan, and Korea. The Dossier is a new software platform on which the government agencies will share work. Patent applicants are also expected to benefit. They will eventually gain the ability to cross-file, plan, execute, and monitor filings in multiple countries from a single on-line portal, promising a big improvement from the duplication of effort now required to file in multiple countries.

USPTO examiners will have access to the first phase of the IP5 Dossier this spring, with access to external stakeholders following this summer. Our panel includes a USPTO official involved in the development of the Dossier and its roll-out, as well as a well-informed law firm attorney and an in-house counsel who will be in a position to make use of the dossier. They will discuss the implications of the new system for corporations and law firms. They also will discuss the Common Citation Document (CCD), which consolidates the prior art cited by all participating offices for the family members of a patent application.

Speakers:

Don Levin, USPTO
Samson Helfgott, Katten Muchin Rosenman LLP
John Treangen, Dow Chemical




Ex Parte Reexam: New Tactics, Old Tool

Webinar Date: 02/13/2015

Ex parte reexamination was once the only way to challenge patents at the USPTO that were issued from applications filed before November 29, 1999. Since 2012 and the AIA, filings for ex parte reexam have slumped by 50 percent, as challengers quickly embraced inter partes review as a superior way to demonstrate unpatentability.

But reexam filings have started to climb again. The older proceeding has emerged with new virtues for both challenger and patent owner in the jab and counter-jab of litigation and IPR. For challengers, for instance, ex parte reexam is a way to get additional prior art in front of the USPTO that the PTAB won’t include in an IPR, or to interpret the same prior art differently after the patent owner has taken a stand in response to an IPR petition. For the patent owner, reexam has emerged as a better place to amend claims than the PTAB. What’s more, those amended claims may be insulated from IPR from the same parties. According to the PTAB, amended or new claims inserted into a patent as part of a reexamination proceeding do not result in a “new patent” and thus the one-year bar erected by
35 U.S.C. § 315(b) continues to run from the date of an original suit against an accused infringer.

Our panelists analyzing reexam’s new role will be a law firm lawyer who has recently filed ex parte rexams on behalf of a challenger, an in-house counsel active in post-grant matters, and the former head of the USPTO’s Central Reexamination Unit.

Speakers:

Matthew Berkowitz, Kenyon & Kenyon LLP
Mollybeth Kocialski, Oracle Corporation
Lissi Mojica, Dentons US LLP




The USPTO Revised Patent Eligibility Guidance: Software and Information Technology

Webinar Date: 01/15/2015

On December 15 the USPTO issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Each of these webinar panels will bring together a senior counsel from the USPTO’s Office of Legal Administration with an in-house patent counsel at a major corporation and a law firm attorney who is an expert in that industry. The discussion will clarify the meaning of the new guidance, discuss which inventions are now more likely to be found patent eligible and how to write patent applications that clear current hurdles. The panelists will also consider the impact of subsequent appellate decisions such as the invalidation of Myriad patents in University of Utah Research Foundation et al. v. Ambry Genetics Corp.

Speakers:

Michael Cygan, USPTO
Bart Eppenauer, Shook, Hardy & Bacon LLP
Manny Schecter, IBM Corp.




The USPTO Revised Patent Eligibility Guidance: Life Science

Webinar Date: 01/14/2015

On December 15 the USPTO issued new “Interim Guidance” for determining whether claims are eligible for patenting under 35 USC § 101. Each of these webinar panels will bring together a senior counsel from the USPTO’s Office of Legal Administration with an in-house patent counsel at a major corporation and a law firm attorney who is an expert in that industry. The discussion will clarify the meaning of the new guidance, discuss which inventions are now more likely to be found patent eligible and how to write patent applications that clear current hurdles. The panelists will also consider the impact of subsequent appellate decisions such as the invalidation of Myriad patents in University of Utah Research Foundation et al. v. Ambry Genetics Corp.

Speakers:

Life Science Speakers (Jan. 14):
Raul Tamayo, USPTO
Deborah Martin, Pfizer, Inc.
Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP