Intellectual Property Rights Protection

How to Maximize Global Patent Protection: Patent Filing Strategies

Synopsis

Dealing with patent prosecution worldwide comes with a multitude of issues. The presenters provide a wealth of information on a variety of topics including patent application proceedings in the U.S and Europe, as well as strategies based upon the PCT versus direct national filings.  They also provide helpful drafting tips to ensure patent application success.  

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Outline

I. Maximizing Global Patent Protection
    A. Introductions
    B. Patent Applications in the U.S. Market
        1. Prosecuted Throughout Many Different Countries
        2. Cleaning Up Foreign Drafted Patent Applications
        3. Application Requirements in the U.S. Patent Office
        4. Forward Thinking to What the Claims Might Be
        5. Other Drafting Tips
    C. European Patent Office Proceedings
        1. Amendments
        2. Wedges
        3. A Claim Example
        4. Lists of Features - It Can Pose a Problem
        5. Clarity
        6. Sufficiency
    D. Global Patent Filing Strategies Under the PCT
        1. Streamlining the Process
        2. Agreeing on the Objectives
        3. Filing Strategies
        4. The PCT Filing First Approach
        5. Filing a PCT Application and Provisional on the Same Day
    E. Application Drafting Considerations
        1. Some Final Thoughts
    AfterWords®



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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 16,000 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 45 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.
AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

 





Speakers / Authors:

Photo of Subroto Bose

Subroto Bose

Subroto Bose is Senior Director for Global Patent Strategy and IP Operations at Dolby Laboratories. Prior to joining Dolby he was Patent Counsel at Altera Corporation where he managed patent prosecution and director of IP at SuVolta, where he contributed to developing and executing the company’s patent filing strategy. Before joining SuVolta he worked on patent litigation and patent reexamination matters at several law firms.

Mr. Bose has extensive experience in patent litigation, patent prosecution, and patent reexamination proceedings. He has represented clients in patent litigation proceedings before the International Trade Commission (ITC) and federal district courts. He has also represented several defendants in filing reexamination petitions as part of a patent litigation defense strategy.

Mr. Bose worked for several years as a hardware and software developer, programmer, systems architect, and project manager prior to being admitted to practice law. He is named investor on 9 U.S. patents and several foreign patents.

Mr. Bose received his J.D. from Santa Clara University School of Law.

Photo of Susan Kirsch

Susan Kirsch

Susan Kirsch leads the Chemistry team at Carpmaels & Ransford LLP and has over 23 years of experience. Ms. Kirsch joined Carpmaels & Ransford LLP in 2000 and became a partner in July 2005. She is responsible for a number of portfolios for key clients including Johnson and Johnson Vision Care, Inc., Ethicon Inc., the Consumer Division of Johnson and Johnson and INVISTA S.à.r.l.

Ms. Kirsch has a very large opposition practice and frequently represents clients before the Opposition Divisions and Boards of Appeal at the European Patent Office in both Munich and The Hague. She was singled out in The Legal 500, 2013 for her success in such opposition proceedings.

Ms. Kirsch handles mainly chemical subject-matter, and has patent expertise in a diverse number of technologies including consumer products, catalysts, polymers, food science and technology, formulation chemistry, functional foods, stabiliser technology, flavours and fragrances, dyes and pigments, surfactant and surfactant systems and pharmaceuticals.

She has been involved in revocation and infringement actions in the High Court in the UK and also litigation in a number of other jurisdictions, including saisie proceedings in Belgium and cross-border injunction proceedings in the Netherlands.

Before joining Carpmaels & Ransford LLP, Ms. Kirsch worked for Unilever PLC, initially as a scientist in the Skin Research Department and then for approximately 10 years in the Patent Department, where she qualified as a European Patent Attorney and Chartered Patent Agent in 1994. While with Unilever, Ms. Kirsch worked within key product categories including the Detergent and Home Product, Personal Product and Food Categories. She therefore has considerable experience in all patent and related issues associated with the corporate environment.

Ms. Kirsch is a member of both the Chemistry and Food and Drug committees at AIPLA (American Intellectual Property Law Association) and she is also an active member and supporter of the AIPLA Women’s network and regularly attends the AIPLA meetings. She is a tutor for the European Qualifying Examinations and has tutored for CEIPI (Centre d’Études Internationales de la Propriété Intellectuelle) in Strasbourg since 1998.

Photo of Jeffry H. Nelson

Jeffry H. Nelson

Mr. Nelson prepares and prosecutes patent applications, litigates patent disputes, drafts and reviews licensing and assignment agreements, prepares opinions and conducts due diligence investigations on patent issues.

Mr. Nelson has been lead and second chair counsel in dozens of patent lawsuits, and taken significant roles in over 70 intellectual property lawsuits. Mr. Nelson has tried patent and copyright cases, presented at many summary judgment and Markman hearings, and presented oral arguments before the Federal Circuit.

Mr. Nelson handles matters involving mechanical and medical device technology, industrial control systems, industrial processes, computer software and website technology.

From 1983 to 1990, Mr. Nelson was a patent trial attorney with the U.S. Department of Justice. He was lead government counsel in over two-dozen patent and copyright actions, including a successful six-week trial that resulted in non-infringement judgment, a four-day copyright trial in which judgment was rendered for the government, many cases favorably resolved by summary judgment and settlement, and several appellate hearings before the Federal Circuit. During 1982-83, Mr. Nelson clerked for the U.S. Court for Federal Claims.

Mr. Nelson is admitted to practice in Virginia, the District of Columbia, and before the U.S. District Courts for the Eastern District of Virginia and the District of Columbia, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Patent and Trademark Office.

Mr. Nelson received his J.D. from the College of William and Mary in 1982, and his B.S.M.E., cum laude, from Virginia Polytechnic Institute and State University in 1979.

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Details

Course Code : 772500

Release Date: 12/08/2015


Length: 1hr 7min
Recorded Date: 10/23/2015


Format Type: eLearning
Mobile Compatible


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