Challenging patents involving unpredictable technologies for obviousness is particularly difficult due to the well-established factor of “reasonable expectation of success” and the related KSR factor of “limited number of predictable solutions”. This webinar, presented by attorneys that have successfully argued on both sides of this issue for chem/pharma/bio patents, will discuss two to three leading PTAB decisions, including related appeals, that illustrate when obviousness challenges have and have not been successful. The case discussions will provide (1) a summary of the documentary evidence relied on, including critical excerpts from that evidence, (2) a summary of the “story” that was being told by each party and (3) the role that expert testimony appeared to play in the PTAB decisions. This one-hour seminar will also briefly explore what types of cases are better challenged in court and what types of cases are better challenged at the PTAB. The goals of the seminar are to allow parties to evaluate the chances of success for a contemplated or recently filed PTAB challenge and to help parties to a PTAB proceeding develop a record to support their respective positions. CLE available.Read more >
Are European companies equally successful when filing at the USPTO as their US counterparts? What is their biggest threat when filing a patent application at the USPTO?
In this webinar we will use statistics on art units, examiners, Office actions, RCE’s and law firms to tell you a real story on how the USPTO works and how you can benefit from this knowledge.
When the Federal Circuit last year effectively struck down the portion of section 2(a) of the Lanham Act that bars so-called ‘disparaging’ trademarks in the US, it paved the way for a potential Supreme Court review of the issue. In this webinar, we discuss the implications of the decision, the case that prompted it, The Redskins, The Slants and other potentially ‘disparaging’ trademarks, and the implications for US practice. Robert Kenney and John Ferman from Birch Stewart Kolasch & Birch and Professor Steven D. Jamar from the Howard IP Program are joined by Peter Scott, to consider this controversial issue. We hope you’ll join us for a lively debate.
9.00am Opening Remarks- James Nurton, Managing Editor, MIP UK
9.10am Key Note Address-Robert Armitage, Senior VP and General Counsel, Eli Lilly
9.30am Roundtable: AIA rulemaking overview
• Where are we now? Update on the rulemaking progress
• Demystifying the latest developments and their implications for patent owners
• Anticipating the introduction of Supplemental Examination
• A guide to the USPTO practice reforms and the effects on US companies
With a House of Representatives vote on patent reform looming, patent owners and practitioners must consider what legislative changes such as a first-to-file system, new post-grant review procedures and an end to fee diversion will mean for them in practice.
In this live interview, Eileen McDermott will pose your questions about patent reform to USPTO director David Kappos. Submit your questions for Kappos anonymously when you register for this free webinar, which is the first in a series of webcasts examining impending changes to the US patent system.
Tune in to Managing IP's patents channel on Tuesday October 13 at 3pm EST, when Eileen McDermott will interview USPTO director David Kappos in one of his first live interviews with the press about his plans for the examiner count system, his decision to rescind the controversial claims and continuations rules, the administration’s views on patent reform legislation and more.Read more >
Discussion about overcoming Alice. Giving perspectives and asking whether there is light at the end of the tunnel. Panel members are experts in the market in the United States.Read more >
The Shield Act is “entirely unnecessary”; the America Invents Act was a missed opportunity; and two recent US Supreme Court decisions were “extremely poorly reasoned and very harmful to a well-functioning system”
Judge Michel speaks candidly about some of the frustrations he has experienced since stepping down from the bench in order to be free to engage fully in patent debates. In particular, he describes how he testified before a Congressional subcommittee – and the members seemed not to care that he was (perhaps uniquely) a neutral witness, with no axe to grind.
Now legislators are talking about further changes to the patent system, with specific proposals in the so-called Shield Act. But Michel says the Act proposed “would do vastly more harm than good and is entirely unnecessary”. Interfering with judges in the ways proposed in the Act would be a “threat to justice” says Michel, adding that the problems with the patent system are that it is too slow, too unpredictable, too expensive and too disruptive – and solving them means investing in the USPTO (probably by paying examiners more).
As he says in the video, Michel is at liberty to speak out now he is retired, but I suspect his concerns are widely shared in the judiciary. During the Forum, I moderated a panel that included Michel’s successor as Chief Judge, Randall Rader: when I asked him directly if new legislation (such as the Shield Act) were needed, he said emphatically “No” and argued that parties and judges already have the tools they need to deal with abusive and expensive litigation.
I suspect the response from those who feel they have been victims of patent trolls will be: if district court and appeal judges really can deal with abusive litigation, then they should do so. This might involve acting tougher with vexatious plaintiffs and being more willing to award costs in appropriate cases. Maybe we need to see a bit more judicial activity here?
Managing IP’s next webinar, run in cooperation with Birch Stewart Kolasch Birch LLP, will take place on May 12 at 4pm (eastern standard time); 1pm (pacific standard time) and will discuss ‘Pitfalls in Post-Grant Trials’.
The popularity of USPTO post-grant patent trials have only increased. Whether the PTAB institutes an inter partes review, a post-grant review, or a post-grant validity review of qualified business method patents, each trial has procedural pitfalls with considerable strategic considerations during the Second Phase of the trial (from the institution decision to the final written decision by the Board). This webinar will explore the most common mistakes the third party petitioner or patent owner during the 2nd Phase, with an explanation of key decisions by the PTAB (including those posted on the USPTO microsite) as well as the Federal Circuit. The focus will be on discovery, the patent owner motion to amend, oral hearing, and estoppel.
•Michael Loney, Americas editor, Managing IP (moderator)
•Eugene Perez, partner, Birch Stewart Kolasch Birch LLP
•Gerald Murphy, partner, Birch Stewart Kolasch Birch LLP
With post-grant trials becoming increasingly popular, having an in-depths understanding of the pitfalls and challenges is essential for sustaining a strong presence in the market place. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
This webinar relates to our April 16 discussion focusing on ‘Pitfalls in the first phase of Post Grant Proceedings’. You can listen to it here: https://www.brighttalk.com/webcast/327/149005
Managing IP’s next webinar, run in cooperation with Birch Stewart Kolasch Birch LLP, will take place on April 16 at 4pm (eastern standard time); 1pm (pacific standard time) and will discuss ‘Pitfalls in Post-Grant Proceedings’.
With the passage of the America Invents Act in 2011, the number of filings for USPTO post-grant patent trials has dramatically increased. Whether it is an inter partes review, a post-grant review, or a post-grant validity review of qualified business method patents, each PTAB trial has procedural pitfalls with considerable strategic considerations, even before the PTAB makes an institution decision (also known as the First Phase of the trial).
This webinar will explore the most common mistakes for the third party petitioner and patent owner made during the 1st Phase, with an explanation of key decisions by the PTAB (including those posted on the USPTO microsite) as well as the Federal Circuit. The focus will be on the real party in interest requirement (including privity), joinder and claim construction (interpretation) using the broadest reasonable interpretation standard.
•Michael Loney, Americas editor, Managing IP (moderator)
•Eugene Perez, partner, Birch Stewart Kolasch Birch LLP
•Gerald Murphy, partner, Birch Stewart Kolasch Birch LLP
With post-grant proceedings becoming increasingly popular, having an in-depths understanding of the pitfalls and challenges is essential for sustaining a strong presence in the market place. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
Also, don’t forget to mark your calendar for May 12, when we will follow up with a second webinar on ‘Pitfalls in Post Grant Trials’.
After the Supreme Court’s decision in Prometheus and its vacatur and remand of the Myriad decision, the question of what constitutes patent eligible subject matter continues to pose a challenge to courts, the PTO and practitioners. This webinar will address the impact of the Prometheus decision on the eligibility question including what guidance it may provide with respect to the eligibility of gene patents, how the PTO is likely to react to the decision and the impact the decision will have on the medical field.Read more >
Battery technology powers devices around the globe and innovation are key to the power and storage economy. The use of big data is ubiquitous. Watch this webinar to learn how you can use big data to your advantage in patent prosecution for the dynamic and swiftly changing field of batteries.Read more >
Join RWS inovia, Minesoft & Managing IP Magazine for a complimentary webinar on March 30, 2017 at 3pm GMT/ 10am EST, as we review challenges and solutions associated with patent searching in China, Taiwan, Japan and South Korea. The webinar will also discuss filing trends in Asia compared to strategies in the West.Read more >
Patent Quality. It is not as common as you might think!
Getting your patent applications right matters more than anything else you will do in patent prosecution. If you start out with a bad quality, you will likely never end up good … with potentially disastrous consequences to your company or client. In this webinar we will discuss how you can improve your patent application drafts utilising the many special tools available in the LexisNexis PatentOptimizer® solution. We will focus on some of the unique aspects of PCT and EPO practice, provide some contrast to US practice, as well as call out some of the major pitfalls encountered in all three offices. Even if you are not a current subscriber to the PatentOptimizer solution, you are bound to learn something of value for your practice.
The IP Stars researchers will provide information on this year's research process, which begins in September, and answer questions from IP practitioners and business development executivesRead more >
Even if you use commercial patent research tools, you're likely still use free tools. How do you maximize your utilization of these tools to get the best of both worlds? We review coverage, results and feature functionality of both sets of tools, and reveal a newly launched tool that brings a whole new experience to the world of patent research.Read more >
Second webinar to follow up on earlier talks about Alice rejections: How do you draft applications to lay the foundations to overcome Alice?Read more >
The Defend Trade Secrets Act of 2016 provides the first federal civil cause of action for trade secrets misappropriation. Join us for a discussion of the cases filed under the new statute and an exploration of the emerging legal and strategic issues facing DTSA litigants.
Topics to be addressed by the panel include the identification and management of trade secret assets to avoid their misappropriation; the strategic considerations for referring a trade secrets case to the criminal authorities after a breach has occurred; the primary differences between litigating trade secrets claims under state and federal law; and a review of the first wave of cases being filed under the new federal statute.
Patent litigation and trials present unique challenges and opportunities for universities and other academic institutions. The panel will discuss these unique circumstances in depth, including national data on university patent litigation, effective university trial themes, PTAB validity challenges, university standing in patent infringement litigation, the assignment versus license of patent rights, and the enforcement of running royalty provisions. In addition, the panel will give an overview of successful enforcement actions brought by prominent academic institutions in federal court and the ITC, and provide the trial lawyer's perspective regarding what made these actions successful.Read more >
On June 13, 2016, the United States Supreme Court decided that the two-part Seagate test being used to decide whether or not an infringer is subject to enhanced damages was inconsistent with the statutory authority (35 U.S.C. §284) relied on for those claims. How has that decision impacted the District and Federal Circuit Court rulings?
Join Fitzpatrick and Managing IP for a complimentary webinar as we discuss Halo and the impact it has had on claims made under §284 in the district courts since June.
The webinar will be moderated by Michael Loney, Americas editor at Managing IP, and will feature Michael McGraw and Zachary Garrett, attorneys from Fitzpatrick, as they discuss the following topics:
- The end of Seagate and the Federal Circuit’s two-part test
- Halo and the current standard for enhanced damages
- Impact on the District Court cases following Halo
- Impact on the Federal Circuit cases following Halo
Join RWS inovia and Managing IP Magazine for a complimentary webinar as we discuss Brexit and implications for the Unitary Patent (UP), the Unitary Patent Court (UPC) and other important patent related issues.
The UP was established with the intent of providing a single European patent covering 26 nations. With the recent vote for Brexit, there is uncertainty as to when and how the UP will come into force. If it does, it may not include the UK, one of the largest economies in Europe.
How will this affect your patent portfolio? Join us for the discussion!
The webinar will be moderated by James Nurton, managing editor, Managing IP and will feature Reinhard Ottway, CEO of RWS Group, Gary Smith, former Director of the PCT at WIPO, and Justin Simpson, Founder of inovia as they discuss the following topics:
Following Brexit what are the implications for the UK, Europe, and beyond?
How will this affect your filing and enforcement strategies?
How will this impact the cost of receiving patent protection?
An in-depth discussion and update on the federal Defend Trade Secrets Act of 2016 that became effective on May 11, 2016 including a review of the key provisions of the DTSA and the nexus to the Uniform Trade Secrets Act (UTSA) and the Economic Espionage Act of 1996 (EEA).
This webinar will include the following topics:
•History of the DTSA
•Analysis of the Uniform Trade Secrets Act and the Economic Espionage Act (EEA) Interface With the DTSA
•Ex Parte Seizure Provisions of the DTSA
•Extraterritorial Jurisdiction and RICO Predicate Acts
•Litigation Strategies: Plaintiff’s Perspective
•Litigation Strategies: Defendants’ Perspective
•Immunity and Whistleblower Provisions
•Interface With Criminal Violations of the EEA
R. Mark Halligan, FisherBroyles
Mark L. Krotoski, Morgan, Lewis & Bockius
Linda K. Stevens, Schiff Hardin
Peter J. Toren, Weisbrod, Matteis & Copley
A discussion of an insightful statistical analysis of IPR and CBM trials at the PTAB. The analysis avoids pitfalls that obscure true picture of PTAB proceedings. More importantly, the discussion will address how the statistics should shape your PTAB trial strategies.
This webinar will cover topics including:
• A Dive Into Key PTAB statistics
• Overall success rates, on a claim by claim basis
• Comparisons of success rates for statutory grounds
• Trends in institution rates
• Comparisons to district court success rates
• Differences in technology areas
• The likely reasons behind the numbers
• A glimpse into the future
Managing IP, in association with the Managing IP Women in IP Global Network, invites you to join a free web seminar focusing on leadership in the IP professions.
This webinar will cover:
•Attributes that make a good leader
•Formal leadership schemes
•Preparing for a leadership role
•How to engage mentors to aid you in your journey as a leader
•Tracking your progress
The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
Broadcasting live from the MIP Africa Roadshow taking place on April 6 in New York, this 60 minute webinar will discuss the vastly different approaches needed to effectively protect your IP rights in Africa.
•The last frontier: How African laws and systems are evolving in an ever-changing world
• Adopting strategies for protecting and enforcing IP rights in Africa – unique challenges
• Navigating vastly different approaches across territories in order to effectively protect IP rights
• Gaining traction from the significant economic improvements that have occurred in many
Presenters: Simon Brown, partner and chair of trade marks department, Adams & Adams; Kevin Curran, global IP counsel, Ascensia Diabetes Care; Charles Macedo, partner, Amster Rothstein & Ebenstein; Jenny Pienaar, partner - trade mark litigation, Adams & Adams; James Nurton, managing editor, Managing Intellectual Property.