under the Complex Rules
CD of Teleconference with Q&A
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Intellectual Property Teleconference Advisory Board
The U.S. Patent and Trademark Office (USPTO) published significant changes for continuation and claim examination practice on August 21. These complicated rules will impact both IP rights and strategy. IP counsel should consider the effect of these rules on their client’s or company’s patent portfolio management and patent litigation strategies.
Although the continuation rules are effective as of November 1, the rules concerning the number of claims in an application also impact pending applications that have not received a first office action on the merits.
Listen as our panel of IP specialists examines the new rules package, the implications of these rules, and strategies for dealing with the changes.
Our panel included:
Stephen G. Kunin, Special Counsel, Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va. He is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office and has over 30 years of expertise in intellectual property rights protection. He participated in the establishment of patent policy under the Commissioner for Patents, including changes in patent practice and revision of rules of practice and procedures.
Marc E. Brown, Partner, McDermott Will & Emery, Los Angeles. He heads the Patent Procurement Practice in the firm's L.A. office and focuses on computer hardware, software, the Internet, electronics and biomedical devices and handles high-technology litigation. He represents clients in the procurement, evaluation and enforcement of high-technology patents, trademarks, trade secrets and software copyright. He negotiates and drafts technology-based agreements.
Bernard Codd, Partner, McDermott Will & Emery, Washington, D.C. He focuses on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies. Prior to joining the firm, he was a primary patent examiner with the U.S. Patent and Trademark Office, in the photolithography, electrophotography, semiconductor, and photovoltaic arts.
The panel reviewed these and other key questions:
- What should counsel and IP owners know about the most significant changes the USPTO put into place?
- What will be the practical and immediate impact of the new rules for IP owners and counsel?
- What new strategies should counsel consider and implement in dealing with the USPTO under the new rules?
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