Advanced AIA Issues for Patent Claim Construction: Best Practices Absent Clear Court Guidance

Recording of a 90-minute CLE webinar with Q&A


Conducted on Wednesday, April 23, 2014

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel regarding the impact of the Leahy-Smith America Invents Act (AIA) on claim construction and offer best practices for addressing claim construction issues in light of the AIA.

Description

The expanded definition of prior art and the elimination of the interference practice are among the AIA's most important changes for IP owners and counsel.

While the AIA did not adopt claim construction procedures as used by many federal courts, it does impact claim construction. For example, counsel needs to be mindful of the interplay with litigation and choice of law due to changes in post-grant proceedings and during the long transition.

What are the benefits and risks for new claims in a continuation application? The applicability of AIA over pre-AIA depends on effective filing dates (EFD) of claims. If a claim is given its broadest reasonable construction during prosecution, what impact will that claim construction have on EFD and choice of law?

Listen as our authoritative panel of patent attorneys examines the AIA's implications for patent claim construction. The panel will divine best practices for patent counsel in light of AIA and the reality that, until courts begin to construe the statutory provisions of AIA, patent counsel should consider conservative approaches as they necessarily labor in the dark until the law is clarified.

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Outline

  1. Changes resulting from AIA and implications for claim construction
    1. Changes related to post-grant proceedings
    2. Prosecution changes
  2. Best practices in light of AIA
    1. First-to-invent implications for claims with pre-March 16 EFD
    2. Perils of new claims in a continuation application regarding choice of law
    3. Benefits of new claims in a continuation application regarding choice of law in view of transitional applications
    4. Broadest reasonable claim construction

Benefits

The panel will review these and other key questions:

  • What are the changes resulting from the AIA and the implications for claim construction?
  • What is the impact of claim construction on choice of law?
  • What are the benefits of new claims in a continuation application regarding choice of law in view of transitional applications?
  • Can the choice of law change when a district court judge construes the claim in such a way that the EFD changes?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Colin G. Sandercock
Colin G. Sandercock

Partner
Perkins Coie

Mr. Sandercock practices in the areas of patent litigation, procurement, management and enforcement of domestic...  |  Read More

Lauren L. Stevens, Esq.
Lauren L. Stevens, Esq.
Global Patent Group

Ms. Stevens practices strategic client counseling and patent procurement in the pharmaceutical area, including the...  |  Read More

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