Motion to Amend Patent Practice: New USPTO Pilot Program, Updates to Amendment Precedent
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide patent counsel on at least the new USPTO pilot program for motions to amend and the PTAB's recent precedential decisions providing guidance on the statutory and regulatory requirements for a motion to amend. The panel will discuss what practitioners--whether representing petitioners or patent owners defending challenged claims--should consider relating to motions to amend.
Outline
- Pilot program for motions to amend
- New options
- What stays the same
- Guidance re: statutory and regulatory requirements for MTA
- Lectrosonics Inc. v. Zaxcom Inc.
- Amazon.com Inc. v. Uniloc Luxembourg S.A.
- Recent developments' impact on motions to amend practice
- Strategies for motions to amend
- Patent owners as petitioners
- Patent owners defending claims
Benefits
The panel will review these and other key issues:
- What changes will the new USPTO pilot program bring to motions to amend practice?
- How could the Lectrosonics and Amazon precedential decisions affect counsel's patent practice and patent owners' ability to get amended claims granted?
- What practical considerations should counsel keep in mind related to motions to amend?
Faculty
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
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. Mr. Irving has served as lead counsel in many patent interferences.
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J. Derek McCorquindale
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. McCorquindale focuses his practice on patent and other intellectual property litigation, at both the trial and... | Read More
Mr. McCorquindale focuses his practice on patent and other intellectual property litigation, at both the trial and appellate levels. He has experience in cases before federal district courts, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit, where he has contributed to numerous successful appeals and served as lead counsel.
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Barbara Clarke McCurdy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular... | Read More
Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission, and contested proceedings at the USPTO.
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