Optimizing Enforceable Patent Claim Scope, Minimizing Costs for Global Patent Portfolios

Protection Differences in Different Jurisdictions, Where and When of Claims Amendment, Cost Considerations

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, January 19, 2021

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, December 18, 2020

or call 1-800-926-7926

This CLE webinar will guide patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities outside the U.S. The panel will discuss optimizing enforceable claim scope while minimizing costs for the patent portfolio, focusing on “the big five” jurisdictions (U.S., EPO, Japan, China, and Korea). The panel will offer practical examples and approaches and will discuss the implications for enforceable claim scope.

Description

Companies must be prudent when determining IP budgets. They must maximize the value of their patents while ensuring that the patents meet the company's objectives.

Operating in the global marketplace, companies should consider seeking patent protection outside the U.S. if there is any possibility of use, manufacture, or sale of the patent's technology outside the U.S. Even without potential use, manufacture, or sale outside the U.S., companies should explore whether seeking protection outside the U.S. can add value to its IP portfolio by blocking competitive activities that may ultimately reach the U.S.

The strongest global patent protection considers competitors' business and location, and the patent claims that provide the most value in each jurisdiction.

Listen as our authoritative panel of patent attorneys examines optimizing enforceable claim scope while minimizing the patent portfolio costs. The panel will focus on key patent jurisdictions, including the U.S., EPO, Japan, China, and Korea. They will provide practical examples and approaches and will discuss the implications for enforceable claim scope.

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Outline

  1. Scope of protection and enforcement
  2. Claims amendment
    1. When
    2. Jurisdiction dependent
  3. Cost considerations
  4. Best practices

Benefits

The panel will review these and other key issues:

  • How the protection afforded by different claim types varies in different jurisdictions
  • How many claims (category, scope, independent) are needed to ensure adequate protection
  • Amending claims during enforcement proceedings and implications for dependent claim strategies

Faculty

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

O’Flynn, Maeve
Maeve O’Flynn

Partner
Finnegan Europe

Ms. O’Flynn is a European and UK patent attorney with more than a decade of in-house experience, having worked at...  |  Read More

Tridico, Anthony
Anthony C. Tridico, Ph.D.

Partner
Finnegan Europe

Mr. Tridico has worked in Europe for most of his career, gaining significant knowledge of the European Patent...  |  Read More

Barker, K. Victoria
K. Victoria Barker, Ph.D.

Attorney
Finnegan Europe

Ms. Barker is a Chartered UK and European patent attorney with experience in all areas of patent portfolio management...  |  Read More

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