Optimizing Enforceable Patent Claim Scope, Minimizing Costs for Global Patent Portfolios
Protection Differences in Different Jurisdictions, Where and When of Claims Amendment, Cost Considerations
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course 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.
Outline
- Scope of protection and enforcement
- Claims amendment
- When
- Jurisdiction dependent
- Cost considerations
- 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
Dr. 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
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
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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
Ms. O’Flynn is a European and UK patent attorney with more than a decade of in-house experience, having worked at some of the world’s largest multinational corporations in the oil and chemical industries. She has worked for a range of clients, from startups to multinationals, covering diverse technologies such as cosmetics, sustainable chemistry, and catalysis.
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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
Mr. Tridico has worked in Europe for most of his career, gaining significant knowledge of the European Patent Convention (EPC) and the diversity of laws and practice among the European national systems. His knowledge of the various legal systems and how they differ from the U.S. allows Anthony to effectively counsel clients across life sciences industries with global interests in intellectual property.
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K. Victoria Barker, Ph.D.
Attorney
Finnegan Henderson Farabow Garrett & Dunner
Dr. Barker is a Chartered UK and European patent attorney with experience in all areas of patent portfolio management... | Read More
Dr. Barker is a Chartered UK and European patent attorney with experience in all areas of patent portfolio management from drafting and filing applications to prosecution strategy and beyond to EPO opposition and appeal procedures. Her experience spans a broad range of chemical technologies and key jurisdictions including China, Japan, and Korea. Having worked on numerous global patent families Dr. Barker is well-practised in both developing and implementing a worldwide prosecution strategy that meets the requirements of local patent offices and the needs of clients.
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