The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Proactive Patent Procurement and Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges Insulating Your Patent Portfolio From New Threats Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific THURSDAY, OCTOBER 8, 2015 Presenting a live 90-minute webinar with interactive Q&A Margaret A. Focarino, Senior Patent Advisor, Oblon McClelland Maier and Neustadt, Alexandria, Va. Scott A. McKeown, Partner, Oblon McClelland Maier & Neustadt, Alexandria, Va.
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The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Proactive Patent Procurement and
Prosecution Strategies: Minimizing
the Threat of Post-Grant Challenges Insulating Your Patent Portfolio From New Threats
Breadth/Infringement Drives prosecution – Over-reaching on scope – Avoiding summary judgment – Reexam too slow to matter – Leverage of cost and time (trolls) – Clear and convincing – Presumption of validity – Non-technical juries
Continuation estoppel 42.73(d)(3)(i) Patent applicant or owner. A patent applicant or owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct to a finally refused or cancelled claim ; . . .
Amendments very limited before PTAB – Wild West days of reexam are over
Motion…not “Amendment” – Burden on movant….tables turned
Strict showings • One-for-one replacement only • Must amend or lose opportunity for continuations • Could devastate large continuation investments • Co-pending reissue/reexam? • Single success to date (contested)
Target overreaching on 102 for litigation TSM test may not be dead!
– Capitalize on diminished resource – Don’t make silly arguments
Target overreaching on non-infringement Above all: Understand your audience Understand the clock Forum shop with an eye toward PTAB tendencies Understand Panel tendencies
Patent owner friendly – Patent Owner can conduct interviews with the
examiner – No opportunity for challengers to participate
Examination limited to prior art issues, which is especially useful in certain technology areas – No review of patent eligibility under §101 – Only consider §112 on amendatory language
Create record that can be used by patent owner in response to an IPR petition
– MPF claims!! – Specification Definitions – Artful presentation of business methods – Quality, bullet claims….not broad over reaching – Reissue the new continuation?
– Incorporation by reference of prior art, including your own!!
Include enabling support for multiple embodiments – Boilerplate statements regarding alternatives may not be enough – Increases the opportunities to ensnare followers – More likely to have support for claims that are patentably distinct
Include a wide range of examples within embodiments – Preserve your flexibility for claims in later applications or
There are limits on what is “reasonable” under the broadest reasonable interpretation
Prosecution history can be favored over extrinsic evidence, such as dictionary definitions, when the extrinsic evidence is inconsistent with the intrinsic evidence
Don’t just amend – See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed.
Cir. 2014); see also In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
Create portfolio diversity with several related but patentably distinct families covering various unpredictable elements of invention – Be sure to have enabling, descriptive support
for earliest possible priority date – Priority to multiple provisional applications
More patentably distinct claim sets in different families decreases likelihood of Continuation Estoppel