U.S. Patent Law and Practice

- Advanced seminar: obtaining and enforcing valuable patents
Innovative companies, large and small, use patents to protect their key inventions. Obtaining valuable patents, however, requires skilled patent counsel and an in-depth knowledge of the legal requirements for securing claims that are strategically useful to your company.

In this seminar, you will learn about recent developments in U.S. patent law and discover practical examples for patenting different areas of technology. You will also hear more about the different options available for challenging your competitors' patents. A review will also be provided of the top court decisions impacting licensing and enforcement actions. Finally, this seminar will offer the perspectives of an experienced in-house counsel from Yara International on U.S. patent issues.

Central topics:

  • New developments in US patent law since 2016, including updates on important US case law
  • Recent changes at USPTO that impact patent prosecution and enforcement strategies
  • Tactics for managing FTO projects and dealing with competitor patents

NB! The seminar will be conducted in English.

Programme

0830 - 0900
Registration, coffee/tea
0900 - 0905
Welcome

Bente Fjeldberg, Patentstyret

0905 - 1030
Strategic drafting for U.S. patent applications

Recent changes impacting U.S. patent prosecution and enforcement strategies

Timothy May and Charles Collins-Chase, Partners, Finnegan LLP

Tactics for different technology areas:
- Software
- Artificial Intelligence/Machine Learning
- Chemicals, Biosimilars and Pharmaceuticals

1030 - 1045
Coffee Break
1045 - 1200
Tools for challenging competitor patents and for correcting your own patent

Timothy May, Partner, Finnegan LLP

- Third-Party Preissuance Submissions at the USPTO
- AIA post-grant proceedings (PGR, CBM, IPR)
- Reissues and reexaminations as way to strengthen your own patent

1200 - 1300
Lunch
1300 - 1345
Tactics and developments for managing FTO projects

Timothy May and Charles Collins-Chase, Partners, Finnegan LLP

1345 - 1400
Norwegian industry perspective on managing U.S. prosecution and competitor issues involving U.S. patents.

Victor Urban, Vice-President Patents, Yara Int'l.

1430 - 1500
Coffee Break
1500 - 1600
New developments in US patent law, including updates on important US case law

Charles Collins-Chase, Partner, Finnegan LLP

- What are the top U.S. Supreme Court and Federal Circuit decisions?
- Exhaustion: Lexmark
- Infringement: Commil; SCA Hygiene; LifeTech
- Venue: TC Heartland
- Enhanced Damages: Halo; Stryker; Highmark; Octane

Key takeaways and practical tips.

1600 -
End of seminar

Speakers

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Timothy May

Timothy May is a partner in Finnegan LLP's Washington, DC office. He has more than 20 years of experience in the field of U.S. patent law—most through the numerous clients base in Europe. For many years, Tim was the firm's resident partner in Europe. His practice encompasses patent prosecution, patent litigation and IP management matters. He has handled over 50 post-grant and reexamination proceedings before the U.S. Patent and Trademark Office (USPTO). He also worked as a Patent Examiner at the USPTO. Given his strong technical background, his practice covers a variety of technologies, including software, medical devices, industrial equipment, semiconductor devices, and electronics.

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Charles Collins-Chase

Charles Collins-Chase is a partner in Finnegan LLP's Washington, DC office. He litigates in district courts and argues appeals at the U.S. Court of Appeals for the Federal Circuit, where he served as a clerk. With a chemical engineering background, he has particular expertise in pharmaceuticals, energy and renewables, and chemical products and has assisted numerous clients in Hatch-Waxman litigation. He has handled district court cases at every stage of litigation, from pre-litigation through discovery, dispositive motions, and trial. He has represented several branded pharmaceutical companies in Abbreviated New Drug Applications (ANDA) litigations under the Hatch-Waxman Act. Charles also has extensive experience in Federal Circuit appeals. Charles also serves as an adjunct professor for the Federal Circuit Practice Seminar at George Mason University's Antonin Scalia Law School.

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About Finnegan

Finnegan LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices all aspects of patent, trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation. Finnegan also represents clients on IP issues related to European patents and trade marks. Finnegan's commitment to quality is reflected in consistent top rankings by respected publications, including Intellectual Asset Management, Managing Intellectual Property, and The Legal 500 U.S. The firm also ranks as one of the nation's top law firms for overall diversity by Working Mother, The American Lawyer, and the Human Rights Campaign's Corporate Equality Index. For additional information on the firm, please visit www.finnegan.com.

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Victor Urban

Victor Urban is Vice President and Head of Patents at Yara International, a multinational fertilizer and industrial chemical company based in Oslo. Yara is rejuvenating its patent portfolio and saw its portfolio grow by 185 patents and patent applications worldwide in 2017. Originally from Canada, Victor brings an international perspective to this role having worked in Vancouver, London, Paris and Brussels as a qualified lawyer (British Columbia and California) and as a European Patent Attorney. In addition to patent drafting and prosecution, he has experience in developing and implementing patent strategies, multi-jurisdictional patent litigation, European oppositions, IP due diligence, and freedom-to-operate in a wide range of technical areas.

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Registration

Course Team

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