Drafting Patent Applications to Survive Inter Partes Review Challenges

About the Course:

Few patents subject to Inter Partes review (IPR) invalidity attempts remain unscathed. Learn best practices for drafting and prosecuting patent applications to survive the Inter Partes review gauntlet. If you hold (or draft) patents that are being (or may be) infringed, you really should listen to this webinar.

The following are among the issues discussed in this crucial webinar:

• In view of potential IPR challenges, what are the merits of pursuing somewhat longer and more contentious prosecutions?
• Should potentially troubling prior art be brought to the examiner’s attention during prosecution?
• Does the risk of IPR generally elevate the merits of including means-plus-function claims in the claims set?
• What are “picture claims” and “nested claims”? Should they be included in claims sets?
• What are the pros and cons of amending claims during an IPR proceeding from the patentee’s point of view?
• Can inventor declarations help patents sustain IPR invalidity challenges?
• Should dependent claims be integrated with independent claims?
• Why is it generally preferable for a patent to contain more claims than fewer claims in the context of IPR risks?
• Should examples be included in specifications?
• How can continuations be used to mitigate IPR invalidity risks?

Course Leaders: Heather L. Flanagan PhD.,Principal, Fish & Richardson P.C

Dr. Heather Flanagan pairs her strong scientific background with her experience in intellectual property to provide strategic, client-centered service. From patent prosecution and counseling to opinions and due diligence, with an emphasis on development and management of patent portfolios, her robust, value-driven approach stands out.

Start-ups, academic and research institutions, and Fortune 500 companies turn to Dr. Flanagan to protect their innovations in chemistry and related fields, including food additives and nutraceuticals, consumer products, petrochemistry, polymers, nanotechnology, and renewable energy. She has a particular interest in advanced materials, including electronic, energy, engineering, functional, healthcare, optical, and sustainable materials.

Dr. Flanagan has previous law firm experience in patent prosecution, with emphasis in the areas of petrochemistry and medical devices. Prior to joining Fish, she was Director of Intellectual Property and Grants at LabNow, Inc., a start-up that licensed medical device technology from a major research institution.

Dr. Flanagan earned a B.S. from the University of Georgia in chemistry, a PhD. in physical chemistry from Harvard University, a M.B.A. in decision and information sciences from the University of Florida, and a J.D. from the University of Texas Law School.

Course Length: Approx. 1 hours

$175.00 PER USER