Tuesday, 9/15 @ 9:30am PT
Strategic Worldwide Patent Prosecution
IP portfolios are increasingly global in nature, yet the laws governing patent prosecution are different all over the world. Although the USPTO issued 101 guidelines last year, 101 rejections continue to plague many companies. In China, 101 is not a problem, while Japan and Germany are both very consistent.
- When filing for patent protection in different countries, where should you file first?
- Multilateral applications: If the invention came out of one country, you must file an application in that country first. Then you must address export control issues. Cross border collaborations: If you have a Chinese inventor working with your U.S. inventor in the U.S. and no patent application has been filed, they are exchanging trade secrets. Is this considered an export? Is it coming out of China or the U.S.?
- How to write multilateral applications and meet the Alice requirements? How should you coordinate the different jurisdictions?
- How have different companies addressed 101 rejections? You can probably appeal the rejection, or wait for new caselaw that could potentially swing the pendulum to a point that is more favorable to the applicant.
- How are companies filing continuations? What to do if you receive a notice of allowance, but you do not have a target?
- How to slow down prosecution in the U.S.? Once prosecution begins, it can move very quickly. In other countries, the process is slower. In Canada, the examination process is bifurcated. You can file an application but not request examination for 5 years. In Germany, you can file an application but not request examination for up to 7 years from the filing date.
- How to patent AI-related inventions? How is the U.S. pushing U.S. and European patent offices to cooperate on training and the drafting stage, so that the process is smooth, from drafting to prosecution?
Speakers:
- Archana Bhuta, Head of IP Legal & Associate General Counsel, SRI International
- Stefano Karmis, Director, Office of Patent Quality Assurance, USPTO
- Thomas Malone, IP Corporate Counsel, DuPont Industrial Biosciences
- Mehul Shah, Senior IP & Patent Counsel, Juniper Networks
- Peter Su, Chief IP Officer, Moley Robotics
- Freddy Thiel, VP of San Francisco Liaison Office, Kilburn & Strode
- Thanh Vuong, Head of IP, Synaptive Medical