US Caselaw Update and Strategies for Amendment Practice (Plus Interactive Q&A)

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While our fall seminars cannot be conducted in person this year, we are pleased to offer an online seminar with interactive Q&A sessions and look forward to connecting with each of you in this new format. We are offering three dates for this seminar to promote smaller and livelier sessions. All technologies will be covered in each session, so please join us for whichever date works best with your schedule.

In this seminar, we will examine amendment practice at the USPTO and how it differs from EPO practice and strategies. Using recent court decisions and practical examples, we will explore the more “liberal” approach in the US for making claim amendments and also point out unique pitfalls, such as with establishing “possession of the invention” at the time of filing and claim construction disputes after the patent is granted. The goal of this seminar is to teach you to think more like a US patent attorney when formulating amendments and to employ the best strategies to obtain valuable claims for enforcement.

More specifically, we will discuss:

• Recent Decisions and Technology-Focused Examples for Amending Claims:
• Satisfying eligibility standards under Section 101
• Navigating indefiniteness under Section 112
• Avoiding broad functional language and means-plus-function issues
• Mining the specification for potential U.S. amendments:
• Can you rely on the original claims?
• Can you choose from lists?
• Can you rely on the examples?
• Understanding U.S. claim construction issues and pitfalls
• Taking advantage of post-grant amendment options

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Speakers:
Michele C. Bosch
Bryan C. Diner
C. Gregory Gramenopoulos
Timothy J. May
Amanda K. Murphy, Ph.D.
Anthony C. Tridico, Ph.D.