Appeals, Reexaminations, Reissues, Oh My: Strategic Considerations

Acquiring meaningful issued claims from the U.S. Patent and Trademark Office (USPTO) is a challenge. Often, USPTO examiners request—in exchange for an allowance—claim amendments that can narrow and diminish the potential value of the claims. If an agreement cannot be reached, the only available option may be filing an appeal. At that point, applicants are confronted with several decisions, such as whether to file a pre-appeal brief to the Examining Corps or proceed straight to the Patent Trial and Appeal Board (PTAB).

Our speakers will address pre-grant considerations and strategies for navigating applications through PTAB appeals, as well as post-grant considerations and strategies for selecting an appropriate proceeding and navigating your claims through the selected proceeding.

Please join us for a practical discussion on topics that include:

• Tips for setting up an appeal
• Considerations on whether to pursue a pre-appeal brief
• Strategies for appealing to the PTAB
• Alternatives to appealing, such as continuation and divisional applications
• Post-grant options for updating claim scope
• Strategies for navigating your claims through post-grant proceedings

This webinar is the third and final segment of Finnegan’s summer 2015 series, “Innovate Your U.S. Patent Prosecution: Today’s Techniques and Considerations.”

Moderator:
Ningling Wang

Speakers:
Adriana L. Burgy
Aaron J. Capron

Date:
Thursday, August 20, 2015

Time:

7:30 - 8:30 a.m. India
10:00 - 11:00 a.m. China/Taiwan
11:00 a.m. - 12:00 p.m. Japan/Korea