International Post Grant Practice: Strategic Considerations Before the USPTO, EPO and CNIPA

Recorded On: 01/03/2019

This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.  It will also review effective defensive strategies for patent owners, both in patent drafting and in litigation.  With U.S. inter partes reviews (IPRs) and post-grant reviews (PGRs) under the AIA, U.S. post-grant practice has joined European Patent Office opposition as a key component of global IP strategy.  Meanwhile, interest in China as a venue for patent litigation continues to grow.

Coordinating post-grant challenges overseas effectively requires a detailed understanding of the variations between systems.  For instance, some have noted that in Europe and China, opposition can be used with little risk as a testing ground for the presentation of arguments that could be used in litigation.  But a substantial limitation of an EPO opposition is that it must be filed within 6 months of a patent being granted.  By contrast, in China, a petition to invalidate a patent can be brought at any time after grant. 

Our expert panel includes an in-house counsel who oversees post-grant challenges at a U.S. technology company, a European patent attorney who often practices before the EPO, and a Chinese patent attorney with varied experience before SIPO (now known as the China National Intellectual Property Administration or “CNIPA”).  They will discuss:

  • Considerations in deciding where to bring an overseas challenge ‒ and in what order proceedings should be brought
  • Monitoring competitors’ patent issuance, internal product launch considerations, and the desire for freedom to operate
  • The potential ramifications of translation errors in Chinese patents
  • The impact of shrinking patent pendency at the EPO
  • Specific techniques for strengthening patents against post-grant challenges in each jurisdiction

Speakers:

  • Stephen Bauer, Medtronic Inc.
  • James Denness, Abel & Imray
  • Toby Mak, Tee & Howe Intellectual Property Attorneys

Stephen Bauer

Medtronic, Inc.

is Senior Director of IP at Medtronic, where he has taken on growing responsibilities over 18 years.  In his present role, Steve is responsible for international IP and a range of strategic projects and initiatives.  Steve has closely managed numerous European oppositions and, as a member of a small team, has been involved with numerous IPR petitions, as well as preparation for oral arguments.  Previously, he worked at 3M.  Steve is co-chair of IPO’s International Patent Law & Trade committee.

James Denness

Abel & Imray

is a partner at Abel & Imray, an IP law firm based in the United Kingdom, where he leads the oppositions practice group. He is very experienced in patent prosecution work in the European Patent Office, in the U.K., and overseas. Jim has a significant case load of opposition and appeals work at the EPO, including cases involving related litigation in national courts. Jim holds a Ph.D. in Chemistry and is a member of IPO’s European Practice Committee.  He worked with senior EPO staff to present a workshop on opposition procedure at the 2017 IPO-EPO day.

Toby Mak

Tee & Howe Intellectual Property Attorneys

is a patent attorney at the Beijing-based IP law firm Tee & Howe.  He has substantial experience in both contentious and non-contentious matters, including those relating to prosecution, invalidation, and enforcement.  He is one of the authors of "Patent Law in Greater China," published with the EPO. He has a Ph.D. in Chemistry and has served many clients in different technical fields including power tools, semiconductors, adhesives, and video-on-demand. He is a member of IPO’s Asian Practice committee.

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Up to 1.00 CLE credits available  |  Certificate available Virginia has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the “claim credits” and then “view/print your certificate” for your records.