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
- Stephen Bauer, Medtronic
- Jim Denness, Abel & Imray
- Toby Mak, Tee & Howe Intellectual Property Attorneys