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US Law: PTAB Strategies and Considerations for UK and European Practitioners

24Jan

Effectively coordinating a post-grant challenge or defence against a post-grant challenge in the U.S. from overseas requires an up to date understanding of relevant procedures and considerations, as well as how these differ from local practice. In this webinar, Amanda Murphy and Darren Jiron of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP will provide an overview of post-grant challenges and procedures in the U.S. The following topics will be addressed:

1. PTAB updates and practice tips
2. Comparison of strategies for U.S. PTAB challenges and European oppositions
3. Post-grant correction of U.S. patents

 

Audience

All

Speakers

Darren M. Jiron, Finnegan

Darren M. Jiron, Finnegan

With extensive experience in both patent procurement and patent litigation, Darren Jiron focuses on strategic patent portfolio development. He has a special interest in helping high-tech and fast-growing companies craft patent plans to block competitors and build corporate value, working closely with clients to ensure their patents align with and support their business goals.

In his role as managing partner of Finnegan’s London office, Darren relies on the firm’s full-service intellectual property capabilities across Europe and the United States to build integrated teams of attorneys who address all aspects of clients’ needs. He is an active member of Finnegan’s Israel practice, and he previously served on the firm’s management committee.

Darren is skilled in defensive and offensive patent portfolio assessment, patent validity and infringement opinions, due diligence, freedom-to-operate studies, patent portfolio management, patent litigation, and patent prosecution. He has devoted more than half of his career to handling contentious IP matters—key experience he relies upon in developing patent strategies. He represents clients in all phases of patent litigation before numerous U.S. district courts and the U.S. International Trade Commission (ITC). He also leads review proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) and has extensive experience in the strategic use of patent reexamination and post-grant review in conjunction with parallel litigation.

Darren’s technical experience covers a wide range of technology areas, including machine vision, autonomous vehicles, optics, software and sensor-based control systems, user interfaces, medical devices, artificial intelligence, machine learning, computer architecture, consumer electronics, advanced materials, composites, semiconductor design and fabrication, solid-state lighting, batteries, display devices, and green energy technologies. He previously served as a USPTO examiner, and he gained industry experience as a project engineer engaged in research and development of advanced materials systems, composites, controls systems, and electro-mechanical devices.

Darren is a frequent speaker on patent law. Topics he presents include the importance of strategically developed patent claims; unified EPO-U.S. application drafting techniques; accelerated examination strategies; and subject matter patent eligibility with respect to software and electronics technologies.

Amanda K. Murphy, Finnegan LLP

Amanda K. Murphy, Finnegan LLP

Amanda Murphy, Ph.D., brings over 19 years of experience to her life sciences intellectual property practice. As a U.S. patent attorney practicing in London, Amanda focuses on developing patent filing and prosecution strategies tailored to clients’ worldwide business goals. Her practice includes patent application preparation and prosecution, pre-litigation portfolio and due diligence analyses, and contentious PTAB proceedings.

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