Since considerable time can elapse between grant of a patent and litigation to enforce it, it may be desirable to amend the patent before litigation, due to new developments in case law, prior art that has come to light since grant, or possibly decisions issued on corresponding patents in other jurisdictions.

We asked session moderator, Jill Browning, for an insight into the session "Amending your patent – can it be done prior to or during litigation?" and speakers.

Jill is a Member of FICPI's Group 5 Study & Work Committee on Biotechnology and Pharmaceuticals, and Managing Partner at Greenblum & Bernstein. She is also Co-chair of the G&B litigation group and head of the Trademark Department. She has significant experience representing clients in all phases of patent disputes, and understands the importance of thinking outside the box to find common ground and reach amicable solutions to disputes when possible. 

As worldwide enforcement strategies grow in importance, this session will help practitioners understand the different ways in which they may be able to handle the need for claim amendments, should they arise, in the various jurisdictions as well as the possible repercussions.

You can hear the session "Amending your patent – can it be done prior to or during litigation?" at the 2023 FICPI Open Forum in London from 4-7 October.

Who's on the panel? 

We have selected speakers who are experienced in contested proceedings to present and discuss the similarities and differences between some of the major jurisdictions in the world including the US, Japan, Europe and Australia:

Greg Chambers is a FICPI Member of Honour and Partner, Phillips Ormonde Fitzpatrick in Australia. Greg has represented parties in IP matters before the Australian Patent Office, the Supreme Courts of NSW and Victoria and the Federal Court of Australia.

Nicola Dagg is a Partner in the IP litigation team in the London office of Kirkland & Ellis International LLP in the UK. She has extensive experience in pharmaceutical and biologics patent litigation and has tried over 20 cases.

Katsumori Iseki is Chair of Group 3 of FICPI's Study & Work Committee on International Patent Matters, as well as a member of FICPI's DEIA, and Strategic Planning Committees. He is a Partner at CP Japan IP Attorneys and has experience in negotiation and contraction relating to IP, analysis of IP information, and consulting for business strategy and overseas expansion using IP.

Daniel J. Warren is a member of Group 3 of FICPI's Study & Work Committee on International Patent Matters, as well as a member of FICPI's DEIA Committee. He is a Partner at Eversheds Sutherland in the US and prepares and prosecutes domestic and foreign patent applications, and domestic and foreign trademark applications.

Why attend this session? 

We hope delegates will be able to determine what flexibility (or lack of flexibility) different jurisdictions offer in being able to alter/amend the claim language after an infringement and/or invalidity proceeding has begun.  

We also hope the delegates will gain an understanding of the possible ramifications of changing a claim after a litigation has begun. 

Key learning points include procedures for amending a claim during a litigation if such procedures are available or other methods of correcting claim language once a litigation has begun. We will explore how the UPC is expected to handle this issue.

Panellists will touch on other issues that may differ between jurisdictions, such as whether inventors may be added or subtracted and what the ramifications are.

This session will provide answers to questions including:

  • What if there is insufficient time to make amendments prior to initiating the litigation – is it possible to amend the patent after litigation has commenced?
  • What prosecution strategies should be employed where post grant amendment is not permitted?
  • Under what circumstances is it possible to make such amendments, and are there any risks?

When is the session taking place?

It's on Friday 6 October 2023, from 14-1530, and is part of the Patents Stream.

Gain unique insights. Join us in London.

The FICPI 21st Open Forum in London (4-7 October 2023) is an opportunity to gather direct insights from the international IP attorney community on IP practice-related issues or topics of IP law, while building business relationships and friendships that will last a lifetime.

The Forum features top quality speakers and topics in in one of the world’s great cities, plus a fun social programme for delegates and guests to enjoy London with dinners, tours and sports.

Register for the Open Forum as soon as possible. We encourage you to book earlier to secure your hotel room of choice.

Register now.

Previous Post
EUIPO User Associations' 2024 training and learning needs survey