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Post-Grant Filings

On June 9, 2021, Jill M. Browning participated in a meeting between FICPI and the USPTO regarding patent office policies and procedures.

On May 27, Bruce Bernstein was a panelist at the LESI annual meeting (held virtually) for a discussion entitled Do’s and Don’ts of IP Licensing.

On May 7, 2021, Bruce Stoner joined past Chief Judges and the present Chief Judge of the Board, formerly known as the Board of Patent Appeals and Interferences (BPAI) and now as the Patent Trial and Appeal Board (PTAB), in addressing the American Association of Administrative Patent Judges (AAPJ) regarding development of America Invents Act (AIA) trials. The AAPJ plans to publish the proceedings, entitled a “Chiefs’ Retrospective,” on its website at https://aapj.us/members/. The origins of the AIA, from the Chiefs’ perspectives, are discussed beginning with reissue, reexamination, and interferences at the BPAI through the current post-grant review and inter partes review proceedings at the PTAB.

Neil F. Greenblum and Jeff Handelsman will lecture on U.S. patent and trademark law to students at the Centre for International Intellectual Property Studies or Centre d'Études Internationales de la Propriété Intellectuelle (CEIPI), located in Strasbourg, France from April 12 – April 23. Neil F. Greenblum will also be presenting a continuing legal education course on April 14-15, at the Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) in Paris, France on U.S. patent law and contracts.

G&B 2021 patent law seminar has kicked off starting in February, through online format (twice a month, 10 lectures until June 2021). Please contact   ClientRelations@gbpatent.com for more information.

Jill M. Browning participated in the Mock Trial Practice for the FICPI Virtual Open Forum held on November 4-5, 2020. The argument focused on subject matter eligibility issues that arise under 35 USC §101.

Jeff Handelsman presented at a Licensing Executives Society (LES) Webinar on May 19, 2020. The webinar was focused on the Madrid Protocol and practice points for U.S., Canadian, and European practitioners.

Jill Browning presented at the Biosimilars Market Access – EU & USA Forum on May 19, 2020.  While this was originally scheduled to be held in Berlin, Germany, it was on-line.

On October 16, 2019, Jill Browning participated in a roundtable during the Annual Meeting at the Russian Patent Office to share views on the U.S. Patent & Trademark Office’s post-grant proceedings.

Michael Fink spoke on a panel about Collaboration and IP at the BPIP Conference, in Tel Aviv Israel, on April 8, 2019.

On April 4, 2019, Neil Greenblum lectured on IP negotiations and contracts at the Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) in Paris, France.

From April 1-3, 2019, Neil Greenblum and Jeff Handelsman lectured on U.S. IP law, including patents, trademarks and litigation, at the Centre for International Intellectual Property Studies, or Centre d'Etudes Internationales de la Propriété Intellectuelle (CEIPI) in Strasbourg, France. The three-day course serves as an introduction to U.S. IP law to students from around the world.

On January, 26, 2019, Jon Miller moderated/hosted a NAMM Intellectual Property for Beginners Panel Discussion at the Winter NAMM 2019 show and presented an informal and entertaining introduction to the world of patents, trade secrets, trademarks, and copyrights to help build attendees’ intellectual property chops in the music products industry.

First published in 2012, Post-Grant Patent Practice, written by Bruce Stoner and a changing cast of former administrative patent judges, has described the processes and chronicled the evolving practice before the Patent Trial and Appeal Board brought about by the America Invents Act of 2011.   The Second Edition, first published in 2014, has now twice been supplemented, first in 2016 and most recently at the end of 2018.

Recent U.S. Supreme Court and Federal Circuit decisions demonstrate the evolution of key issues arising from the AIA and its post-grant review procedures. Oil States started but did not resolve constitutional challenges to post-grant review procedures; SAS ended partial institution of IPRs, requiring that all claims challenged in a petition must be addressed in a final written decision (when the USPTO institutes which PTAB “guidance” sua sponte extended to all grounds for all such challenges); Helsinn is yet to finally resolve the section 102 public/private on-sale/offer for sale conundrum. Panelists reviewed where things stand, the state of play regarding strategy and tactics tried to date, and debated what might happen next. The panel was moderated by Kenneth Adamo, Kirkland & Ellis, LLP, Chicago, IL and the speakers includes Robert Armitage, IP Strategy & Policy, Marco Island, FL Hon. David Ruschke, U.S. Patent and Trademark Office, Alexandria, VA, Russell Slifer, Schwegman, Lundberg & Woessner, P.A., Boise, ID and Bruce Stoner, Greenblum & Bernstein, P.L.C., Reston, VA.

The program took place on the morning of June 8, 2018, as part of the Microsoft Intellectual Property Law Institute, held in conjunction with the Hispanic National Bar Association.  The discussion covered careers in the US Patent and Trademark Office, corporate IP practice, law firm experiences, and life in the judiciary.  Background and cultural diversity issues were also discussed as well.

During the week of June 4, 2018, as part of Rutgers University Fundamentals of Intellectual Property course, Harry Gwinnell lectured on Patent Drafting and Intellectual Property Strategy, including IP Value Extraction. The course is part of Rutgers Professional Science Master’s Program. Students from Ohio State University also participated by video conference.

Bruce Bernstein moderated a panel at the LESI 2018 Annual Conference on April 30, 2018 in San Diego, California.   The topic of the presentation was “An International Perspective on Licensing in China: Experiences, Opportunities and Avoiding Potential Pitfalls.”   The LESI conference took place at the Manchester Grand Hyatt from April 29 – May 1, 2018.

Jeff Handelsman spoke on a panel at the AIPPI Israel Conference on April 30, 2018 in Tel Aviv, Israel.   The topic of the presentation was “The Inter-Relations/Overlap Between Trademarks and Designs”.   The AIPPI Israel conference took place at the David Intercontinental Hotel from April 29 – May 1, 2018.

Branko Pejic has been elected Secretary of the U.S. Section of FICPI “For more information please use this link” http://www.ficpi.us/about.php

Neil Greenblum and Jeff Handelsman lectured on U.S. patent and trademark law and practice to a group of approximately 75 CEIPI students.  CEIPI, part of the University of Strasbourg, provides various masters programs in the field of intellectual property.

Michael Fink presented at the Best Practices in Intellectual Property Conference on March 12-13, 2018 in Tel Aviv, Israel. G&B is a Gold Sponsor of the event.  Michael is on the panel discussing “Friend or Foe: Licensing vs. Litigation.”  Michael will also be facilitating a luncheon discussion.

As part of AIPLA’s 2018 Mid-Winter Institute’s Leadership Development segment, Harry participated in a panel discussion on Developing Leadership and Leadership Skills from Private Practice, Corporate and Government Perspectives.  Harry is particularly well-suited for this panel having spent 10 years in the US Patent and Trademark Office, 30 years in Corporate Practice as Chief Patent Counsel at several major corporations, and the last 7 years here at Greenblum & Bernstein.

On November 29, 2017, Harry presented a webinar entitled “IP Strategy Stories from the Front Lines.”   Harry spent over 30 years as an in-house counsel, building up the IP portfolios of four major US and multinational corporations, including growing one company's patent portfolio from 30 to 1,400 patents.  During this webinar Harry addressed some of the IP strategy challenges he faced in these roles, as well as sharing some success stories achieved on the way to reaching the companies' IP visions.

On September 19, 2017, Neil F. Greenblum and Justine Nespoulous published an article in the French version of LexisNexis (Juris Classeur). Greenblum, N. and Nespoulous J., Droit américain des brevets – Les procédures non judiciaires après délivrance, Encyclopédie JurisClasseur Brevets - Fasc. 4489-20 (2017).

On August 16, 2017, Harry Gwinnell was a guest speaker at the Intellectual Property Owners Women in IP monthly teleconference meeting.  Harry spoke on the topics of his corporate diversity experiences especially at Cargill and Eastman Chemical Company, his perspective on support for women and minorities in the IP profession based on his experiences, and his work with the IPO Education Foundation.  The meeting concluded with an extensive question and answer session with participants.

On August 16, 2017, Harry Gwinnell made a presentation on “What Should I Protect? What Should I Monetize? Strategic Innovation Decisions” at the United States Patent and Trademark Office Global Intellectual Property Academy, Association for Southeast Asian Nations. The presentation was part of  the USPTO-ASEAN IP Office Administration Program – “Conception to Commercialization.”  Participants were from Southeast Asia locations including Cambodia, Viet Nam, Thailand and Indonesia, among others.

G&B is proud to announce that for the second year running, our co-managing partner, Bruce Bernstein, has been honored as one of the world’s leading patent lawyers by Who’s Who Legal: Patents 2017.  Bruce is one of only six attorneys in Virginia to receive that honor.

In April, Bill Boshnick of Greenblum & Bernstein, PLC in Reston, Virginia recently lectured before the Japan Patent Attorneys Association (JPAA) in Tokyo and Osaka, Japan.  Bill discussed export control issues and other patent problems encountered by foreign companies having U.S. subsidiaries.

Harry Gwinnell and Michael Fink presented at the Best Practices in Intellectual Property Conference on March 27-28, 2017 in Tel Aviv, Israel. G&B was a Gold Sponsor of the event. Harry was on the featured panel “THE BIG DEBATE: Patent or WHAT ELSE?” and led a Master’s Class on the Strategic Operation of a Corporate IP Department. Michael was on a panel discussing “Methods of Attacking Patents at the Patent Offices: Comparing Procedures in Europe, US and China” and also facilitated a luncheon discussion on the value of patents in the absence of infringement.

On March 1, 2017, Paul Braier spoke at the 6th Annual Pharma IPR 2017 conference in Mumbai, a leading forum for IP professionals from leading Indian and global pharma companies and law firms. Paul spoke about FDA’s new rules and guidances, and how they affect generic drug companies. For the third year running, G&B is a Silver Sponsor for this premier event. More information on the conference can be found here (http://www.pharmaipr-india.com/). Click here for a copy of the presentation.

Branko Pejic was on the organizing committee for the FICPI ABC meeting held in Miami, March 12-15, and Mr. Pejic also spoke on an international panel discussing recent intellectual property trends and developments in the Biologics and Pharmaceutical Industries. Click the following link for additional information on the FICPI ABC Conference as well as Mr. Pejic’s panel http://www.ficpi.us/