Headshot of John Pegram

John B. Pegram


Title
Of Counsel
Offices
New York
Phone Numbers
Email
[email protected]

Insights

Additional insights

Publications

  • What Brexit Means for Non-EU IP Owners,” Managing Intellectual Property (March 2019)
  • “Service of Process on Foreign Defendants,” Fish Litigation Blog (January 2017)
  • Greener pastures for US patents,” World Intellectual Property Review (November 2016)
  • “Update on EU Unitary Patent and Unified Patent Court Developments,” Fish & Richardson Patent Blog, January 2016.
  • “From the US, progress towards creating Europe’s new unified patent system is looking good,” IAM Blog (August 2014)
  • “Limiting Choice of Venue in Patent Litigation,” IP Law360 (July 2014)
  • “The future of attorneys’ fee awards in patent cases,” Fish Litigation Blog & AIPLA Newsstand (Lexology) (July 2014)
  • “An equivalent to amendments during IPR proceedings,” Fish Litigation Blog & AIPLA Newsstand (Lexology) (May 2014)
  • “The question of specificity in patent pleadings heats up,” Fish Litigation Blog & AIPLA Newsstand (Lexology) (March 2014)
  • Speaking engagements

  • What You Need to Know About the EU Unitary Patent and Unified Patent Court,” New York Intellectual Property Law Association (NYIPLA) Webinar (April 26, 2022) (with Moritz Ammelberg & Herbert Kunz)
  • PTAB” session moderator, 29th Annual Fordham Intellectual Property Law & Policy Conference (April 22, 2022)
  • “Deep Dive: Everything You Need to Know about the Unified Patent Court in Europe,” AIPLA Mid-Winter Meeting (February 3, 2022)
  • “Unified Patent Court and Unitary Patent in the European Union,” organizer and moderator, AIPLA Mid-Winter Meeting, January 2022.
  • “Let’s Seek a Better § 101—Patent Eligibility in the United States,” Fordham IP Law Conference, April 2021.
  • “EU Unified Patent Court & Unitary Patent,” CIPA-IPO Webinar — Brexit and the UPC, July 16, 2020
  • “Current PTAB Practice in the United States,” AIPLA IP Practice in Japan Committee meeting with Japan Trademark Association, June 2019.
  • “Update on U.S. IP Policy under Director Iancu,” AIPLA IP Practice in Japan Committee meeting, June 2019.
  • “Claim Amendments in the United States & Europe—Why Amendments Are Rarely Permitted in U.S. PTAB Proceedings, September 2018 (with John  Conroy).
  • “Current Legislative and Juridical Trends in the U.S.,” Intellectual Property Owners European Seminar, Amsterdam, May 2018
  • “Inter Partes Review Survival Rates Based on Decision Statistics—A Preliminary Report,” and panelist on PTAB panel, Fordham IP Conference, April 2018.
  • “European Patent Developments,” moderator, Fordham IP Conference, April 2018.
  • “Clarity Workshop,” moderator & co-author of materials, Intellectual Property Owners Education Foundation—EPO Day, November 2017
  • “Overview of IP Developments in 2016-2017 in the United States and the World,”Japan External Trade Organization Seminar, New York January 2017(with John Johnson)
  • “Patent Litigation in the United States,” Japan Intellectual Property Association Seminar, Tokyo, November 2016.
  • “The EU Unified Patent Court—Background, Structure and Procedures” (paper) and ”Unified Patent Court Procedure” (presentation), The Sedona Conference, Patent Litigation Conference, Washington, DC, October 2016.
  • “U.S. Supreme Court Patent Decisions,” S. Bar-EPO Liaison Council, New York, September 2016.
  • “Brexit and Intellectual Property Issues” and moderator, Intellectual Property Organization Annual Meeting, New York, September 2016.
  • “Update on PTAB Litigation,” AIPLA Committee meeting with foreign patent organization in Japan, June 2016.
  • “Issue Preclusion and Estoppel: Trademark and Patent Perspectives” and “The U.S. Supreme Court’s B&B Decision,” AIPLA Japan Committee & the Japan Trademark Association, Japan, October 2015 (with George Lewis).
  • “The New Reality in Patent Invalidation Procedures – Developments in Post-Grant Review,” Intellectual Property Owners European Seminar, Brussels, May 2014.
  • “Comparison of the New Inter Partes Review at the USPTO and Oppositions at the EPO,” panelist Fordham IP Conference, April 2014
  • “Evolving Standards for Disclosing and Claiming Inventions or What Can a Patentee Claim and What Does a Claim Mean?” (paper & presentation), Fordham IP Conference, April 2014.
  • “Update on Inter Partes Disputes and the PTAB,” AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo & Osaka, April 2014.
  • “Mock Program–PTAB Inter Partes Proceeding Including a Hearing,” author & participant, AIPLA Japan Committee seminar for Japan Patent Attorney Association, Tokyo & Osaka, April 2014. .
  • “Current trends/effects of AIA on US patent practice,” AIPLA Europe Committee meeting with Compagnie Nationale Conseils Propriété Industrielle, Paris, March 2014 (with another speaker).
  • “Counseling Clients re New USPTO Post Grant Proceedings and Interplay with Litigation,” AIPLA Europe Committee meetings with Chartered Inst. of Patent Attorneys, London, German Patent Attorneys Ass’n, Munich, and European Patent Institute, Munich, March 2014.
  • “Unitary Patent and Unified Patent Court,” Japan Patent Attorney Association seminars, Osaka and Tokyo, Japan, November 2013, (with Dr. Margot Fröhlinger (EPO) and Jan-Malte Schley)
  • “Patent Courts – The US System: What Can Be Done to Address Litigation Inefficiencies?” AIPLA Annual Meeting, October 2013,
  • “EU Unified Patent Court,” Joint meeting of the Giles Rich and Pauline Newman Inns of Court, Washington, DC, October 2013,
  • “Report on US law – Written description requirements,” US Bar – EPO Liaison Council, Munich, Germany, October 2013,
  • “Global Harmonization in Patent Law,” IPO European Practice Committee Conference, Brussels, Belgium, May 2013,
  • “Comparing Patent Enforcement Across Multiple Foreign Jurisdictions,” NYIPLA Annual Meeting workshop, May 2013,
  • “Recent Developments in U.S. Patent Law” and “Administrative & Substantive Patent Office Harmonization,” Fordham International IP Conference, New York, New York, April 2013,
  • “Interplay between Litigation and the AIA,” AIPLA Europe Committee meetings with the Chartered Institute of Patent Attorneys (London), IP Lawyers Association (London), and the European Patent Institute (Munich), March 2013,
  • “European Unitary Patent and Unified Patent Court,” West LegalEdcenter Webinar, February 2013,
  • “European Unitary Patent: An Update,” IPO Chat Channel Webinar, January 2013, (with Dr. Margot Fröhlinger (EPO) and Paul Coletti)