Proactive Patent Procurement and Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges

Insulating Your Patent Portfolio From New Threats

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, February 13, 2014
Recorded event now available


This CLE webinar will provide patent counsel with an overview of the current USPTO’s Patent Trial & Appeal Board (PTAB) and patent litigation landscape with an eye toward emerging trends and challenges for patents owners. The panel will offer best practices to minimize the threat of post-grant patent challenges as well as prosecution strategies to strengthen and/or insulate patent portfolios from PTAB attack.

Description

The PTAB is quickly displacing district courts as the primary arbiter of patent validity disputes. Whether through petition for inter partes review (IPR), post-grant review (PGR) or a covered business method (CBM), patent challengers are effectively forcing the question of patent validity away from the slower, cost prohibitive district court model.

In addition to speed and cost savings, the PTAB also offers significant strategic advantages to patent challengers and has quickly become one of the busiest patent trial courts. The PTAB has a lower burden of proof relative to the district courts, a broader claim construction, judges with engineering and/or science training, and, unlike the district courts, there is no presumption of validity accorded to a patent during PTAB review.

Patent challengers have a significant advantage before the PTAB, so patent portfolios must be developed with an eye toward the ultimate challenge to assertion—surviving PTAB scrutiny.

Counsel to technology innovators must not only understand the significant change in the patent assertion landscape, but proactively adjust their procurement and prosecution strategies now.

Listen as our authoritative panel examines the current PTAB and patent litigation landscape with an eye toward emerging trends and challenges facing patent owners. The panel will also offer best practices to minimize the threat of post-grant patent challenges, including patent procurement and prosecution strategies to strengthen and/or insulate patent portfolios from PTAB attack.

Outline

  1. Current PTAB landscape
    1. Overview of PTAB impact
    2. IPR, PGR, CBM
      1. NPEs
      2. Stays
      3. Claim construction
      4. Understanding the realities of PTAB review
    3. Patentee challenges
      1. Missteps
      2. Best practices
    4. Petition challenges created by patentees
  2. PTAB impact on patent portfolio development
    1. Emerging litigation strategies
  3. Proactive patent procurement and prosecution
    1. Application and claim drafting strategies
      1. Search strategies that strengthen disclosures
      2. Drafting a specification that can withstand attack
    2. Claiming drafting strategies
      1. Understanding the value of overlapping claim scope
      2. Effective ways to vary claim language
      3. Means plus function claims
      4. Drafting meaningful dependent claims
    3. Prosecution strategies
      1. Avoiding priority pitfalls to insulate from intervening prior art
      2. Using restriction practice as a shield from patent owner estoppel
    4. Active portfolio management strategies
      1. Prosecution of continuation applications
      2. Crafting diverse portfolios
      3. Effective third-party monitoring

Benefits

The panel will review these and other key questions:

  • What are the emerging challenges for patent owners under the current PTAB landscape?
  • What is the PTAB's impact on patent portfolios and what steps can counsel take to strengthen portfolios?
  • What proactive steps in patent procurement and prosecution can counsel take to minimize the threat of post-grant challenges?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Christopher A. Bullard, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Bullard focuses on the development and management of patent portfolios for both emerging and established companies, and on the representation of clients in post grant patent proceedings before the U.S. Patent and Trademark Office. Additionally, he counsels clients on licensing, freedom to operate, and due diligence matters. He advises clients on patent matters relating to a wide range of technologies and regularly engages in all aspects of patent prosecution.

Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the Reexamination/Reissue team responsible for electronics, wireless communications, software and computer-related inventions and business methods. He handles post-issuance proceedings at the USPTO including reissue applications, ex parte and inter partes reexamination proceedings and appeals to the BPAI.

Ordering

Recorded Event

Includes full event recording plus handouts (available after live webinar).

CLE: Upon request, self-study credit is also available in: CO, FL, GA, ID*, KY, ME, ND, NH, NM, NV, OR, UT, VA, WI, WY. If you are applying for self-study credit in one of these states, contact Strafford CLE at 1-800-926-7926 ext. 35 or CLE@straffordpub.com. (*Indicates that Strafford needs to process the CLE — see below to purchase this option.)

Recorded Webinar Download $297.00
Available three business days after the live event

How does this work?

Recorded Audio Download (MP3) $297.00
Available 24 hours after the live event

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H
Available ten business days after the live event

CD (Audio with Slide PDFs) $297.00 plus $9.45 S&H
Available ten business days after the live event


On-Demand CLE - Audio Recording

Includes streaming audio of full program plus handouts (available 24 hours after live program).

Strafford is an approved provider and can request CLE credit for On-Demand programs in the following states:

AK, AZ, CA, CO, DE, FL, GA, HI, ID, IL, IN, KY, LA, ME, MO, MT, NC, ND, NH, NJ, NM, NV, NY*, OH, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY

*Not available for transitional attorneys in NY.

On-Demand CLE Audio $297.00
Available 24 hours after the live event

How does this work?

Webinar

Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credit

Strafford's live webinars qualify for CLE in every state that accredits webinars. They offer you a high quality, cost effective, and convenient CLE option, with no lost travel time or expenses.

More Details >

or call 1-800-926-7926

Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

The materials were excellent and well organized.
 

Kevin Duthoy

Bewley, Lassleben & Miller

Very convenient, quick and thorough, with no wasted time.

James O'Gallagher

Kopka Pinkus Dolin Eads

The webinar offered excellent insight into some specific areas.

Beth Ann R. Lawson

Virginia Beach Law Group

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

Our Guarantee

Strafford webinars and teleconferences are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10.