Coordinating Post-Grant Patent Opposition in the EU and the U.S.: Amended Rules, Shorter Time Frame

Navigating Timing, Grounds for Opposition, Discovery, and Amendments to Maximize Protection in Both Jurisdictions

A live 90-minute CLE webinar with interactive Q&A


Thursday, May 9, 2019

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, April 19, 2019

or call 1-800-926-7926

This CLE webinar will provide patent counsel with guidance for addressing post-grant patent oppositions in both Europe and the U.S. The panel will offer best practices for navigating the two systems to maximize patent protection in both jurisdictions.

Description

Over the past few years, there have been several changes in both Europe and the U.S for post-grant patent proceedings. For example, at the European Patent Office (EPO), the first instance opposition proceedings now aim to be completed within 15 months for "standard" challenges. This places additional pressure on opponents, as well as patentees, to get their cases right. Also, changes to the Rules of the Boards of Appeal will make it increasingly difficult to introduce new documents or make any additional claim amendments in appeal proceedings. There have also been a few major EPO Enlarged Board of Appeal decisions in recent years that have impacted tactics for European oppositions.

As a result, patent owners need to address the prospect of coordinating their post-grant patent challenges or defenses to challenges in both jurisdictions. Among the obstacles facing patent counsel is the timing of filings. While oppositions at the EPO must be filed within nine months, a patent owner may be subject to an IPR challenge long after that timeframe.

Other potential stumbling blocks or things that may influence how and where a patent is challenged include the grounds for challenging patents, the fees for each venue, win rates, discovery, amendments and litigation estoppel. Patent counsel must be able to navigate the complex procedures of the USPTO and the EPO to maximize patent protection.

Listen as our authoritative panel of patent attorneys examines key similarities and differences between European and U.S. post-grant proceedings, including how recent developments in both the Europe and U.S. change how counsel should proceed. The panel will compare likely timelines and offer ways to maintain consistent positions while using the actions in one jurisdiction to help in the other.

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Outline

  1. European and U.S. oppositions--similarities and differences
    1. Who can file
    2. Grounds
    3. Filing the opposition
    4. Opposition written procedure
    5. Discovery
    6. Duty of disclosure
    7. Amendments
    8. Construction
    9. Revocation
    10. Appeals
    11. Estoppel
  2. Timelines
  3. Maintaining consistent positions while leveraging the procedures in each jurisdiction to maximize protection

Benefits

The panel will review these and other key issues:

  • How do the grounds for opposing a patent in the U.S. differ from those in Europe?
  • How will the differences relating to discovery and the use of expert testimony impact opposition strategy?
  • What strategies should counsel employ to coordinate post-grant patent oppositions in Europe and the U.S.?

Faculty

Wall, Leythem
Leythem A. Wall

Partner
HGF

Mr. Wall is a European and UK Patent Attorney specializing in the chemical, consumer products, energy, material and...  |  Read More

Additional faculty
to be announced.

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Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

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