Leveraging Post-Grant Patent Proceedings Before the PTAB

Best Practices for Patentees and Third Parties in Inter Partes Review, Post-Grant Review and Covered Business Method Patent Challenges

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

Conducted on Thursday, July 9, 2015

Recorded event now available

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Program Materials

This CLE webinar will discuss post-grant patent practice and offer best practices for counsel to either patentees or third parties in inter partes review, post-grant review, and covered business method challenges.

Description

The AIA created the Patent Trial and Appeal Board (PTAB) as part of its overhaul of post-grant patent practice before the USPTO. Among the significant changes are new options, including inter partes review, the transitional program for covered business method patents, and post-grant review. These PTAB challenges are now radically changing the patent monetization and litigation landscape.

The PTAB recently exceeded 2,900 post-grant proceedings and is becoming the leading forum in the U.S. for high-value patent disputes. PTAB proceedings are proving to provide a viable and cost-saving alternative to patent litigation, but does it work better for some parties than others? What are the legislative changes pending that may again alter this evolving landscape?

The evolution of validity-based patent challenges before the PTAB impacts litigators, in-house counsel and stakeholders. Counsel must understand the many aspects involved to work with patent holders and challengers to leverage the new PTAB practice and develop strategies using post-grant practice.

Listen as our authoritative panel of patent attorneys examines post-grant practice and offers best practices for counsel to patentees and third parties in inter partes review, post-grant review, and covered business method challenges.

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Outline

 
  1. Inter partes review
    1. Best practices for patentees
    2. Best practices for third parties
  2. Post-grant review
    1. Best practices for patentees
    2. Best practices for third parties
  3. Covered business method patent challenges
    1. Best practices for patentees
    2. Best practices for third parties

Benefits

The panel will review these and other key issues:

  • How has post-grant practice developed since the PTAB started?
  • How is the PTAB adapting to the increased workflow and what rule changes are anticipated in the months ahead?
  • What are the best practices for these proceedings together with concurrent litigation?
  • How are patentees adapting to the threat of PTAB challenges and what concurrent office proceedings are available to hedge against such attacks?

Faculty

Thomas J. Fisher
Thomas J. Fisher
Partner
Oblon McClelland Maier & Neustadt

Mr. Fisher chairs the firm’s Litigation practice group and co-chairs the IP Transactions practice group. He...  |  Read More

Scott A. McKeown
Scott A. McKeown
Partner
Oblon McClelland Maier & Neustadt

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the...  |  Read More

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