New USPTO Rules for Post-Grant Proceedings

Meeting the New Requirements for Post-Grant and Inter Partes Reviews and Supplemental Examination

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


Conducted on Tuesday, September 18, 2012
Recorded event now available


The CLE webinar will provide guidance for counsel to IP owners on changes to implement for inter partes review proceedings, post-grant review proceedings, and the transitional program for covered business method patents. The panel will outline strategic considerations for post-grant practice.

Description

On Aug. 14, 2012, the USPTO published the final rules for inter partes review, post-grant review, special transitional review of business method patents, and supplemental exams. The new rules will go into effect on Sept. 16, 2012, and revise the rules of practice to implement the America Invents Act (AIA).

The AIA overhauled post-grant patent practice and the evolution of validity-based patent changes before the USPTO. These recent developments impact patent litigators, in-house counsel and stakeholders.

Counsel to IP owners must understand the final rules for post-grant practice and work together with patent holders and challengers to leverage the new rules and develop new strategic approaches.

Listen as our authoritative panel of IP attorneys examines the final rules and explains how they vary and compare with previously proposed rules. The panel will also discuss the operation of the new mechanisms and PTAB, recent developments for trial validity, and strategic application of these new proceedings.

Outline

I. The final rules
II. Inter partes review
III. Post-grant review
IV. Strategic considerations

Benefits

The panel will review these and other key questions:

  • How has post-grant practice been transformed since the America Invents Act?
  • How do the new rules impact the strategic use of post-grant proceedings parallel to litigation?
  • What are the relevant deadlines and best practices for the new post-grant review process?

Faculty

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.

Greg H. Gardella, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Gardella focuses on post-grant patent proceedings, patent prosecution, strategic counseling, due diligence investigations, and pre-suit investigations. He leverages his extensive litigation background to focus on adversarial post-grant USPTO proceedings. He has handled a significant amount of high-profile patent reexamination disputes, such as the defense of the famous TiVo time warp patent.

Jessica J. Harrison, Technical Advisor
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Prior to joining the firm, she served over 24 years at the U.S. Patent and Trademark Office (USPTO). She served as a supervisory patent examiner in the Central Reexamination Unit (CRU), where her management oversight focused on software and business method patent reexamination proceedings. At the firm, she is a post grant proceedings specialist.


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