Patent Reexamination and Patent Reissue as Litigation Tools
Insulating Your Patent Portfolio From New Threats
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course 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 patent 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.
Outline
- Preparing for the fight
- The monetization landscape
- Rehabilitating the asset
- Reissue
- What can you do, when, and how long?
- Mechanics
- Downsides?
- PTAB overlap, considerations
- What can you do, when, and how long?
- Reexamination
- What can you do, when, and how long?
- Mechanics
- Downsides?
- PTAB overlap, considerations
- What can you do, when, and how long?
- Reissue
- Rehabilitating the asset
- Parallel proceedings before the USPTO
- Litigation tactics
- The monetization landscape
Benefits
The panel will review these and other key issues:
- How can patent owners utilize these proceedings to lessen the PTAB threat?
- What does reexamination offer to challengers in the PTAB world?
- Which proceeding is the best path to a goal that might be reached by either option?
Faculty
Kevin B. Laurence
Partner
Laurence & Phillips
Mr. Laurence has represented patent owners and petitioners in nearly 60 inter partes review proceedings at the Patent... | Read More
Mr. Laurence has represented patent owners and petitioners in nearly 60 inter partes review proceedings at the Patent Trial and Appeal Board. His experience with high-stakes, post-grant proceedings spans a broad spectrum of technologies. He teaches a course as an adjunct professor at the George Washington University Law School on post-grant patent practice. He has also served as an instructor for Patent Resources Group since 2009 in courses on post-grant proceedings and co-authors a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses. Best Lawyers in America named Mr. Laurence their 2016 “Lawyer of the Year” in Patent Law for Washington, D.C.
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Scott A. McKeown
Partner
Ropes & Gray
Mr. McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the... | Read More
Mr. McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Mr. McKeown is also a Professorial Lecturer in Law at the George Washington University Law School where he lectures and writes extensively on PTAB proceedings. He is also the editor of the widely read legal blog PatentsPostGrant.com.
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