Post-AIA Preissuance Prior Art Submissions at the USPTO
Best Practices for Third-Party Challenges to Patent Applications and for Monitoring Competition
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance to patent counsel on the preissuance submission rules. The panel will offer best practices for monitoring competitors and making decisions regarding whether and how to file a preissuance submission on a competitor’s or potential competitor’s patent application.
- Brief intro and status
- Preissuance submission rules and PTO recommendations and warning
- Likely impact on quality of patents in general
- Nuts and bolts of implementing PS program
- PS estoppel effects and relationship to other PTO proceedings and litigation
- Dynamics of examiner treatment—issues of timing, any unexpected impediments to examiner changing mind
- The ability to avoid PSs by expediting prosecution
- Usefulness as function of industry
- Usefulness and use by big company vs. usefulness and use by small companies
- Use of pre-issuance submissions offensively by patent owner
- Compare to presenting prior art to applicant to put onus on applicant to file
- Criteria as to when a “hit” warrants making a submission
The panel will review these and other key questions:
- How do the revised USPTO rules change the landscape for third-party intervenors?
- What are the key considerations for patent counsel when deciding whether to make preissuance submissions?
- What are the benefits and limitations of submitting prior art or other information on a pending patent application?
Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.
Clifton E. McCann
Mr. McCann concentrates on the strategic development and defense of patent rights for clients in the chemical,... | Read More
Mr. McCann concentrates on the strategic development and defense of patent rights for clients in the chemical, biological, mechanical and software/business method sectors. He counsels clients on the business and practical aspects of patenting and provides validity and infringement opinions, and initiates and defends against patent infringement challenges.Close
Mr. Elleman is a registered patent attorney and has experience in virtually all aspects of intellectual property law,... | Read More
Mr. Elleman is a registered patent attorney and has experience in virtually all aspects of intellectual property law, including domestic and foreign patent and trademark prosecution; patent and trademark validity and right-to-use studies; copyright registration and litigation; intellectual property licensing including joint venture and trade secret agreements; and domain name and cybersquatting issues. He also regularly counsels clients with growing intellectual property portfolios to formulate and implement suitable intellectual property strategy.Close
Director of Training and Special Projects
Mr. Skovholt coordinates and facilitates the training of new patent analysts in the art of patent searching. Prior to... | Read More
Mr. Skovholt coordinates and facilitates the training of new patent analysts in the art of patent searching. Prior to joining Landon IP, he worked as a Patent Examiner at the USPTO. While working as a patent analyst at Landon IP, Mr. Skovholt worked on projects involving a variety of technologies including: optical systems, electrical systems, semiconductor processing, MEMS systems, software, business methods, and mechanical systems.Close