Preissuance Prior Art Submissions at the USPTO
Best Practices for Third-Party Challenges to Patent Applications and Monitoring Competition
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide guidance to patent counsel on the new preissuance submission rules and offer best practices for deciding whether and how best to file a preissuance submission on a competitor’s or potential competitor’s patent application and for monitoring competitors.
- 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 v. 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 new 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
Thomas M. Haas
He focuses his practice on preparing and prosecuting patent applications in a wide variety of technologies; patent... | Read More
He focuses his practice on preparing and prosecuting patent applications in a wide variety of technologies; patent portfolio management; patent portfolio analysis; merger and acquisition due diligence; infringement and validity studies; freedom to operate studies; licensing; and drafting material transfer and confidentiality agreements.Close
Patrick S. Eagleman
Senior Patent Counsel
He manages litigation, conducts freedom-to-operate and patent protection analyses with regard to acquisitions and... | Read More
He manages litigation, conducts freedom-to-operate and patent protection analyses with regard to acquisitions and internal program initiatives, as well as manages patent estates for franchises of Baxter’s BioScience division. He also is involved with contract negotiations for acquisitions and contract manufacturing/R&D relationships.Close