Proactive Patent Procurement and Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges
Insulating Your Patent Portfolio From New Threats
Recording of a 90-minute CLE webinar with Q&A
Conducted on Thursday, February 13, 2014
Recorded event now available
This CLE webinar 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 patents 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.
The PTAB is quickly displacing district courts as the primary arbiter of patent validity disputes. Whether through petition for inter partes review (IPR), post-grant review (PGR) or a covered business method (CBM), patent challengers are effectively forcing the question of patent validity away from the slower, cost prohibitive district court model.
In addition to speed and cost savings, the PTAB also offers significant strategic advantages to patent challengers and has quickly become one of the busiest patent trial courts. The PTAB has a lower burden of proof relative to the district courts, a broader claim construction, judges with engineering and/or science training, and, unlike the district courts, there is no presumption of validity accorded to a patent during PTAB review.
Patent challengers have a significant advantage before the PTAB, so patent portfolios must be developed with an eye toward the ultimate challenge to assertion—surviving PTAB scrutiny.
Counsel to technology innovators must not only understand the significant change in the patent assertion landscape, but proactively adjust their procurement and prosecution strategies now.
Listen as our authoritative panel examines the current PTAB and patent litigation landscape with an eye toward emerging trends and challenges facing patent owners. The panel will also offer best practices to minimize the threat of post-grant patent challenges, including patent procurement and prosecution strategies to strengthen and/or insulate patent portfolios from PTAB attack.
Current PTAB landscape
- Overview of PTAB impact
IPR, PGR, CBM
- Claim construction
- Understanding the realities of PTAB review
- Best practices
- Petition challenges created by patentees
PTAB impact on patent portfolio development
- Emerging litigation strategies
Proactive patent procurement and prosecution
Application and claim drafting strategies
- Search strategies that strengthen disclosures
- Drafting a specification that can withstand attack
Claiming drafting strategies
- Understanding the value of overlapping claim scope
- Effective ways to vary claim language
- Means plus function claims
- Drafting meaningful dependent claims
- Avoiding priority pitfalls to insulate from intervening prior art
- Using restriction practice as a shield from patent owner estoppel
Active portfolio management strategies
- Prosecution of continuation applications
- Crafting diverse portfolios
- Effective third-party monitoring
- Application and claim drafting strategies
The panel will review these and other key questions:
- What are the emerging challenges for patent owners under the current PTAB landscape?
- What is the PTAB's impact on patent portfolios and what steps can counsel take to strengthen portfolios?
- What proactive steps in patent procurement and prosecution can counsel take to minimize the threat of post-grant challenges?
Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.
Christopher A. Bullard, Partner
Oblon Spivak McClelland Maier & Neustadt,
Mr. Bullard focuses on the development and management of patent portfolios for both emerging and established companies, and on the representation of clients in post grant patent proceedings before the U.S. Patent and Trademark Office. Additionally, he counsels clients on licensing, freedom to operate, and due diligence matters. He advises clients on patent matters relating to a wide range of technologies and regularly engages in all aspects of patent prosecution.
Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt,
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.
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Strafford provided an enthusiastic presentation that focused on patent practice, not theory.
David H. Vance
Vance Intellectual Property
I liked the practical insights, particularly when tied to cases the presenters had worked on.
The program contained good information based on solid experience.
Edward M. Dunham, Jr.
Kleinbard Bell & Brecker
The speakers were very knowledgeable about the area and you could tell they cared. It was nice to call in and be able to speak to them live.
Shari J. Reich
Kenney Shelton Liptak Nowak
The webinar was clearly presented and organized. It was a good mixture of the law and practice.
David N. Crapo
Intellectual Property Law Advisory Board
Winthrop & Weinstine
Fulbright & Jaworski
Winston & Strawn
Feinberg Day Alberti & Thompson
Buchanan Ingersoll & Rooney
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