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, October 8, 2015

Recorded event now available

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Program Materials

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.

Description

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 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.

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Outline

  1. Current PTAB landscape
    1. Overview of PTAB impact
    2. IPR, PGR, CBM
      1. NPEs
      2. Stays
      3. Claim construction
      4. Understanding the realities of PTAB review
    3. Patentee challenges
      1. Missteps
      2. Best practices
    4. Petition challenges created by patentees
  2. PTAB impact on patent portfolio development
    1. Emerging litigation strategies
  3. Proactive patent procurement and prosecution
    1. Application and claim drafting strategies
      1. Search strategies that strengthen disclosures
      2. Drafting a specification that can withstand attack
    2. Claiming drafting strategies
      1. Understanding the value of overlapping claim scope
      2. Effective ways to vary claim language
      3. Means plus function claims
      4. Drafting meaningful dependent claims
    3. Prosecution strategies
      1. Avoiding priority pitfalls to insulate from intervening prior art
      2. Using restriction practice as a shield from patent owner estoppel
    4. Active portfolio management strategies
      1. Prosecution of continuation applications
      2. Crafting diverse portfolios
      3. Effective third-party monitoring

Benefits

The panel will review these and other key issues:

  • 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?

Faculty

Margaret A. Focarino
Margaret A. Focarino

Senior Patent Advisor
Oblon McClelland Maier and Neustadt

Ms. Focarino advises clients in the areas of patent prosecution, procurement, and rule based USPTO practices. Her...  |  Read More

Scott A. McKeown
Scott A. McKeown

Partner
Oblon McClelland Maier & Neustadt

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the...  |  Read More

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