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
Conducted on Tuesday, December 11, 2012
Recorded event now available
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.
The America Invents Act ushered in many changes for patent prosecution, including allowing preissuance submissions, which went into effect on Sept. 16, 2012. The new preissuance submissions permit third parties to intervene in the prosecution of pending patent applications.
Preissuance submissions give third parties a mechanism to bring relevant prior art and other information to the USPTO to try and limit the scope of the patent application. Before deciding to submit prior art, counsel must consider the risk that it may actually make the patent stronger.
In addition to weighing the advantages and disadvantages of a pre-grant submission, competitors should monitor pending patent applications, particularly in highly competitive industries.
Listen as our authoritative panel of patent attorneys discusses the final rules published by the USPTO and examines pros of the process and the limitations. The panel will offer strategies for deciding whether and how best to file a preissuance submission of prior art 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, Partner
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.
Thomas M. Haas, Counsel
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.
Patrick S. Eagleman, Senior Patent Counsel
Westlake Village, Calif.
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.
On-Demand CLE - Streaming Audio
Our best recorded option for CLE accreditation. Includes recorded streaming audio of full program plus PDF handouts.
Strafford is an approved provider and can request CLE credit for On-Demand programs in the following states. (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
AK, AZ, CA, CO, DE, FL, GA, HI, IA, ID, IL, IN*, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY*, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY
*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.
**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.
On-Demand CLE Audio $149.00
Includes full event recording plus handouts.
Strafford is an approved provider and self-study CLE credit is available in the following states. (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)
AK, AZ, CO, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NM, OR, PA, TN, TX, UT, VT, WA, WV, WY
To apply for Continuing Education credit for a recorded event, contact Strafford CLE to obtain an Attorney Affirmation Form at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.
Recorded Webinar Download $49.00
Recorded Audio Download (MP3) $49.00
DVD (Slide Presentation with Audio) $49.00 plus $9.45 S&H
CD (Audio with Slide PDFs) $49.00 plus $9.45 S&H
Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program). Please note that our webinars do not feature videos of the presenters.
Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.
The seminar was a very complete presentation with a lot of pros vs. cons for the subject matter.
Andrus Intellectual Property Law
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.
Included very straightforward, practical comments and recommendations, not just a theoretical exercise.
Lewis and Roca
Great information from all the speakers.
Kelly Services - Employee Screening Dept
Intellectual Property Law Advisory Board
Winthrop & Weinstine
Fulbright & Jaworski
Winston & Strawn
Feinberg Day Alberti & Thompson
Buchanan Ingersoll & Rooney
Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.