USPTO Post-Grant Proceedings

Meeting the New Requirements for Post-Grant and Inter Partes Reviews and Supplemental Examination

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, August 2, 2012
Recorded event now available


This CLE webinar will provide guidance for counsel to IP owners on post-grant practice since the America Invents Law and recent developments, including proposed rules on trial validity. The panel will discuss post-grant review proceedings, special transitional review of business method patents, and supplemental exams.

Description

The America Invents Act (AIA) reformed the U.S. Patent Law System in Sept. 2011 with a significant overhaul to post-grant patent practice before the U.S. Patent Trademark Office (USPTO), including:

► Automatic stays of district court litigation.
► Creation of a Patent Trial & Appeal Board (PTAB).
► Substantial changes to patent reexamination practices.
► New, fast-track, post-grant mechanisms for third-party challengers.
► New estoppel provisions for ITC/district court actions.
► Special review proceedings for business method patents.
► Supplemental examination provisions for patent owners.

The evolution of validity-based patent changes before the USPTO and a number of recent developments, such as the PTO's proposed rules to govern validity trials, impact patent litigators, in-house counsel and stakeholders.

Listen as our authoritative panel of IP attorneys examines the new post-grant landscape and the operation of the new mechanisms and PTAB. The panel will discuss the recent developments and the proposed rules for trial validity, as well as strategic application of these new proceedings with an eye toward existing and future litigation strategy.

Outline

  1. America Invents Act
  2. Inter partes review
    1. Timing
    2. Request standard
    3. Process flow
    4. PTAB
    5. Implementation
    6. Litigation strategy going forward
  3. Post-grant review (including business method challenges)
    1. Differences relative to inter partes reexam
    2. Industry-specific issues
    3. Interface with litigation
    4. Comparison with European oppositions

Benefits

The panel will review these and other key questions:

  • How has the AIA transformed post-grant practice?
  • How do the changes of the AIA alter the strategic use of post-grant proceedings parallel to litigation?
  • What are the relevant deadlines and best practices for the new post-grant review process?

Faculty

Greg H. Gardella, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. Gardella focuses on post-grant patent proceedings, patent prosecution, strategic counseling, due diligence investigations, and pre-suit investigations. He leverages his extensive litigation background to focus on adversarial post-grant USPTO proceedings. He has handled a significant amount of high-profile patent reexamination disputes, such as the defense of the famous TiVo time warp patent.

Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

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.

Jessica J. Harrison, Technical Advisor
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Prior to joining the firm, she served over 24 years at the U.S. Patent and Trademark Office (USPTO). She served as a supervisory patent examiner in the Central Reexamination Unit (CRU), where her management oversight focused on software and business method patent reexamination proceedings. At the firm, she is a post grant proceedings specialist.


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