6-Hour Program

See Credit Details Below

Overview

Why you should attend

Post-grant review proceedings of the USPTO were pursued in record number in 2011. The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. The America Invents Act (AIA) now introduces entirely new options such as Post-Grant Review, Inter Partes Review (formerly inter partes patent reexamination) Derivation, a special post-grant review for “business method” patents and Supplemental Examination. Going forward, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes.

Potential benefits of post-grant challenges to defendants include:
  • Provide an opportunity to stay a concurrent litigation
  • Facilitate settlement on terms favorable to the defendant
  • Create an intervening rights defense
  • Provide new non-infringement and/or estoppel theories
  • Provide additional prosecution history for a later claim construction ruling
  • Demonstrate objective evidence of a lack of willfulness
  • Lessen the probability of injunctive relief
  • Demonstrate the “but for” materiality of references applied in an inequitable conduct defense
  • Undermine or prevent damage verdicts with a USPTO invalidity ruling

For Patentees, ex parte patent reexamination, reissue and supplemental examination may provide a mechanism to:

  • Amend existing claims or add new claims to hedge against invalidity
  • Avoid time consuming reissue proceedings
  • Cure potential inequitable conduct (supplemental examination)
  • Target specific claims for reexamination/amendment while insulating others
  • Have the PTO consider new art prior to enforcement or assertion of patent
  • Preempt the inter partes review attack by another
  • Force strategic merger with another USPTO proceeding

The program is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO.

What you will learn

The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options.  Although the course will focus on strategic considerations, common procedural traps for the unwary will be identified. The relative advantages and disadvantages of the various proceedings are explained from both the perspective of the Patentee and Third Party. Perspectives of the judiciary are presented, including case studies of well-known disputes. Insight to the organization, operation and procedures of the USPTO’s Central Reexamination Unit is discussed, including statistical performance and perceived trends. Ethical considerations of post-grant practice are discussed.

Who should attend

Patent owners and investors involved in patent litigation or considering the initiation of patent litigation; corporate counsel responsible for managing a patent portfolio and responding to third party inquiries; patent litigators advising clients in disputes that involve or may lead to litigation; and, patent professionals representing others before the USPTO in the areas of reexamination and reissue.

Credit Details