Why you should attend
The America Invents Act (AIA) post-grant proceedings effectively hybridize patent litigation and prosecution practices to yield new procedures to challenge or reinforce granted patents. The U.S. Patent and Trademark Office (PTO) rules to implement the AIA will be fully effective by September 17, 2012.
Join our expert, experienced faculty of in-house and law firm attorneys, as well as senior PTO officials, to learn what you must know to succeed in the new environment.
This seminar details the diverse skill set necessary to critically evaluate, file, and effectively prosecute these proceedings. Take away what you need to know to file and respond to petitions and conduct discovery, motion practice and trial before the Patent Trial and Appeals Board.
What you will learn
- Master the new post-grant proceedings for resolving patent disputes
- Updates to the rules and legislation relevant to the new post-grant proceedings
- When to use the new post-grant review, inter partes review, and transitional program for covered business method patents
- Understand derivation proceedings and supplemental examination
- The new role of ex parte reexamination
- Budgeting time and money for these new proceedings
- The new definition of prior art
- Strategies and tactics for patent trial and appeal board practice: pre-trial preparation; the use of experts; discovery; motion practice; oral hearings; and appeals
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 seeking to gain an edge by better understanding and taking advantage of these new procedures to test the validity of granted patents.
Morning Session: 9:00 a.m. - 12:30 a.m.
9:00 Program Overview
Stephen C. Durant, Rajiv P. Patel
9:15
The New Framework for Resolving Patent Disputes within the PTO, Part One
- Post-Grant Opposition Proceedings
- Ex Parte Reexamination: Business as Usual?
- Post-Grant Review
- Inter Partes Review
- Transitional Program for Covered Business Method Patents
Stephen C. Durant, Rajiv P. Patel, Irem Yucel
10:15 Networking Break
10:30 The New Framework for Resolving Patent Disputes within the PTO, Part Two
- Derivation Proceedings + New Definition of Prior Art under the AIA
- The New Supplemental Examination/Reexamination and When to Use
- Example and Discussion of Request for Supplemental Examination
- Beyond Our Borders - Comparison and Coordination Considerations with Opposition Proceedings in Europe
Moderator: Stephen C. Durant;
Chris Benson, Kevin Greenleaf, Bijal V. Vakil, Irem Yucel
11:30 Practice before the Patent Trial and Appeals Board, Part One
- Pre-Trial Process
- Preparing a Petition
- Preparing a Preliminary Response
- Use of Experts
- Considerations after Decision on Petition
Moderator: Rajiv P. Patel
Linda Beach, Darren E. Donnelly, Lissi Mojica
12:30
Lunch Break
Afternoon Session: 1:45 p.m. - 4:00 p.m.
1:45
Practice before the Patent Trial and Appeals Board, Part Two
- Scheduling Conference
- Discovery – Similarities and Contrasts with Litigation
- Protective Orders
- Depositions and How to Conduct Them
- Subpoenas
- Motion Practice – Similarities and Contrasts with Litigation
- Amendments
- Nexus
- Exclusion
- Daubert
- Federal Rules of Evidence
- Opposition and Reply
Moderator: Rajiv P. Patel
Renee DuBord Brown, Virginia K. DeMarchi, Hon. Michael P. Tierney
2:45 Networking Break
3:00 Practice before the Patent Trial and Appeals Board, Part Three
- Trial (Oral Hearing)
- Witness Examination
- Oral Argument: Scope and Preparation
- Final Written Decision
o Estoppel
- Appeals Process
Moderator: Stephen C. Durant
Peter P. Chen, Robert McHenry, Lissi Mojica, Hon. Michael P. Tierney
4:00 Adjourn
Co-Chair(s)
Speaker(s)
Hon. Michael P. Tierney ~ Lead Administrative Patent Judge, Trial Section, United States Patent and Trademark Office, Patent Trial and Appeal Board
Irem Yucel ~ Director of the Central Reexamination Unit (CRU), United States Patent and Trademark Office
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
San Francisco Seminar Location
PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.
San Francisco Hotel Accommodations
The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.
Due to high demand we recommend reserving hotel rooms as early as possible.
PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.
Please check the CLE Calculator above each product description for CLE information specific to your state.
Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys. All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.
Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.
Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.