The Best of the Post-Grant USPTO Proceedings Seminar


In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website.

Reexamination, Reissue, Certificate of Correction and New America Invents Act Proceedings: Substantive and Strategic Overview: Eugene T. Perez,  Birch, Stewart, Kolasch & Birsch, LLP –  Eugene provided an overview of what the America Invents Act added to patent law (post-grant review, inter partes review, supplemental examination, and post-grant validity review of business method patents), and then covered the importance of certain issues like the recapture rule in reissues and estoppel, as well as compared the threshold standards for inter partes review versus post-grant review.

Patent Trial, Appeal Board Transformation & AIA Implementation: Stephen G. KuninOblon, Spivak, McClelland, Maier & Neustadt, L.L.P.Irem YucelDirector of the Central Reexamination Unit (CRU), USPTO,  Hon. Robert Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration – This panel provided an update from the USPTO on what has changed in the past year and since the implementation of some of the AIA. Stephen shared an overview of the AIA and its Board Provisions, Judge Clarke provided updates and 2011 statistics from the Office of Patent Legal Administration, and Irem explained how the CRU is now working through the prism of the AIA and with a suggested rule package to make the EP side of the ledger more streamlined and simply easier to use by the public.

Patent Reexamination Practice and Evolution – USPTO Perspective: Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office – Brian focused his panel discussion on three major topics through the perspective of the USPTO (Revision of Standard for Granting an Inter Partes Reexamination Request, Miscellaneous Post Patent Provisions Rule Package, Supplemental Examination and Revisions of Reexamination Fees), and explained why knowing the changes in these topics is essential to the every day patent practitioner.

USPTO Post Grant Patent Practice, Litigation Tactics: Scott McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. – Scott broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies. He also compared Reexamination standards versus Litigation standards, and explained the process of litigating validity at the USPTO via ex parte patent reexamination, inter partes review, and post-grant review.

Ethical Considerations in Reissues and Reexaminations: Barbara Mullin, Akin Gump Strauss Hauer & Feld, LLP – Barbara discussed with the attendees the importance of due diligence on an attorney’s part when they are representing their clients in Reissue and Reexamination matters. The importance of the patent in question may alter the perspective of the patent practitioner and thus result in inequitable conduct. Barbara discussed topics such as the duty of disclosure, the materiality of information, intent, supplemental examination, as well as discussed the corresponding recent case law.

A View from the Bench on Concurrent PTO Proceedings: Hon. Garrett E. Brown, Jr., Chief Judge (Ret.), United States District Court, District of New Jersey; Hon. Theodore R. Essex, Administrative Law Judge, United States International Trade Commission; and Hon. Gerald Bruce Lee, District Judge, United States District Court, Eastern District of Virginia – The judges on the panel were presented with a mock argument where they were asked to consider whether or not they would grant a motion staying litigation in light of pending reexamination. They explained how the rules differ between their respective forums, but that either way, patent protection is a property right vital enough to be placed in the Constitution, therefore patent litigation matters must be taken with the utmost importance by the courts.

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