Patent Law Practice Center

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. (more…)

Post-Grant USPTO Proceedings Seminar Live Blog: A View from the Bench on Concurrent PTO Proceedings

Welcome back to the last Post-Grant USPTO Proceedings Seminar live blog of the day! The last panel of the afternoon is entitled Judges’ Panel: A View from the Bench on Concurrent PTO Proceedings. Our featured judicial panelists are  Hon. Garrett E. Brown, Jr., Chief Judge, 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. Below are some the highlights:

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Post-Grant USPTO Proceedings Seminar Live Blog: Patent Reexamination Practice and Evolution – USPTO Perspective

Welcome back to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Reexamination Practice and Evolution – USPTO Perspective. Our featured panelist is Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office. Below are some the highlights:

Revision of Standard for Granting an Inter Partes Reexamination Request: the final rule implements the part of Section 6 of the AIA directed to inter partes reexamination. Inter partes reexamination will be replaced by inter partes review. The reasonable likelihood standard is different from the substantial new question standard. It doesn’t require that the requester establish a prima facie case, and the reasonable likelihood standard doesn’t apply to ex parte reexaminations either.

Miscellaneous Post Patent Provisions Rule Package: The comment period closes March 5, 2012. The office has an obligation to make sure the reexamination isn’t being filed by someone who shouldn’t be filing it. This notice of propose rulemaking implements the estoppel provisions of sections 6(a) and 6(d), which bar a 3rd party requester from filing or maintaining an ex parte reexamination after a final decision has issued in a post grant or inter partes review on the same patent that was requested by the same 3rd party.

Supplemental Examination and Revisions of Reexamination Fees: Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent. There is no 3rd party participation permitted at all. Supplemental exam has 2 parts – the supplemental exam itself and the supplemental reexamination portion. “Information” that forms the basis of the request is not limited to patents and printed publications. Within 3 months from the filing date of the request, the Office must decide whether any of the items of information filed with the request raises a substantial new question of patentability.

We’ll be back after the break with more from the Post-Grant USPTO Proceedings Seminar!

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Trial, Appeal Board Transformation & AIA Implementation

Welcome to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Trial, Appeal Board Transformation and AIA Implementation. The panel’s moderator is Oblon, Spivak Partner and seminar co-chair Scott A. McKeown, and the featured panelists are Hon. Robert Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration, Oblon, Spivak’s Stephen G. Kunin, and  Irem Yucel, Director of the Central Reexamination Unit (CRU), USPTO. Here are some highlights:

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Don’t Miss the Post-Grant USPTO Proceedings Seminar Next Week!

On Monday, February 3rd, PLI is hosting a seminar in New York City focused on the role of post-grant USPTO proceedings as components of a litigation strategy, including pre-trial and post-trial options. The seminar is entitled Post-Grant USPTO Proceedings 2012 – The New Patent Litigation, and it will focus on strategic considerations and common procedural traps for the unwary. 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 will also be presented, including case studies of well-known disputes, as judges from the U.S. District Court, the ITC, and the USPTO Board of Patent Appeals and Interferences (BPAI) are all members of the faculty.

Registration is still open for the seminar. Registration includes a course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review. Won’t be in the New York City area next Monday? This upcoming seminar is also available via live webcast! The seminar, co-chaired by Oblon Spivak’s Scott McKeown and Birch Stewart’s Gerald Murphy, is one that should not be missed. The Patent Law Practice Center will keep you posted on the seminar throughout the day as we will be live blogging as well as tweeting  from the seminar (hashtag: #PLIpostgrant).