Patent Law Practice Center

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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Preparing for the Patent Bar Exam Changes

The following post is written by Mark Dighton, PLI’s Director of Law School Relations and Administrative Director of the Patent Bar Review.

If all goes as planned, the Patent Office will start on Tuesday, January 31st, to test on the PTO’s Registration Exam (sometimes called “the patent bar exam”) some of the first changes to US patent law resulting from the America Invents Act, as well as some changes to the appeals rules that had been in the works even before Patent Reform.  The new appeals rules did not even become effective until January 23, 2012.  Testing them only eight days later demonstrates clearly that the Patent Office is good to their word that they expect the Exam to more accurately reflect current practice going forward. (For many years, the Exam was YEARS behind current practice. Seemingly almost an afterthought.)

The changes from the America Invents Act already subject to testing are the new rules that permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests.  (more…)

USPTO’s New Rules and You

The Patent Law Practice Center wants to be sure that you are ready for the USPTO’s new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences that become effective on January 23, 2012. PLI’s “USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012″ is a one hour briefing on January 9, 2012 that will focus on the new petition practice to toll Reply Briefing deadlines, simplification of brief formatting and required appendices, the new default practices and assumptions, guidelines for identifying “new rejections”, any new jurisdictional timing, and the elimination of examiner responsibilities.

The America Invents Act (AIA) introduces entirely new options, e.g., 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. PLI’s “Post-Grant USPTO Proceedings 2012 – The New Patent Litigation” (February 3, 2012) 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. The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options.  The relative advantages and disadvantages of the various proceedings are explained from both the perspective of the Patentee and Third Party.

PLI’s Advanced Patent Licensing 2011: Current Developments and Best Practices

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important.  I recently received this outline from Joseph Yang, Partner at PatentEsque Law Group and Co-Chair of PLI’s Advanced Patent Licensing 2011 (scheduled for October 24, 2011 in San Francisco and via live webcast) that explores the law of patent licensing and the business of licensing.

Here is an excerpt from the outline:

In any “patent” or “technology” licensing effort, it is critical to understand the interplay between the business and legal aspects of the transaction.  The legal team must build a legal structure that is consistent with the requirements of the law, while the business team must have a deal structure that meets the grantee’s business needs.  Unfortunately, there is often a inadvertent chasm between the two sides — the lawyer has little experience in business, and vice versa. (more…)

PLI’s 6th Annual Patent Law Institute

PLI’s 6th Annual Patent Law Institute is on February 15-16 in New York (and via web) and on March 19-20 in San Francisco.  The Institute is designed to be of ultimate practice value to all three subgroups in the patent law community:patent prosecutors, patent litigators, and strategic & transactional lawyers. The two-day schedule includes 6 plenary sessions of interest to all patent lawyers and a separate breakout track for prosecution, litigation and strategic/transactional lawyers. Each track features six sessions focused on each of those three practice subgroups. You design the 2-day schedule that best meets your professional needs.

Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outstanding outside patent lawyers.

What you will learn

Plenary sessions include:

• Keynote Address by Robert L. Stoll, Commissioner of Patents
• A dialogue with Federal Circuit Chief Judge Randall R. Rader
• Corporate counsel divulge critical issues that keep them awake at night
• A distinguished panel of Judges from critical U.S. District Courts
• The practice impact of recent Supreme Court and Federal Circuit decisions
• Special Feature: Earn 1 hour of legal ethics credit



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