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Fish Forum Fish at the Podium

Webinar: Inter Partes Review Part I: Pretrial

Tuesday, March 27th, 2012

Fish Forum Fish at the Podium

Webinar: Inter Partes Review Part I: Pretrial

Tuesday, March 27th, 2012

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Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO’s Proposed Rules

A six-part webinar series featuring experienced Fish & Richardson attorneys and guest speakers

Tuesday, March 27, 2012 – The first in a six-part series
1:00 p.m. ET

Inter Partes Review Part I: Pretrial
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the pretrial phase of IPR, from the standpoints of both the challenger and the patent owner. Topics will include:

  • Is IPR right for you? When and why might litigation or ex parte reexamination be better options?
  • Preparing the petition
    • Page count. The rules propose strict page limits for the petition.
    • What’s in? Exhibits? Claim charts? Declarations?
    • When/how to request more pages? Motions and standards?
    • How many separate grounds should be raised in the petition?
    • Which patent claims should be included in the petition? All or a subset? How do you choose?
  • Claim constructions. The rules require the petitioner to set forth claim constructions.
    • Which terms do you select?
    • Detail and disclaimer?
    • Alternative constructions?
  • Patent owner preliminary response
    • When/whether to file?
  • Decisions to institute IPR
    • Consequences
    • Rehearing? Appeal?

For information on the next five webinars in the series, please visit the series web page.

Fish & Richardson will apply one hour of general CLE credit in most states.

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